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This project has received funding from the European Union’s Horizon 2020 research and innovation programme under grant agreement No 733266
UTILE ProjectCommercialisation and Licensing
Dr Anji Miller– LifeArc15th June 2018. Sofia, Bulgaria
Talk Overview
What is commercialisation and why do it
Commercialisation pathways
Realisation of your technology – points to consider
Commercialisation: what is it and why do it?
Commercialisation is the process of bringing your technology, in the form of intellectual property (IP), to the market in order to be exploited.
The journey varies in time, cost and complexity based on:
• Technology type e.g. new therapeutic drug, software, device, app
• Intended market i.e. global, single territory
Commercialisation
Stages of Commercialisation
Create a new market i.e. disruptive technology
Development pathway for a Drug
Commercialisation Pathways
Routes of Commercialisation
License
Assignment/sell
New Company formation/spin out
Joint Venture
Licensing
What is it?
allowing a third party to utilise IP without them taking ownership.
is a permission to do something that, without the licence, would be an infringement of the IP.
Licensing
The person granting the licence is called the licensor and the person receiving the licence is called the licensee. (Please note that there can be any number of licensees in a licence agreement.)
Licensing
However, there are different types of licences:
Exclusive licence – a single licensee has the right to use the IP.
Sole licence – a single licensee and the IP owner has the right to use the IP.
Non-exclusive licence – several licensees have the right to use the IP.
Exclusive by Field of Use: the invention is licensed to a licensee for one use, but possibly to another licensee for a different use which is non-overlapping
Licensing
A non-exclusive licence - most common type of licence used within Academia.
When you license your IP to another person it is called “licensing-out.” However, on some occasions it maybe that you need gain a licence to use someone else’s IP. This is called “licensing-in.”
It is more likely that a spin-out company, or industrial partner, is going to be in a position where they need to license-in another person’s IP. Normally, academics are in a position to license-out their IP
Assignment
Selling IP – legal change of title
Value of the asset
If you continue to use the IP once you have assigned it you will be infringing on the new owners rights.
If you wish to exercise your IP rights in the future licensing would be a more suitable route for commercialisation.
Spin Outs
Bundle of rights or platform technology Patents Know-how
Requires time and dedication - long-term
Seed funds and subsequent investment
Correct expertise and support
No guarantee of success
Benefits of Commercialisation
Societal
Economic
Industry Partnerships
Recruitment and Retention
Entrepreneurship
Tips for success
Get to know your technology transfer office
Plan your research strategically (academic v commercial)
No set commercialisation path. Each technology is different.
Bring on board the right expertise
Try to visualise your product early – Target Product Profile
Be patient
THANK YOU!Blagodaria!
Useful links• https://www.iprhelpdesk.eu/sites/default/files/newsdocuments/Fact-Sheet-Commercialising-
IP-Joint-Ventures.pdf
• https://www.iprhelpdesk.eu/sites/default/files/newsdocuments/Patenting_v._publishing_0.pdf
• https://umip.com/pdfs/Spinout_Companies.pdf