IPgentsia
1:30 PM – 3:30 PM Licensing or Spin-off? Spin off?
April 2, A il 2 2008
Agenda
• UW IP Policies • Licensing or Spin-Off • How to Find a Technology Partner • Drive and Grow your Business
UW IP POLICIES
UW Intellectual Property Ownership Policy 73 y
Inventors OWN their inventions and are free to profit commercially, without obligation to share benefits with the University, with exception of industry University sponsored research.
In all cases UW retains rights to the IP for the sole noncommercial purpose of education and further research.
UW Intellectual Property Ownership p y p The Philosophy
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Inventor ownership is an incentive that attracts high quality entrepreneurial researchers lit t i l h Ownership and profit incentive is best motivator to facilitate the transfer of University developed knowledge/technology for societal use and benefit g gy
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Why Does UW Promote Commercialization ?
• Recognition for Researcher and UW • Products\services commercialized from research
put to tangible societal benefit … create jobs, save lives, improving quality of life
• Commercial metrics are used by Govt.’s to justify
enhanced R&D funding for university sector
• Personal gain…it can be profitable
LICENSING OR SPIN-OFF?
Commercialization
Licensing Li i
Incremental improvement technologies t h l i Access to established markets with minim m ith minimum financial risk & quicker financial returns Minimal inventor time commitment License structured to each market reality: y annual fee, royalties (1-10% typical), patent cost repayment
Spin-Off C S i Off Company
Market disruptive technologies “ l tf t h l i “platform” ” VC investment requires >$100M market opportunity Significant hands on hands-on inventor time required to transfer know-how know how Higher risk, but returns may be higher… y g however over a longer period of time
Commercialization
Licensing Li i Spin-Off C S i Off Company
Bottom Line – - If its a $100 million market opportunity do a spin-off spin off - If the inventor(s) are not willing to put the time in that a spin off spin-off company needs, then license it
FINDING A TECHNOLOGY PARTNER
FINDING A TECHNOLOGY PARTNER - UW Office of Research – Intellectual Property management Group (IPMG) -C t f B i Centre for Business, E t Entrepreneurship hi and Technology - Ontario Centres of Excellence - Accelerator Centre - Communitech
UW Office of Research – Intellectual Property management Group (IPMG)
IPMG Role and Activities
IPMG i part of th Office of Research. is t f the Offi fR h Goal: Identify commercially beneficial technology & secure IP protection with a view to negotiating a t ti ith i t ti ti transfer of the technology to a commercial entity through licensing or creation of a spin-off company g g p p y Activities:
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Technology Due Diligence ( Inventorship, Ownership, Inventorship Ownership Commercial rights, Patents) Market research to verify existence of an opportunity Add commercial value (prototyping, demonstration projects, facilitate additional R&D) Technology Transfer ( Licensing, Spin-off support) Maintain Agreements (Licensee due diligence, patent infringement, manage liability and risks)
NEW IP POLICY EFFECTIVE 2007
NOW if Inventors want to engage UW/IPMG to commercialize their y g IP they enter into a Researchers Agreement which results in:
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Inventor KEEPS IP ownership but grants UW an exclusive right to commercialize for 5 years Proceeds of commercialization, net of patent cost recovery, are split 25% to UW (with ½ of UW’s cut going back to faculty\dept) and 75% going to Inventor IPMG and Inventor become partners in the commercialization process MOST ATTRACTIVE OPTIONS FOR COMMERCIALIZATION WHEN COMPARED TO ANY OTHER UNIVERSITY IN CANADA
C4 Group
(Coordination, Cooperation Collaboration (Coordination Cooperation, Collaboration, Commercialization) Commercialization collaboration amongst Southwestern Ontario universities
University of Waterloo University of Western Ontario McMaster University University of G l h U i it f Guelph Wilfrid Laurier University University of Windsor
• Resource sharing (people) • Joint submission of proposals for technology transfer funding, training, prototype development, statistic collection, professional best practices, etc… • Funded by Federal and Provincial governments
Technology Transfer Summary
• IPMG currently manages ~50 ttechnologies tl 50 h l i • ~150 Patents and Patent Applications • 70 patents (or 47% of patent portfolio) • • • •
licensed or otherwise commercialized ~ 400 Software Licenses since mid 1980’s ~ 80 active License Agreements g 10 start-up companies ~ $500k licensing / dividend / equity revenue per year over past 10 years
How Can We Help You?
