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Industry Collaboration &
Commercialisation
Professor Mark Harvey
University of Southern Queensland
Lets get the terminology right


Universities do not commercialise!



We transfer expertise/IP (knowledge)
In light of:



Current funding environment
Emerging impact agenda

There has never been a more compelling environment
f...
What should be the major drivers of
knowledge transfer


Impact!



Attracting Research $



Income

These should be th...
How do we
transfer knowledge?



Consultancies
Testing (includes clinical trials)
Contract Research



Expertise/skill d...
Consultancies
Testing
Contract Research
Q.

What’s important to the Industry?



Data, collected information, surveys, re...
Research Collaborations
& Licensing
You have agreed on the research program & dollars – what do we
do about the IP?
Research Collaborations
& Licensing
You have agreed on the research program & dollars – what do we
do about the IP?

Optio...
Research Collaborations
& Licensing
You have agreed on the research program & dollars – what do we
do about the IP?

Optio...
Research Collaborations
& Licensing
You have agreed on the research program & dollars – what do we
do about the IP?

Optio...
Research Collaborations
& Licensing
You have agreed on the research program & dollars – what do we
do about the IP?

Optio...
Research Collaborations
& Licensing
You have agreed on the research program & dollars – what do we
do about the IP?

Optio...
Start-up companies
Start-up companies
University

Investor

Research $
$
Intellectual
Property

Management

Shares

Shares

Start-up
Company
...
Start-up companies
1.

Dealing with Venture Capitalists
Start-up companies
1.












Dealing with Venture Capitalists
Convertible notes
Liquidation preferences
Dra...
Start-up companies
1.












Dealing with Venture Capitalists
Convertible notes
Liquidation preferences
The...
Start-up companies
2.

Getting a Return – the Dream Baby!
Sold for $200M

150
Value
$m

University = $20m (10%)

100
Pre $...
Start-up companies
2.

The Reality Sunshine!

$80m in flat rounds!
150
Value
$m

Sold for $100M
University = $500k (5%)

1...
Start-up companies
2.

Getting a Return – Licenses have delivered the
biggest returns to universities

Instead of shares c...
Key Points
1.
2.

3.
4.

Establish your Partnership/knowledge transfer objectives
Establish your IP & financial position f...
Mark Harvey University of Southern Queensland: Industry collaboration and commercialisation
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Mark Harvey University of Southern Queensland: Industry collaboration and commercialisation

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Professor Mark Harvey, DVC Research and Innovation, University of Southern Queensland delivered this presentation at the 2013 Regional Universities conference. The event focuses on policy and funding for Australia’s regional tertiary education and its impact on service delivery and sustainable development. For more information about the event, visit the conference website: http://www.informa.com.au/regionalunis

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Transcript of "Mark Harvey University of Southern Queensland: Industry collaboration and commercialisation"

  1. 1. Industry Collaboration & Commercialisation Professor Mark Harvey University of Southern Queensland
  2. 2. Lets get the terminology right  Universities do not commercialise!  We transfer expertise/IP (knowledge)
  3. 3. In light of:   Current funding environment Emerging impact agenda There has never been a more compelling environment for collaborating with Industry & transferring knowledge Putting aside the competitive grants scenario, working with industry and knowledge transfer is complex, it is case by case, and is human capital intensive. Issues include:  IP ownership  Patenting  Costing research  License terms  Valuation of IP  Equity holdings: ordinary vs preferred shares  Legal office bottleneck  Constant criticism from industry
  4. 4. What should be the major drivers of knowledge transfer  Impact!  Attracting Research $  Income These should be the key drivers in our decisions With an increased understanding of the issues and clear objectives we can (and must) improve knowledge transfer
  5. 5. How do we transfer knowledge?  Consultancies Testing (includes clinical trials) Contract Research  Expertise/skill driven       Research Collaborations Licensing Start-up companies Discovery driven Two distinct mechanisms that should be handled differently
  6. 6. Consultancies Testing Contract Research Q. What’s important to the Industry?  Data, collected information, surveys, reports etc – as such GIVE IT TO THEM (assign it).  Unlikely to be other IP (ie inventions, patents etc) - be silent Note: Important to understand and control the legal framework and process Critical: TT team ability to triage
  7. 7. Research Collaborations & Licensing You have agreed on the research program & dollars – what do we do about the IP?
  8. 8. Research Collaborations & Licensing You have agreed on the research program & dollars – what do we do about the IP? Options:  Negotiate License upfront (organise the wedding now)
  9. 9. Research Collaborations & Licensing You have agreed on the research program & dollars – what do we do about the IP? Options:  Negotiate License upfront (organise the wedding now)  Option to license (lets date now and talk about marriage later)
  10. 10. Research Collaborations & Licensing You have agreed on the research program & dollars – what do we do about the IP? Options:  Negotiate License upfront (organise the wedding now)  Option to license (lets date now and talk about marriage later)  Co-own the IP (Lets live together and see how it goes)
  11. 11. Research Collaborations & Licensing You have agreed on the research program & dollars – what do we do about the IP? Options:  Negotiate License upfront (organise the wedding now)  Option to license (lets date now and talk about marriage later)  Co-own the IP (Lets live together and see how it goes)  Uni owns the IP and give Industry a royalty (I can date others)
  12. 12. Research Collaborations & Licensing You have agreed on the research program & dollars – what do we do about the IP? Options:  Negotiate License upfront (organise the wedding now)  Option to license (lets date now and talk about marriage later)  Co-own the IP (Lets live together and see how it goes)  Uni owns the IP and give Industry a royalty (I can date others)  There is no right answer +/- with all  Give partner options & ownership of decision Critical: TT team !
  13. 13. Start-up companies
  14. 14. Start-up companies University Investor Research $ $ Intellectual Property Management Shares Shares Start-up Company R&D on new products / Services IMPACT
  15. 15. Start-up companies 1. Dealing with Venture Capitalists
  16. 16. Start-up companies 1.           Dealing with Venture Capitalists Convertible notes Liquidation preferences Drag along rights Tag along rights Anti-dilution provisions Preferred shares/Ordinary shares/convertible shares Assignment triggers Bank rate compounding coupons Investor Director decisions Investor Shareholder rights
  17. 17. Start-up companies 1.           Dealing with Venture Capitalists Convertible notes Liquidation preferences The Golden Rule Drag along rights Who has the gold Tag along rights makes the rules! Anti-dilution provisions Preferred shares/Ordinary shares/convertible shares Assignment triggers Bank rate compounding coupons Investor Director decisions Investor Shareholder rights
  18. 18. Start-up companies 2. Getting a Return – the Dream Baby! Sold for $200M 150 Value $m University = $20m (10%) 100 Pre $ $1m 50 1 Seed $1M Series A $5m Series B $30m
  19. 19. Start-up companies 2. The Reality Sunshine! $80m in flat rounds! 150 Value $m Sold for $100M University = $500k (5%) 100 Pre $ $1m 50 1 Seed $1M
  20. 20. Start-up companies 2. Getting a Return – Licenses have delivered the biggest returns to universities Instead of shares consider a royalty bearing license Advantages:  A royalty is a non-dilutable interest in the product  Simpler negotiation  Avoids valuation negotiations at each capital raising
  21. 21. Key Points 1. 2. 3. 4. Establish your Partnership/knowledge transfer objectives Establish your IP & financial position for each knowledge transfer mechanisms Understand and control the legal process Hire excellent TT professionals Improved knowledge Transfer
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