IP management–some generic background re IP, indicate broader applications but focus on licensing of VT technology
Returned to my alma mater after 29 years – in between: Westinghouse – International licensing & tech transfer – defense, nuclear & industrial systems Imaging & Sensing (W spin-off) – licensing, strategic & new product development & M&A Strategic Alternatives (start-up) - Tech transfer & other consulting for semiconductor consortium funding $60 M/yr university research VNI -Germany & UK as Manager for HPC software firm RTI – commercialization & tech scouting for NASA, intel community, university & corporate clients
From weaker to stronger
Example: recipe for Coca Cola Good to protect what can’t be reverse engineered
Example: Coca Cola scripted name Often linked with branding
Example: Coca Cola Polar Bear ad
Types Utility – Example: Coca Cola Bottle Sorter Design – Example: Coca Cola Bottle Design Cost of a patent over its life is ~ $30-$50k per country Strong but not long – protect what can be reverse engineered
Questions: How do you decide when to patent vs. keep as trade secret? Why protect Coke recipe with a trade secret? Why trademarks and design patents on Coca Cola bottle?
Societal benefit may sound corny but is a key cornerstone to commercialization decisions – e.g. releasing software as open source IP rights can provide the incentive to commercialize that allows a product/service to come to market without protection, good ideas may languish and never get commercialized Bayh-Dole – universities can own the IP from Federal research
Based on research revenue, VTIP has comparable licensing revenue Based on # disclosures, VTIP has ½ the staff & ¼ patent budget of other universities VTIP licensing professionals have significant experience
Patentability/Protectability(Can We?) – Most university licensing is strongly tied to patents – not so much other IP also software copyright, but much weaker Commercial potential (Should We?) Answering these questions is key to VTIP decision on moving forward with a technology VTIP is intended to generate revenue greater than its costs
Quick summary of VTIP’s other responsibilities - along with managing IP protection, VTIP conducts market research including discussions with experts in the target “value chain” develops and implements marketing campaigns facilitate interested companies’ discussions with the inventor & evaluation of the technology negotiates license agreements manages the distribution of royalty income. Realistically: From time we receive invention disclosure until product sales that generate royalties between 5-10 years, if ever. Most university tech transfer has a single technology that generates over 50% of their revenue
Many other factors
Many other factors
Many ways to put value on a technology 25% of operating margin is relatively well established fair value for inventor Comparables deals are very strong A few principles help guide negotiations
IP 101 and Technology Licensing VT E-Club October 11, 2010 Virginia Tech Intellectual Properties, Inc.