Return On Investment ROI by liaoqinmei


									The Basics of Technology Funding
      and Business Deals
              Rosemary French
            Innovation Strategist
    IC2 Institute, University of Texas at
                Biographical Info
Rosemary French, BA
Innovation Strategist @ IC2 Institute

• Expertise in Licensing:
   • Managed Life Science portfolio of over 100 patents
     alongside a Senior Licensing Specialist at the UT
     Austin OTC
       • Strategic partnership formation for early-stage R&D for
         over 20 selected high-value technologies
       • Patent license agreement negotiation: 15 licenses signed
       • Start-up creation: identified and vetted potential CEOs,
         negotiated startup licenses; mentored entrepreneurs to
         create investor-ready pitches
      Biographical info continued
• OTC stats:
   – UT Austin OTC: $25.6 MM FY 10-11
   – 150+ disclosures, 300+ patents processed FY 10-11
   – 34 US and 28 Foreign patents issued in FY 10-11
• Involvement in International TTO Initiatives:
   – Performed on-site training and mentoring at two TTOs in
     Portugal, conducted research on 12 incubators across
   – Worked with over 50 innovators to provide strategic
     technology development and commercialization
           Key Learning Topics
1. Identifying technology funding vehicles
2. Rationale for R&D partnering relationships
3. Basic business deal structures
4. Basic business negotiation techniques
On an average, only 5% to 20% of R&D
sees the light of day
      …the rest wither away on the shelf
                             over time.
                       (The Aberdeen Group, Boston)
• What is the goal of technology

• Why create a TTO?
Creating a Tech Commercialization Hub
   Pieces of the tech commercialization puzzle:
                   University research
          TTO – Commercialization Strategies
            University-Industry Partnerships
        R&D, Start-up Company Incubation Efforts

   Enhance technology commercialization
       outcomes, university reputation
Developing TTOs to Leverage Research
         for Public Benefit
Lessons Learned:
1. Establish networks of TTOs
   – Mexican government encourages its public technology institutes
     to establish TTOs as networks
   – Example: Portugal TTO Network generated through UTEN
       – Small TTOs – difficult to gain international recognition
       – UTEN: established common framework for best practices
       – TTOs can exchange contacts through the network
       – International visitors can vet the top technologies from the
         entire network instead of visiting one institution at a time

2. Define Clear Rules on IP Rights
   – Encourage researchers to commercialize their ideas
Percent of R&D Financed by Private Sector
          Low Level of Patenting in LAC

Public funding of research in LAC has emphasized the generation of
conceptual knowledge but has been less efficient at energizing technological
innovation such as the production of patents
         R&D Investment in LAC
• Challenge: Private participation is relatively low in
  LAC (% of R&D financed by private sector)
• the majority of countries in LAC invest less in
  research and development (R&D) than other
  countries with similar income levels
• LAC: Less than 50 percent of R&D investments are
  financed by private industry, which contrasts with
  the experience of dynamic global innovators such as
  China, Korea, and the United States
           Things to Consider
• What are some ways to increase interaction
  between your university and potential
  industry partners?
• Examples at UT Austin: “Ready to
  Commercialize” vs. UT system event
Sponsored Research Example
                  CardioSpectra, Inc.
• Prof. Milner in collaboration with Interventional Cardiologist Marc
  Feldman, MD at the UT Health Science Center – San Antonio
   – developed an Optical Coherence Tomography (OCT) diagnostic
      catheter for detecting vulnerable plaque.
   – allows doctors to better predict the likelihood a patient will suffer a
      heart attack based on vulnerable plaque,
   – provides diagnostic capabilities currently unavailable through existing
      technologies such as MRI, computed tomography (CT), and ultrasound
• Milner and Feldman founded CardioSpectra, Inc., a company
  through which the OCT system and catheter were marketed.
    – Sold to Volcano Corp. for $25MM, with additional milestone payments
      of $38MM
 1. Identifying technology funding
• Key Concept: Funding technologies and
  funding companies are two different things

