Technology Transfer. Issues and Considerations

Transcription

1 Technology Transfer Issues and Considerations

2 Agenda The TTP Process Spin out vs. License Deal Sheets - License Terms Discussion

3 Technology Transfer Process Primary Activities Technical & patent details Technical/Market Research & Marketing Licence Negotiation Continual Business Development TTP Stage Determining technology capability with inventors and patent agents Understanding the potential applications Assessing market demand (e.g. what are the alternative solutions) Develop commercial proposition (Value Proposition) Negotiation/agreement of licence or Spin Out Ongoing account management

4 Technology Transfer Process - Detailed Primary skill set requirements TTP 1-3 TTP 4-6 Technical Technical Value Licence Negotiation Business & patent & market assessment construct development research Interacting with scientists & patent agents 4 Transfer VP into licensing construct 2 Build business case 5 Negotiating the deal 3 Create a value proposition (VP) 6 Key account management

5 Technology Transfer Process Stage 1 Criteria Novelty/ Creativity Strength of IPR 3rd Party Involvement Factor x2 x1 x1 Exploitation Route Project Team 10% Exploitation Potential Assessment Criteria ~ Weighting Novelty/ Creativity 20% Presentability; Time to Market; Project Status x2 Addressable Market & Revenue Potential 30% Strength of IPR 10% Addressable Market Revenue Potential Exploitation Route Project Team x3 x1 Presentability; Time to Market; Project Status 20% 3rd Party Involvement 10% Weighted Scoring Matrix

6 Technology Transfer Process Stage 2 Technical and Market Research Understanding the potential applications The difference between technology and application What are the possible applications beyond original concept? Could further development enhance the offering or widen scope? Would a Proof of Concept - make it more compelling? Does it need a partner? i.e. for funding and/or production Detailed Market Research and Analysis Industry Analysts

7 Technology Transfer Process Stage 3 Targeting Potential Licensees Who will buy it? Direct marketing to known related customers from database Marketing through other means to unknown customers in the related market sector e.g. Marketing Communications print /online Direct mail Trade Events Use of Public Relations Use of partners/agents Slid e 7

8 Technology Transfer Process Stage 4 Commercial Proposition Determining the Value Value Proposition To both The Inventor - Licensor and target licensees Balance between cost and return on investment Costs Licensor IP, technology development, sales & marketing Licensee IP, technology development, regulatory, manufacturing, distribution etc. Licensing fees Return Licensor Licensing income / equity Licensee Product sales; a function of market demand, competitive position, etc. Slid e 8

9 Technology Transfer Process Stage 5 Deal Negotiation The Small Print (T s and C s) e.g. Licence Fee Licence payment structure Extent of exclusivity Ongoing Commitment/Support requirement from Inventor Retained rights Liabilities We will look at a deal sheet construct later! Slid e 9

10 Technology Transfer Process Stage 6 Ongoing Business Development Maintaining relationships Account management Cross selling potential Further related IP to extend/augment original technology Maintain ongoing awareness create future Opportunities Slide 10

11 TTP Timeline Summary TTP Patent IP review Commercial Decision 1 Y 20 Y 2.5 Y TIME KEY TTP start to finish Patent life IP review period Commercial Decision Deal making period

12 Technology Transfer Process PCT: Patent Application No PCT/GB2017/00xx dated 30th March 2017 Grant Territory Technical Field Exclusivity Sub licence Rights Develop Have developed Make Have made Use Maintain Modify Supply Worldwide or UK or Patent Territory Cover IP Strategy For Example - Telecommunications Exclusive vs Non Exclusive vs Sole No Royalties License Fee Patent Fee Term Rights Surviving Termination % Share of Sale of Licensed Products vs. Revenue Share 1,000,000! Costs of Patents The later of the expiration, lapse or invalidation of the last remaining Licensed Patents in the Territory xx months to dispose of Stock

13 Examples biased towards Spin Out Disruptive platform technology with multiple applications Strong foundations, development stream and IP position i.e. portfolio Complete product / system Criteria Nature of Technology Strength of Technology Pipeline Completeness Product /Component Examples biased towards Licensing Incremental improvement to an existing technology Isolation invention and lone patent Component part of a larger system Multiple and Large (~$1bn) Open, high growth, good margins, concentrated customer base, active M&A sector New or emergent market i.e. needs to be created Addressable Markets / Applications Market / Industry Attractiveness Route to Market Niche and Moderate (<$100m) High entry barriers, low growth, strong competition, fragmented customers, unloved sector Existing market with well entrenched supply chains, distribution and competition Active engagement with commercialisation and interest in CSO / CTO role Easy access to skilled managers with track record and industry credibility Inventor Interest / Participation Management Availability No interest in supporting commercialisation nor role with new business Difficult to identify and attract managers with relevant skills 1-10m per round in a credible sequence of value inflexion points Ability to achieve to breakeven / scale within 3-7 years Business can scale to produce the necessary return on the investment (but with risk) Seed / ABC round investment Timescale to Payback / Exit Potential for 10x Returns Very high level of initial investment / capex intensive business model Very long timeframe to commercialise (e.g. drugs) or market emergence Business only capable of producing moderate return (even if low risk) Commercial In Confidence

14 Thank You Questions?