Krakow slides 2013

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Commercialisation Director, Colin Hunsley, was invited to Krakow IP Symposium to talk on IP Commercialisation. IN particular, this presentation focuses on commercialising publically funded R&D and the role of IP.

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Krakow slides 2013

  1. 1. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 1 IP COMMERCIALISATION Commercialising Publically Funded R&D
  2. 2. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 2 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
  3. 3. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 3 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
  4. 4. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 4 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
  5. 5. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 5 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
  6. 6. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 6 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
  7. 7. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 7 UK University Spin-Outs & Acquisitions Since 2003
  8. 8. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 8 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
  9. 9. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 9 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
  10. 10. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 10 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
  11. 11. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 11 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
  12. 12. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 12 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
  13. 13. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 13 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
  14. 14. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 14 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
  15. 15. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 15 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
  16. 16. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 16 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?
  17. 17. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 17 Common Pitfalls Action Set low initial threshold to encourage submission Consequence Hostage 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
  18. 18. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 18 Common Pitfalls Situation Fail to develop coherent business plan for technology Outcomes Lack of structure and planning can lead to failure often results in reactive decisions such as abandoning patents if timescale is unrealistic Situation Lack availability of funding to prove concept or refine to meet industry requirements Outcomes The Chasm/Gap/Valley of Death Situation Leakage of IP Outcomes Culture of partners adopting IP proves difficult to challenge/stop
  19. 19. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 19 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!
  20. 20. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 20 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
  21. 21. © Copyright 2013. ClearViewIP Ltd. All Rights Reserved. 21 ClearViewIP Ltd ClearViewIP Ltd St George’s Chambers, St George’s Street Winchester, Hampshire UK, SO23 8AJ Tel: +44 (0) 845 680 1953 Email: info@clearviewip.com www.clearviewip.com © Copyright ClearViewIP 2013 COLIN HUNSLEY- DIRECTOR OF COMMERCIALISATION colin_hunsley@clearviewip.com

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