  – When you ask for money, you need to know what
    you are selling
     • Colombia example
       How to fund companies:
1. Friends, Family and Fools
2. Private Equity – VCs and Angels
3. Government Funding
  a. National Science Foundation
  b. SBIR (Small Business Innovation Research)
  c. DARPA (Defense Advanced Research Projects
      How to fund technologies:
1. University sponsored research (not typical)
2. Government grants
3. Industry sponsored research

• Examples of Sponsored Research at UT
           Funding Technologies
• Strategic R&D Alliances between Industry and
  Research Centers
  – Mexico Example: the aeronautics alliance between
    several companies in Queretaro, universities and a
    public technology institute (established joint R&D
    lab in aeronautics – the first in Mexico).
When can a company become involved
   with a university technology?
• Commercialization Timeline
  Sponsored research
                                               Funding: Company Formation

Initial Technology                         Start-up Company formed
Prototype Developed
                       Roadmap: STP
By Inventor
      2. Rationale for R&D Partnering
• University-industry relations consist of a variety of activities,
   – Sponsored Research
   – Licensing
   – Gifts and endowments designated for colleges, schools,
      departments, or individuals
   – University-industry exchange programs and student
   – Continuing education and training of professionals
  Rationale for R&D Partnering
   Relationships (continued)
– Participation of industry representatives in campus
  advisory groups
– Cooperative research projects
– Use of university facilities on a fee-for-service basis
– Industrial parks – R&D facilities housed on university
– Faculty consulting
Why R&D Partnerships with Industry?
• Collaboration between industry and research
  – Create knowledge with a specific industrial
    application in mind
• R&D partnership is about business deals and
• Pursue Sponsored Research Opportunities
• Enhance commercialization output
• Enhance university reputation
• Make a list of 4 companies that could be
  potentially interested in licensing your
  technology and explain your rationale.
 Creating a strategic visions for University-
           Industry Partnerships
• Applied research focus
• Will your TTO actively pursue SRAs?
  – Office of Sponsored Projects
• What kinds of firms will you target?
  – Large, leading international firms?
  – SMEs? – local sectors
• Industry/market sector focus?
   Defining the Scope of Collaborations
• Guiding Principle # 1: A successful university-
  industry collaboration should support the
  mission of each partner. Any effort in conflict
  with the mission of either partner will
  ultimately fail.
     – University mission: education of students,
       creation and dissemination of knowledge
     – Industry mission: create value for investors,
       provide useful goods and services, expand the
       state of the art
Source: National Council of University Research Administrators and the Industrial
Research Institute
    University Contribution to the Industry
    • Retention of Trained Work Force: Training of future
      and current industry workforce (students) through
      undergraduate and advanced degrees
    • Publication: Contribution to the general knowledge
      base for public benefit Advancing the state of the art
      in a field
    • Knowledge Transfer: Acting as a filter to distill, from
      the general public knowledge base, a subset of that
      knowledge particularly applicable to industry’s
      product needs
    • Sponsored Research: Performance of specific
      research on behalf of industry
Source: National Council of University Research Administrators and the Industrial
Research Institute
   University Contribution to the
   Industry Mission (continued)
• Technology Transfer: Licensing inventions and
  developments (Intellectual Property) for
  commercial purposes, including revenue
• Providing access to university-owned
  equipment, materials, facilities and specialized
• Fostering economic development that
  expands markets
• Objectively testing, evaluating and reporting
  on new technology
     Industry Contribution to the University
     • Employing students and graduates
     • Donating (equipment and money – either unrestricted or
       earmarked e.g., for scholarships, research, or facilities)
     • Providing either materials or funding for student
       internships and faculty sabbaticals
     • Employee time and knowledge donation through
       involvement in activities such as assisting student
       projects, guest lectures, service on thesis committees,
       service on advisory boards.
     • Material Transfer: Enabling access to industry-owned
       equipment, materials, facilities and specialized resources

