201501 gests423 s1

GESTS423 Intellectual Property Management &

Technology Transfer Session 1: Introduction

Azèle Mathieu, PhD

February - June 2015

1

Why Solvay/Polytech students would attend a course of technology transfer ?

• Scientist vs business developer

GESTS423 – Technology Transfer – © Azèle Mathieu

2

01 The PROBLEM Engineer and entrepreneurship.mp4







3

?


4

All along this course YOU will be the BUSINESS

DEVELOPER …

The main benefit for you is:


5

To learn how to turn a new academic

INVENTION into a USEFUL, commercialized

innovation BENEFITING THE SOCIETY

Today’s agenda

• Presentation

• Organisation

• Finding a patent

• Patent’s roles


6

Today’s agenda

• Presentation

• Organisation




7

Azèle Mathieu

8

Business background

• Manager health cluster lifetech.brussels (www.lifetechbrussels.com )

• Financial Advisor @impulse.brussels

• Business Development Manager@Bone Therapeutics

• Business Development Manager@ULB Technology Transfer Office

Academic background

• Professor Technology Transfer (7th year) & Business Planning (3rd year) @ Solvay Brussels School of Economics and Management (SBS-EM), Master & MBA

• PhD in Economics and Management


http://www.lifetechbrussels.com/

Presentation


9

Who are you?

• Year?

• VUB/ULB/Erasmus?

• Faculty?

• Knowledge of patent/technology transfer?

• Other courses followed in the field?

What do you expect from this course?


10

Intellectual property rights?


11


12

Today’s agenda

• Presentation

• Organisation




13

Learning objectives


14

Intellectual Property Rights

(and in particular patent applications)

Specific case of academic knowledge transfer

Business potential >< scientific issues

Business risks >< great inventions

Economic value

Strategic aspects of the valorisation process

From research to business


15

Objectives of the team assignment


16

To learn the managerial implications of knowledge transfer mechanisms, through a real project: a ULB invention

To understand the technology at stake

To understand what a patent is

To tackle issues to make an innovation from an invention

Questions you could raise (& answer) in your assignment (1/2)


17

• Understand the patented invention

• What is « protected » and… what is not protected by the patent?

• Who are the other academic/business teams publishing and/or patenting

in the same field?

• What has been the evolution of patent applications regarding one field?

• What is the maturity of the patent?

• What is the stage of development of the patented invention? Does a

prototype already exist?

• In this field when (from which stage of maturity) companies start to be

interested to in-license? Or to partner? What is the privileged way of

partnering?

Questions you could raise (& answer) in your assignment (2/2)


18

• What are the competitive products alternative solutions? Who are the

competitors for what regards claims of your patent?

• Which companies could be considered as potential licensees? Why?

• Would you advise to go for licensing-out option towards an existing

company or for launching a new spin-off company?

• If the patented invention has the potential to be marketed, what are the

milestones (technological, market, financial,…) to be reached?

• What are the challenges to make the technology available to users?

• Does the patented invention fulfill unmet needs?

• If the patented invention has application in health and healthcare, what

about Health Economics, Certification aspects?

• …

Contribute to build the proof of concept/proof of business by assessing one or more typical risks


19

1. Technology risk assessment

2. Team risk assessment

3. Social health/risk assessment

4. Appropriability risk assessment 5. Budget risk assessment

6. Short term market risk assessment

7. Long term market risk assessment

Team risks assessment - The gaps

20

Origin of the project Characteristics of the solution

Gaps

Academic researcher Technology push Customer pain taken into account? Entrepreneur? Business model? Regulatory requirements? Health economics?

Physician/doctor Demand pull Entrepreneur? Business model? Scalability of the solution? Regulatory requirements?

Serial entrepreneur/Tech person (outside of health sector generally)

Depends, generally answers a real customer pain but…

Knowledge of the medical/health sector? Regulatory requirements? Health economics?

Team assignment


21

2 to 3 persons/team

5 February: compose teams of 3 persons

By 8 February: each team chooses its 3 most preferred patents (1email/team to the Professor: first name, last name of team members + 3 most preferred patents)

11 February: the teacher attributes 1 patent/team

2 teams could work on the same patent

!Do not imitate the other team!

By the end of February: having met the scientific advisor of the TTO to better understand your patented invention

Next steps


22

05/02/2015:

composition of each team

08/02/2015: deadline to send

your 3 most preferred patents

to the teacher

11/02/2015: you will know on which patent you

will work

Please indicate your team number, your first names and last names, and the patents

numbers! 1 e-mail/team!

