Krakow slides 2013

© Copyright 2013. ClearViewIP Ltd. All Rights Reserved.

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IP COMMERCIALISATION

Commercialising Publically Funded R&D

http://www.clearviewip.com/



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Contents• Introduction

– About ClearViewIP– Speaker Insight

• In the UK– The UK Scene: R&D Funding– UK Research Council Interventions for the Commercialisation of Research 2013– UK University Spin-Outs & Acquisitions Since 2003– RCUK Examples Of Successful Commercialisation 2013

• Public Research Institutes– Patents Filed by Public Research Institutions Internationally– Why work with a Public Research Institute?– Key Requirements– Necessities Check List– Subject Areas– Rewards for Inventors

• Pitfalls– Common Pitfalls– Staffing Pitfalls

• Conclusion



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About ClearViewIP

“ClearViewIP is an Intellectual Property Consultancy providing a range of services to help companies monitor, expand and better understand their IP portfolio and

its position within the industry”

Founded 2007

Extensive commercial and IP experience

Full range of IP services

Expertise across high-tech markets

Network throughout Europe, North America and the Far East



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Speaker Insight

• Worked with Universities, Health Authorities & Government R&D Organisations

• Acted as an IP consultant and Agent for the above institutions

• Initiated IP Capture & Commercialisation at varied UK R&D centres



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The UK Scene: R&D Funding

• 1995-2011: Government reduced amount spent on R&D through public research institutions but increased funding provided to UK businesses

• 2007-2011: Government funding of R&D undertaken by UK businesses increased 37% to £1.6B p/a– Non-government funding fell 1%

– UK business expenditure on R&D increased 1%

• 2007-2013: UK will receive c. £4B from the 7th Framework Programme.– UK received £1.58B from 6th Framework Programme



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UK Research Council Interventions for the Commercialisation Of Research 2013

– BBSRC National Research and Innovation Campuses– The Science and Innovation Campuses– STFC Research Facilities– STFC Innovations Ltd– Innovation Technology Access Centres (ITAC)– The Rainbow Seed Fund (RSF)– Biomedical Catalyst Fund– MRC Translational Funding– MRC Technology– Follow-on Funding– Collaborative Training Schemes– Support for Enterprise– People and Information Exchange– Collaborative Research: The Research Councils Fund– Knowledge Transfer Accounts (KTA)– Knowledge Transfer Secondments (KTS)– Innovation and Knowledge Centres (IKC)– Centres for Innovative Manufacturing



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UK University Spin-Outs & Acquisitions Since 2003



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UK Examples Of Successful Commercialisation 2013

– CONFORMETRIX: determining dynamic 3D shapes of drug molecules• Spin-out company to commercialise technology• Seed funding from Aquarius Equity Partners

– BENEFORTE BROCCOLI: super brocoli• Collaboration between BBSRC & specialist tech transfer company

– EIGHT19: solar cell technology• Spin-out from Cambridge Integrated Knowledge Centre• IKC and Carbon Trust funded

– BAS: innovative tracking technology • Technology licensed out to UK SME by TSB KTN

– COBALT LIGHT SYSTEMS: equipment for non-invasive analysis of materials

– ACTIVIOMICS: phosphoproteomics services• MRC funded – has agreements with UCB and GSK

– NOVACEM: developing carbon-negative cement• Spin-out from Imperial• ESPRC funded

– ENERGY EFFICIENT LIGHTING: developing gas for use in LEDs• Long-term ESPRC sponsorship



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Patents Filed by Public Research Institutions Internationally

2000-2002 and 2007-2009 filing trends per country as a percentage of patent applications filed under the PCT



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Should IP from Public Research Institutes be patented & commercialised?

• Frequently asked question

• If public have paid make it available to “all”?

• Is “all” the world or local Polish companies?

• My view need to patent so know who owns what and have vehicle for taking to industry.

– Industry needs certainty of IP position



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What do R&D institutions have to offer?

• Focused leading edge expertise

• Well formed teams with long term vision

• Long term benefit to society through taking their innovations to market



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Prioritising Institutes:

– Any obvious establishments with industry keen to partner?

– Existing culture:• Pure academia vs.

Entrepreneurial• Who are the influencers?• Contracts status?• Who owns the IP?

In UK: funding made available & institutions choose from bids

Key Requirements

Funding Needed To:

– Support commercial team• Size, skill, specialism, netw

ork

– Development & Proof of Concept

– Patent & attorney costs

– Education & Promotion program

– Rewards to Inventors



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Necessities Check List

Ownership is crucial

MUST HAVE:

Employment contracts for all inventors/researchers

Collaboration contracts with key partners/sub-contractors

Criteria to justify patent filing

Inventive step

Market opportunity

Skills and team to support further development



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Opportunity Evaluation

– Need to develop evaluation method• Important to share method

• Need to educate role of IP in commercialisation

• Initial focus should be on patenting– Easiest to exploit globally

– Criteria to justify patent filing• Inventive step

• Market opportunity

• Skills and team to support further development



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Decide Subject Areas for focus

Determine skill sets of team doing commercialisation and prioritise subjects:

Chemistry

Pharmaceuticals

Bio-Tech

Telecommunications

IT

Electronics

General Engineering

Music, Art



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Reward for Inventors

• Capturing IP is a big ask

• Increases researcher’s work load

• Need organisation onside

• Make it worth their while

– Payment on filing $200?

– Payment on Grant $400?

– Share of license income? Cap?

– Personal vs department/team payment?



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Common Pitfalls

ActionSet low initial threshold to encourage submission

ConsequenceHostage to fortune when patent examination and attorney time use budget rapidly

Action Inadequate resources

Consequence

Slow to evaluate submitted inventions Slow to file patents Competition to publish for academic

status



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Common Pitfalls

SituationFail to develop coherent business plan for technology

OutcomesLack of structure and planning can lead to failure often results in reactive decisions such as abandoning patents if timescale is unrealistic

SituationLack availability of funding to prove concept or refine to meet industry requirements

Outcomes The Chasm/Gap/Valley of Death

Situation Leakage of IP

OutcomesCulture of partners adopting IP proves difficult to challenge/stop



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Staffing Pitfalls

Problem Staff upset in establishment

Causes

Supervisors seeking to be named as inventors

Prestigious researchers seeking to override evaluation parameters

Unrealistic expectations of time to market and REWARDS!



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Conclusion

• Publically funded R&D presents a vast opportunity for commercialisation

• Capture of IP and securing ownership is vital

• Not a quick route to revenue but over time can create significant social and commercial benefits



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ClearViewIP Ltd

ClearViewIP LtdSt George’s Chambers, St George’s Street

Winchester, Hampshire UK, SO23 8AJ

Tel: +44 (0) 845 680 1953Email: [email protected]

www.clearviewip.com

© Copyright ClearViewIP 2013

COLIN HUNSLEY- DIRECTOR OF COMMERCIALISATION

[email protected]


mailto:[email protected]

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Krakow slides 2013