Source: National Council of University Research Administrators and the Industrial Research
    Industry Contribution to the
   University Mission (continued)
• Applied Research: Providing leading-edge research
• Sponsored Research: Providing financial and/or in-
  kind support for specific research activities of
  interest to the industry partner
• Paying technology licensing fees and royalties, which
  support ongoing research and educational programs
• Publication: Contributing to general knowledge base
• Technology Transfer: Bringing university
  contributions to the public in the form of goods and
            University Constraints
• Must educate students
• Must perform research for public benefit
• Must operate within changing federal and state rules and
  regulations, e.g. non-profit tax rules, export regulations and
  increased regulations on the use of humans, animals and
  hazardous materials
• Must manage potential and actual conflicts of interest and
• Must be consistent with all sponsors
• Academic year limitations on student and faculty time
• Facing federal funding that is limited or nonexistent
• Lack of match between industry segmentation of research
  and university segmentation (shared constraint)
              Industry Constraints
• Research investments must show returns
• Can distinguish basic and applied research, but distinction not
  always recognized by universities
• Differences between external and internal research must be
  recognized and planned for by industry
• External research must be part of a competitive business plan
  and budget
• Must establish agreements in a commercially timely manner
• Must establish agreements to ensure the ability to
  commercialize with appropriate returns
• Research funded by industry usually requires clear goals,
  milestones, and specific time frames for completion
    A Long Term Relationship is the
          Desired End State
• Guiding Principle # 2: Institutional practices
  and national resources should focus on
  fostering appropriate long-term partnerships
  between universities and industry.
• university/industry partnership extends
  human intellectual reach and is key to regional
  competitiveness, innovation and economic
 Establishing Long-Term Relationships
         with Industry Partners
• The value of a long-term relationship can be greater
  than the sum of the individual transactions, and the
  relationship between the university and the industry
  partner may be more important than the results of
  one isolated project.
• individual institutions should examine their policies,
  training, reward structures and business practices
  with an eye to whether they promote long-term
    Establishing a Framework that
 Encourages Long Term Collaborations
• Guiding Principle #3: Universities and industry
  should focus on the benefits to each party
  that will result from collaborations by
  streamlining negotiations to ensure timely
  conduct of the research and the development
  of the research findings.
• Reducing time spent in negotiating terms
      Working with Industry: Key
• IP rights – current and future joint IP
• Material transfer affect on IP rights
  – Sending a sample to a company
  – Receiving equipment/material from a company
 3. Basic Business Deal Structures
1. Challenges of Making a Deal Happen
2. Licensing vs. Spinout vs. Divestiture
3. Patent License Agreements: Goals and
   Prospective Outcomes
On an average, only 5% to 20% of R&D
sees the light of day
      …the rest wither away on the shelf
                             over time.
                       (The Aberdeen Group, Boston)
                 As a result…
A                  B                                 C
 Commercialize     Protect & Enable                  Divest/Donate
                   the Business and/or License
    (2%-5%)                 (50%-60%)
                   1                                 2







      Core                Related Non Core               Unrelated Non Core
  |          |             |           |       |               |
 0%          20%          40%          60%     80%           100%

                       % of Patents/Other IP
• How many technologies does your TTO
• How many provisional patents would you file?
  How many full patents?
  Challenges: Technology to Market
• Disconnect between R&D and potential market needs
• Most IP are only part of a solution
• IP developed for one use, ends up far more useful in
  another area
• Lack of business sense
• Lack of radical entrepreneurs/best practices
     – The ability to first say “yes” and then figure out “how”
• Sense of risk aversion coupled with fear of failure
     – Failures are a necessary part of success
• Lack of qualified risk capital
     – Big bets, big wins

Source: International Business Accelerator, 2010
  What does this mean for TTOs?
• Proactive engagement with 20-30 potential
  licensees per technology is required to obtain
  a license
• Focus on the technologies with the lowest risk
  and highest potential reward
• Actively engage with industry: what does
  industry want/need? Does the technology fill
  that need?
                       Converting IP into Cash

                                   Research & Development
                                       Intellectual Property

              Divest                         License

               Cash                         Upfront Fee/       Equity

                         Return On Investment “ROI”
Source: International Business Accelerator, 2010
               Commercialization Models

                      RETURNS                 BENEFITS                       DRAWBACKS

                     Cash (one-
  Divestiture        time)             One time windfall cash         Loss of IP

                                                                       Responsibility
                                                                        (documentation, installation &
  Technology                         Control over pricing and          maintenance)
                     Upfront Fees &   profits                          Sales force & staffing
  License            Royalties       Control over operations          Warranties, liability
                                                                       Limited control - pricing &
  Business                             Potential of high returns      Higher initial costs
                                       Responsibilities off-loaded    Dilution by outside investors
  Spinout            Equity             to Spinout                     Losses upon failure