The patents you will work on


23

# Ref ULB Theme

P1 P.ULB.193 Method for recording gabor hologram

P2 P.VUB.029 Active Corrosion Protection Coatings

P3 ULB-069

Reactivation of HIV-1 gene expression to treat persistent HIV infection

P4 P.ULB.183 Blood test

P5 PELVIC AND FEMORAL ANATOMICAL LANDMARKS

P6 T262

METHOD FOR DETERMINING SUSPENDED MATTER LOADS CONCENTRATIONS IN A LIQUID

P7 ULB197 Deformable mirror and method to produce it

P8 U6613 Materials coated with calixarenes

P9 T228

Device for visualization and three-dimensional reconstruction in endoscopy

Confidentiality


24

Delay between a patent’s application and its publication

Confidentiality agreement

Implications:

!Do not transfer your patent to anybody!

!Do not speak about the invention to anybody!

!Do not publish information related to the patent!


25

=> Notion of INDUSTRIAL SECRET, another mean to protect IP

Examples of final assignments


26

● The simple case…

● … and the complex one

FinalPPT_Team5_Patent6.pdf



FinalPPT_Team 9_Patent6.pdf



Schedule* (1/2)


27

Date Topic

04/02/2015 Introduction

11/02/2015 From research to business (Part I)

18/02/2015 From research to business (Part II)

25/02/2015 The different types of intellectual property rights

04/03/2015 How to best use patent databases?

11/03/2015 Valorisation plan (Part I)

12/03/2015 Valorisation plan (Part II)

18/03/2015 Intermediary presentations

19/03/2015 Intermediary presentations

*: may be adapted

Schedule* (2/2)


28

Date Topic

25/03/2015 Valorisation plan (Part III)

01/04/2015 Valorisation plan (Part IV)

02/04/2015 Questions & Answers

22/04/2015 Case study

23/04/2015 Barrier to tech transfer

29/04/2015 What is the value of your patented invention?

30/04/2015 Final presentations



Grading


29

● ~45%: team work (form and content):

o Form (5%)

o Content of the written work (20%)

o Final presentation including relevancy of questions/answers (20%)

● ~5%:

o Attendance & active participation to the class sessions

o Respect of deadlines

● ~50%: final exam


31

Today’s agenda

• Presentation

• Organisation




32

Find your patent on your own


33

● European Patent Office (EPO), esp@cenet

● United States Patent & Trademark Office (USPTO)

● Japan Patent Office (JPTO)

Example:

● Patent title: «Digital holographic microscope»

● Applicant: Université Libre de Bruxelles

● Inventor: Frank Dubois

http://worldwide.espacenet.com/advancedSearch?locale=en_EP


34


35


36


37


38

Today’s agenda

• Presentation

• Organisation




39

A patent: definition


40

Exclusive right

“Negative” right

Granted for an invention, product/process offering a new

technical solution to a problem

Length: 20 years

Implication: the invention cannot be commercially made,

used, distributed or sold without the patent owner's

consent

Conditions to be fulfilled


41

Practical use

Industrial application

Element of novelty

Inventive step

Accepted as "patentable" under law

Remark


42

Distinction between

A pending patent application

A granted patent application

Timeline for international application


44

Source: Dehns

Applying for a patent: only a part of the journey…


45

Applying for a patent is one thing… protecting the patents’ portfolio is another…

Agreement between Facebook et Yahoo! regarding patents and marketing (06/07/2012 – L’Echo)

Apple wins over Samsung (27/08/2012)

http://www.lecho.be/actualite/entreprises_technologie/Accord_entre_Facebook_et_Yahoo_sur_les_brevets_et_la_pub.9210680-3063.art











http://www.lecho.be/actualite/entreprises_technologie/Apple_au_record_apres_la_victoire_sur_Samsung.9228214-3059.art




Which roles a patent may fulfil ? (1/2)


46

Competitive advantage

Attraction of capital

Negotiating power

● Technological negotiations

● Business negotiations

Cross-licensing agreements

Bargain against financial difficulties

Patent portfolio = a valuable intangible asset


47

1.100 patents

$500 millions - $2.6 billions =

The multiple roles of a patent: (2/2)


48

Securing international and national markets

Defensive and offensive strategies

Improving the reputation

Facilitating the coordination amongst partners

…

References


49

World Intellectual Property Organization (WIPO): www.wipo.int

Japan Patent Office (JPTO): www.jpo.go.jp

● United States Patent & Trademark Office (USPTO): www.uspto.gov

● European Patent Office (EPO), esp@cenet: http://be.espacenet.com

o Guide for applicants. Part 1 «How to get a European patent ?” (http://www.epo.org/applying/european/Guide-for-applicants.html)

o Guide for applicants. Part 2 « PCT procedure before the EPO ("Euro-PCT")” (http://www.epo.org/applying/international/guide-for-applicants.html )

● Patent reform: http://ec.europa.eu/growth/industry/intellectual-property/industrial-property/patent/index_en.htm

http://www.wipo.int/

http://www.jpo.go.jp/

http://www.uspto.gov/

http://be.espacenet.com/

http://www.epo.org/applying/european/Guide-for-applicants.html





http://www.epo.org/applying/international/guide-for-applicants.html





http://ec.europa.eu/growth/industry/intellectual-property/industrial-property/patent/index_en.htm