• Investment in patent costs • Management and administration of
complicated patent protection procedures • Licensing negotiations • Spin-off company creation • Access to Federal commercialization programs ( g (NSERC- I2I, CIHR- POP) ) • Access to industrial and financial p partners
How Can We Fund You? Funding Available through IPMG g g
- UW Proof-of-Principle (POP) funds for technologies
managed by IPMG (limited discretionary funding available g y ( y g up to a maximum of $15k) - C4 POP F d ( C4-POP Funds (competition) for projects that IPMG are titi ) f j t th t commercializing (up to $50K in staged investment pp ) approach). - NSERC I2I and CIHR POP programs - Up to $125K per year f 3 years. (NSERC requires th t IPMG b your for i that be commercialization partner). - Ontario Commercialization Investment Fund through First Leaside Visions VC Fund, which will invest up to $750K i a start-up created in conjunction with IPMG. in t t t di j ti ith IPMG
Centre for Business, Business Entrepreneurship and p p Technology
Centre for Business, Entrepreneurship and Technology E t hi dT h l
- Provide the Master of Business, Entrepreneurship and Technology (MBET) programs which is a 1 year program t help l to h l learn th b i the business skills t kill to move a project from concept to commercialization. - Run Business Plan contests and the MBET students compete in Business Plan contests around th world. d the ld - The MBET students are available to assist you in doing a Market Study or a Business Plan for your business idea.
Ontario Centres of Excellence
Ontario Centres of Excellence
- Provide Funding for both research and commercialization i li ti - Expertise in Manufacturing Photonics IT Energy Manufacturing, Photonics, IT, Energy, Environment - Located at the Accelerator Centre - Invested over $16 million in research projects last year - Manage the IAF fund which can provide up to $500K in investment in start-up companies start up
Accelerator Centre
How Can the Accelerator Centre help You if a Spin-Off company is the best way to commercialize your IP?
- Provides facilities for UW spin-off companies and startup companies from the Waterloo region ( - Currently 20 companies call the AC home with another y p 12 arriving in August). - Provides board of advisors for each company (consists of entrepreneurs, financial, legal experts from the y) community). - On-going mentoring from the staff of the AC. - On-going professional programs from experts (e.g. g p , g , p y building a sales plan, hiring staff, how to price your product, Entrepreneurship 101).
How Can the Accelerator Centre help You if a Spin-Off company is the best way to commercialize your IP? - Mentors available dedicated to HR, Sales and Marketing, and Project Management -Learn from interacting with other companies in the AC. Learn AC - Easy access to our partners who are located at the AC (Communitech, OCE, IRAP, CBET, etc). - Second building under construction in September which will open in the summer of 2008 and double space available for clients.
COMMUNITECH
COMMUNITECH
- 450 high technology company members in the
Waterloo -- Provide training and support for their members - Have Entrepreneurs in Residence and Mentors to assist the early stage members -- Provide great contacts throughout the Waterloo Region R i -- Promote the Waterloo Region and our industries
SUMMARY
• Lots of resources available to assist you in your licensing or spin-off efforts. •All of the Technology Partners work closely together t th – you d ’t h don’t have t pick one over th other to i k the th – use all or non of them. •UW has the most attractive commercialization options for researchers when compared to any other leading research university in North America.
SUMMARY
Access to the Accelerator for development of y your spin-off companies. p p
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• Communitech, OCE, & CBET all located at the Accelerator Centre. • Significant funding available through the IPMG for your research and spin off spin-off companies. Contact IPMG for more information