Source: International Business Accelerator, 2010
            Divestiture: Valuation
• Cost-Based Method
   – This is the minimum that you should accept
      • Materials and Supplies
      • Lab time (use of equipment, electricity, resources)
      • PI and team hours (weighted)
• Discounted Net Present Value
   – Seven years credible sales/Revenue Projections
      • Directly attributable to your IP
      • 20-30% discount rate
• Market Value
   – What the buyer is willing to pay
      • Underlying purpose of acquiring IP
              Licensing Valuation
• Early stage technology = high risk
  – Fees and royalty rates are rarely large
  – Most royalty rates are in the 3-6% range (at best)
• Deciding factors:
  –   Type of technology
  –   Development stage
  –   Size of potential market
  –   Profit margin for anticipated product
  –   Amount of perceived risk
  –   Strength of the patents
  –   Projected costs to bring a product to market
    What is the technology worth?
A patentable idea increases in value with every
step of the cycle.

Source: Licensing Executive Society, Inc. The Basics of Licensing.
How do I determine the value of an
• Factors that influence royalty rates:
   – The strength and scope of the protected IP;
   – The expense necessary for a license to reach full production;
   – The cost of any additional R&D required;
   – The exclusivity or non-exclusivity of the licensing agreement;
   – The geographic scope of the license;
   – The competitive product, processes, and technology available to the
     prospective licensee;
   – The total market and its estimated growth;
   – Common industry or standard license rates; and,
   – Whether the license covers all or part of a process or product.

Source: Licensing Executive Society, Inc. The Basics of Licensing.
 Evolution of Agreements in Commercialization

Confidentiality Agreement

   Material Transfer Agreement/Inter-
   Institutional Agreement


           Licensing Agreements
What’s Missing from the List??
Consultancy Agreements can and
usually do happen at various stages
 in the commercialization process.
                       Scenario 1
• Researcher at Public Institution want to engage in
  collaborative research exchange with an interested
• Proprietary Chemical/Biological Materials Developed
  are Present
• Examples would Include:
   –   transgenic animals
   –   cell lines & cultures
   –   Antibodies
   –   Microorganisms (Bacteria, enzymes, yeast, etc.)
   –   vectors (plasmids, baculoviruses)
   –   chemicals (including drugs/pharmaceuticals)
                CDA vs. MTA
• MTA’s take CDA’s a step further by covering:
  – Permitted Use of Materials
  – Prohibited Use of Materials
  – Access to Results
  – Use of Results
  – Publication Rights
  – Ownership of Resulting IP
  – Royalties Can be Introduced
                     Scenario 2
• Researcher wants to enter into a research
  collaboration with another partner
• Can be Public or Private, but usually academic or
  research focused in nature
• Can cover almost any level of science
• Examples:
   – Joint researcher grant applications
   – Co-Orientation of PhD student research outside of home
   – Co-Technology Development
   – Shared Laboratory Space and Equipment for Research
     Among Institutions
Key Components of Inter-Institutional
• Roles and Responsibilities in Research
• Governs Resource Allocation
• Resulting IP Ownership Splits are Pre-Defined
  and can be Re-Negotiated during research
• Defines PI and Co-PI relationship
• Defines Responsible Party for Publication
  and/or Commercialization Efforts
                         Scenario 3
• Researcher has a proprietary IP on an invention which
  has garnered commercial interest
• Interested Party would like to exclusively evaluate IP
  for validity and applicability to it’s own needs
• Interested Party wants to:
   – To acquire a particular right (e.g. a patent licence) or asset (e.g. a
   – To require another party to enter into an agreement (in a specified
     form) or to negotiate the terms of a further agreement;
   – To evaluate materials, products or assets to determine whether to
     enter into further agreements (such as further research or licensing
    Evolution of a Licensing Deal
• No single process for developing a licensing
• Critical factors for success:
  – Networking
  – Research
  – Proactive marketing tactics
    Evolution of a Licensing Deal
1. Establish mutual interest at the non-
   confidential level.
  a. IP rights can be lost if the idea is disclosed
     without taking adequate precautions.
  b. Licensee may ask to see related publications.
  c. Multiple discussions needed to develop trust and
    a. Can get discouraging – don’t give up!
    Option Agreement Characteristics
•   Provide Right of First Refusal
•   Usually involves a Fee
•   Generally Provides Exclusivity
•   Limited in Time (Usually up to 6 Months)
•   Can be Stand Alone or part of other
    types of agreements (i.e. clause)
                 Scenario 4
• Researcher’s Lab has developed Method for
  Drug Discovery
• IP is Present
• Industry (or Increasingly Institutions) want
  access and control of technology future
• Term Sheet has been Presented
• Negotiations have concluded
         Critical Elements of Licensing
•   Definition of IP to be transferred
•   Geographical Coverage
•   Fields of Use
•   Exclusive vs. Non-Exclusivity
•   Third Party Rights
•   Sublicensing
•   Recovery Provisions
•   Royalty Rates
•   Patent Payments and Maintenance Responsibilities
•   Up Front Fees and Payments
•   Development Fees and Requirements
•   Others
        Example of PLA Terms
• Patent License Agreement
• Patent License Agreement for Startups
       Resources For You

• Praxis Unico
• AUTM (Assoc. of University
  Technology Managers)
• LES (Licensing Executives Society)
    Evolution of a Licensing Deal
1. Non-disclosure agreement if there is interest
   to discuss a potential licensing opportunity.
  a. Licensee is often reluctant to sign an NDA.
2. Due Diligence – Both Sides
  a. Licensee: does the technology have real
  commercial potential?
  b. Licensor: motives for licensing, types of past
      deals with universities, current related products
      and level of success
Patent License Agreement: Basic Goals
1. Refund patent costs and future conversion fees
2. Ongoing considerations to the university (a royalty)
3. Required minimum annual royalties after a specified period
   of time regardless of actual sales
4. Performance milestones to assure that the university’s
   technology enters the market
      PLA: Basic Goals (continued)
• This "formula" hopefully assures:
   – technology is developed to completion and put in the
     stream of commerce
   – a fair return to the university
   – the technology is returned to the university should the
     licensee not pay the minimums or achieve the specified
     performance milestones.
           Evolution of a Deal
4. License Negotiation
      a. A license is a trade
      b. It only happens when both sides
conclude that they will benefit by entering the
deal more than the cost, or loss, required to
make the deal possible.
   Basic Terms and Conditions of a
     Patent License Agreement
In general, all licenses fall into three categories,
      1. Exclusive: Only the licensee can exploit the
      2. Sole: Both the licensee and licensor can
      exploit the license (this kind of license is
      relatively rare).
      3. Nonexclusive: The licensor and an unlimited
      number of licensees can exploit the license.
  Patent License Agreement Terms
• Patent Fees: Licensee is expected to repay all
  patent costs to date, and to cover future
  conversion fees
• Payments associated with Diligence Milestones
  – Sponsored Research
  – R&D Milestones associated with a fee
  – First sale of Licensed Product
• Sublicense fees
• Annual royalties
• Equity
        Royalty Rate Definition
• are usage-based payments made by one party
  (the "licensee") to another (the "licensor") for
  the right to ongoing use of an asset,
  sometimes an IP.
• Royalties are typically agreed upon as a
  percentage of gross or net revenues derived
  from the use of an asset or a fixed price per
  unit sold of an item of such, but there are also
  other modes and metrics of compensation.
      Determining Royalty Rate
• No such thing as an industry standard patent
  royalty rate
• On the average, royalty rates tend to run
  between 4-6% of “Net Sales”
• Other important factors to consider:
  – Minimum royalties
     • It is unwise to draft a license agreement, especially
       exclusive licensing agreements, unless there is a
       provision for minimum royalties.
       Determining Royalty Rate
• The primary purpose of minimum royalties is
  to give the licensee an incentive to exploit the

• Royalties Based on Net Sales
  – Generally paid quarterly
  – “Net Sales” are usually defined as gross sales
    minus usual trade discounts, taxes, transportation
    and returns.
         Licensing: Setting a Royalty Rate
 The 25% Rule
 • Usually applied to set a royalty rate
     •     Estimate the licensee’s operating profit (related to your IP), over royalty
     •     Divide that total profit, by the net sales over that period = Profit rate
     •     Royalty rate = 25% of the profit rate

 • Can also be used for a single payment deal
     •     Estimate the licensee’s operating profit (related to your IP), over royalty
     •     Licensor’s share = 25% of operating profit
     •     Single payment = Probabilistic net present value of (25% of operating profit)

 • The 25% “rule” applies only if both sides agree to use
 this method
* Goldscheider et al. “Use of the 25% rule in Valuing IP”
                       Licensing: Royalty Rates
               Lower Limit                       Upper Limit         Median
 Chemicals        0.5%                           25.0%               3.6%
 Computers        0.2%                           15.0%               4.0%
 Consumer goods 0.0%                             17.0%               5.0%
 Electronics      0.5%                           15.0%               4.0%
 Energy           0.5%                           20.0%               5.0%
 Food             0.3%                           7.0%                2.8%
 Health care      0.1%                           77.0%               4.8%
 Machine / tools 0.5%                            25.0%               4.5%
 Pharma & biotech 0.1%                           40.0%               5.1%
 Semiconductors 0.0%                             30.0%               3.2%
 Software         0.0%                           70.0%               6.8%
 Telecom          0.4%                           25.0%               4.7%
                                                               (3% to 7%)

* Goldscheider et al. les Nouvelles. Dec. 2002
  4. Basic Business Deal Negotiation

1. What Makes a Good Negotiator?
2. Preparing for Negotiations
3. Patent License Agreement: Negotiating
Qualities of a Good Negotiator
           Negotiation Myths
• “The average person is not tough enough to
win at negotiations”
– Negotiation is not a combat sport; bullies are
  not successful for very long.
• “Negotiation is all-or-nothing. You are either
a winner or a loser”
– Negotiations should be a win-win proposition.
           Negotiation Myths

• “Only good talkers make good negotiators”
– Good listeners make the best negotiators.
• “Negotiation requires people who are selfish
and rude”
– Not rude but okay to be assertive, not timid
• “Women do not make effective negotiators”
– Women generally tend to be better listeners
  and more collaborative.
         Profile of a Negotiator
• Negotiation          • Focus on satisfaction
  consciousness        • Willingness to take
• Listening              risks
• The ability to ask   • Solving the problem
  good questions       • Willingness to walk
• High aspirations       away
• Patience
• Flexibility
     Are you a good negotiator?
• How much experience do you have with
  license negotiation?
• How confident are you with your negotiations
• What has gone well for you in your past
  negotiation experiences?
• What has not gone well? How can you be
  more prepared next time?
      Negotiation’s 4 Outcomes
1. Lose-Lose – Neither party achieves their
   needs or wants – e.g. exercise exclusive
   option sponsored research
2. Win-Lose, Lose-Win – One party makes
   outstanding gains while the other one loses
      Negotiation’s 4 Outcomes
3. No Outcome – Parties are not able to come to
  terms that they can agree upon – Not always a
  bad thing; better not to do a deal than to do a
  bad deal
4. Win-Win – The needs and goals of each party
  are met
      Negotiation’s 4 Outcomes
• Three keys to creating a win-win outcome
– Avoid narrowing the negotiation down to one
– Realize your counterpart does not have the
  same needs and wants you do
– Do not assume you know your counterpart’s
• University-Industry Partnerships
  – Focus on developing a relationship
  – Be careful about IP
• Funding technologies and funding companies
  are two different things
  – Create unique pitches for every meeting
• Win-win negotiation
  – Be prepared
  – Be flexible and focus on the relationship
  – Know when to walk away
  Preparing for Licensing Negotiations
• Who are the parties to the prospective agreement?
 (University, R&D organization, Large Co., Small Co.)

• What are the objectives of each party?
 (Is there a basis for a commercially viable agreement?)

• What are the performance expectations? (Is each party able
  to perform what the other expects?)

• Who should drive the licensing negotiations?
 (Internal Drivers vs. External Drivers)

• Does IP owner provide R&D, Tech support, know-how,
  consultants, or other deliverables in addition to IP?

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