Intellectual Asset Management in Universities

Transcription

1 Asset Management in Universities Licensing Executive Society Turkey Session 6: Universities and Commercialization of IP January 2010 Presented by Dr. Paul B. Germeraad max ( Assets) dt

2 Agenda Academic And Business Creation And Use Of IP How To Look At The Value / Need Of University IP By Companies Model To Use When Filing And Licensing University IP 2

3 Aspects of University and Public Research Academic And Corporate View Of Know-how and IP Differs: Academic Know-how Is Created To: Apply For Research Funding Obtain Consulting Contracts From Companies Academic IP Is Created To: Recognize Academic Inventors Achievements Create A Revenue Stream For The Academic Entity Corporations Will Pay For Technology Know-how To: Obtain A Shorter Time To Commercialization Obtain Insight On Development Of Products With Lower Costs Or Higher Performance Than Competition Obtain Rights To IP For The Below Reasons Corporations Will Pay For IP To: Obtain Freedom To Practice Obtain An Advantaged Position Via An Ability To Exclude Others From Competing: At All Directly 3

4 University Return on Innovation Investment Requires Property Support An Eye To Business Needs Must Be The Metric for Out-Licensing Programs Businesses Need To Have Positive Cash Flowing From Their Innovation Investments in University IP and Know-how Business Needs No Disturbance Or Surprises On Balance Sheet Profitable Products Have Advantaged Positions Maximize Revenue Streams Speed R&D Timelines IP Support Freedom To Operate Ability To Exclude Competition Out-license for Revenue In-License For Open Innovation 4

5 Typical Corporation IP Value Distribution The Value Of R&D Outcomes Is Log Normally Distributed A Typical Unmanaged IP Portfolio Has: 5 1% Of Its Assets Generate 90% Of The Value. 50% Of Its Assets Enable And Protect The Business Only 5-10% Are Protecting Key Business Lines Half Of The Remainder Should Be Licensed To Competitors Within Five Years Of Commercialization 30% Of Its Assets Are Available For Immediate Non-conflicting Out-license Revenue Opportunities 15% Of It Assets Are Best Abandoned Value Of Individual Patent Build-out Maintain or License "Choke Point" Art: Stops Competition Cold Abandon "Portfolio" Art: Competition Can't Offer Exactly The Same Products Rank Order Of

6 Typical University IP Value Distribution The Value Of University Research Outcomes Is Also Log Normally Distributed A Typical Unmanaged IP Portfolio Has a Similar Relationship to Corporate Value Distributions The Best Managed University Programs Have Narrower Distributions By Only Filing For IP That Has Defined Commercial Interest The University Must Know Which IP It Is Licensing For Which Purpose: ROI by "Stick Licensing" Partnership Funding with "Carrot Licensing" Value Of Individual Patent Build-out Maintain or License Release "Choke Point" Art: Will Create University Licensing Revenues "Portfolio" Art: Will Allow University To Obtain Partnership Funding Rank Order Of 6

7 Typical University IP Value Distribution The Field Of Use Determines the Likely Prospect of True "Choke Point" Art Industries Utilize Different "Innovation / R&D Game" Theories As a Basis For Competition Some Innovation / R&D Game Theories Lend Themselves To Generation and Use of "Choke Point" Art and Others Do Not Value Of Individual Patent Build-out Maintain or License Leave with University "Choke Point" Art: Will Create University Licensing Revenues Rank Order Of 7

8 The Value of University IP Is Based On The Way Industries Use IP Technology and IP Management Methods (Strategies, Tactics, Organization, IP Protection) Vary According To What Generates The Greatest Business Return On Investment The Return to a University Generally Varies by Industry Technology and IP Management Practices 8

9 Each Industries' Use of IP Supports a Distinct IP Strategy Innovation Games Where The University Could Likely Obtain "Choke Point" Art For Licensing Opportunities Are Shown In Blue Boxes These Games Reward Very Different Approaches and IP Protection To Cover The Time Required For Commercialization If A Company Is Sourcing Innovation From An Academic Environment: The IP Portfolio May Not Be Optimized: Too Big A Portfolio Is a Financial and Resource Burden Too Small A Portfolio Weakens Cross-Licensing Opportunities Presence or Lack of "Choke-Point" Art Can Affect The Sustained Advantaged Position Acquired 9

10 Market and IP Dynamics Typical / Best Suited For Success For Each Type of Innovation Game 10

11 Typical University IP Value Distribution For Partnership Support The Field Of Use Also Determines the Likely Prospect of "Portfolio" Art Being Available To Obtain Partnership Funding by Offering Academic Knowhow Along With As With "Choke Point" Art, Some Innovation / R&D Game Theories Lend Themselves To Generation and Use of "Portfolio" Art and Others Do Not Value Of Individual Patent Build-out Maintain or License Leave with University "Portfolio" Art: Will Allow University To Obtain Partnership Funding Rank Order Of 11

12 Each Innovation Game Environment Supports a Distinct IP Strategy Innovation Games Where The University Could Likely Obtain "Portfolio" Art and Know-how For Licensing Opportunities To Small-Medium Enterprises' Are Shown In Blue Boxes These Games Reward Next Generation Approaches and IP Protection To Give an SME A Differentiated Product Offering In An Established Market Again, If A Company Is Sourcing Innovation From An Academic Environment: The IP Portfolio May Not Be Optimized: Too Big A Portfolio Is a Financial and Resource Burden IP May Be Of Small Value When Compared To Know-How Presence or Lack of Enough "Portfolio" Art Can Affect The Sustained Advantaged Position Acquired 12

13 Summary Academic And Business Creation And Use Of IP Differs Looking At The Value Of University IP By Companies by Innovation Game Type Is A Good Model For Management and Licensing of University IP and Know-how All Academic And Commercially Developed IP Isn't Managed By One Best-practice Industry Level Segmentation Is Too Fine-grained For a University's Licensing Group To Manage Innovation / R&D Game Type Is A Higher Level Aggregation That Plays To a University's Licensing Group's Technical And Commercial Objectives, As Well As Personnel And Business Management Capabilities Using Models And Best-Practices Enables Universities To Build The Most Appropriate Portfolios For High Revenues and Partnership Relationships Working with Universities on Use of Such Models and Other Best-Practices Enables Universities To Understand How To Best Negotiate And Manage IP Assets 13

14 Asset Management in Universities Questions? For Further Discussion: Paul Germeraad President Assets Horseshoe Drive Saratoga, CA Phone: Fax: