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GESTS423 Intellectual Property Management &

Technology Transfer Session 7: Valorisation plan

Step II: To who?

Azèle Mathieu, PhD February - June 2015

GESTS423 – Technology Transfer – © Azèle Mathieu

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WHAT SHOULD YOU TAKE INTO ACCOUNT WHEN COMMERCIALISING A PATENT?

The Valorisation Plan (VP)

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As you make a Business Plan when you want to launch a new company

You make a Valorisation Plan when you want to make a new invention/competences useful for the society

The VP is built around 4 main axes:

● What?

● To who?

● How much?

● How?

Today’s agenda

• The Valorisation Plan

● What?

● To who?

● How much?

● How?

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To Who?

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Existing company

To be created company – “spin-out/spin-off company”

What are the transfer options?

Sale of the technology – transfer of the ownership

License on the technology – transfer of some rights

Transfer options

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Patented

Technology

License

Existing company

Spin-off company

Sale

Existing company

Spin-off company

Licensing: pro’s

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LICENSOR LICENSEE

1 - SKILLS OF 1/3 √ √

2 - CROSS-LICENSING √ √

3 - SPARE RESOURCES – OPPORTUNITY COST √ √

4 - KEEP IP + BENEFIT ADDITIONAL $ √ NA

5 - ACCESS NEW MARKETS √ NA

6 - TURN INFRINGER OR COMPETITOR INTO PARTNER √ NA

7 - CONTROL ON INNOVATION √ NA

8 - COMBINATION OF PRODUCTS: INNOVATION NA √

Roles of licensing (1/3)

Cross-licensing:

A

Access new markets:

Novartis Ophthalmics, part of the Novartis Pharmaceuticals Division, has licensed the exclusive rights to develop and market Lucentis outside the US for indications related to diseases of the eye. As part of this agreement, Novartis paid Genentech an initial milestone and… GESTS423 – Technology Transfer – © Azèle Mathieu

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Roles of licensing (2/3)

Innovation:

XOLAIR

In February 2004, Novartis Pharma AG, Genentech, Inc., and Tanox, Inc., finalized a three-party collaboration to govern the development and commercialization of certain anti-IgE antibodies including Xolair (anti-asthma) and TNX-901. Under this agreement, all three parties co-developed Xolair. On August 2, 2007, Genentech, Inc. completed the acquisition of Tanox, Inc. and has taken over its rights and obligations. Novartis and Genentech are co-promoting Xolair in the US where Genentech records all sales

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Roles of licensing (3/3)

Innovation:

40 Examples of Open Innovation and Crowdsourcing

http://www.15inno.com/2012/08/09/oicrowdexamples/

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Licensing: con’s

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LICENSOR LICENSEE

1 - NOT AS PROFITABLE AS OWN INVESTMENT √ NA

2 - LICENSEE BECOMES COMPETITOR √ NA

3 - TECHNOLOGY NOT CLEARLY DEFINED √ NA

4 - DEPENDENCY √ NA

5 - TECHNOLOGY NOT READY FOR EXPLOITATION NA √

6 - COST NOT SUPPORTED BY THE MARKET NA √

Sale

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New asset for the buyer

One payment unless agreed otherwise

To be considered when no further developments can be made by the applicant

Usually not universities’ favourite option

Heavy consequence in case of bankruptcy

One sale >< multiple licensing agreements for multiple applications

Existing company versus spin-off company (1/2)

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SPIN-OFF COMPANY EXISTING COMPANY

PATENT PROTECTION -NEEDED -SCOPE

Yes

Broad

No

Narrow-broad

FREEDOM TO OPERATE Required Not required

STAGE OF DEVELOPMENT -STAGE -INVESTMENT NEEDED

Early POC

High

Any

Small-high

MARKET: -NEED -STAGE -SIZE -COMPETITION

Major

New, emerging or fast growing Large Low

Minor

Any Small to large

Low-high

Source: Rudy Dekeyser, Managing director VIB, 30/10/2009, IFB Masterclass Biotechnology.

Existing company versus spin-off company (2/1)

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SPIN-OFF COMPANY EXISTING COMPANY

PRODUCT TYPE: - ORIGINALITY - ADDED VALUE

High High

Low-high

Small-high

SCIENTISTS - PROFILE - TT ATTITUDE

Leader

Very positive

Good-excellent Neutral-positive

RESEARCH PROGRAM Core Any

EFFORTS Very high Low-high

RISK Very high Low

LEGAL COMPLEXITY High Low

TIMING FIRST REVENUES Slow Fast

Source: Rudy Dekeyser, Managing director VIB, 30/10/2009, IFB Masterclass Biotechnology.

Sources of VC’ risks in a NTBF investment

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SOURCE OF RISK INTERNAL (I) OR EXTERNAL (E) RISK

MANAGEMENT RISK I

MARKET RISK E

TECHNOLOGY RISK E

PRICING RISK I/E

FINANCE RISK I/E

LIQUIDITY/EXIT RISK E

Source: European Communities - Gate 2 Growth (2002)

Assessing the financial soundness of the company

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For a spin-off company:

Business plan?

Financial plan?

For an existing company:

Solvency

Liquidity

Profitability

…

For both:

Development plan of the technology?

• Cohen, W.M. and D.A. Levinthal (1990). Absorptive Capacity: A New Perspective on Learning and Innovation. Administrative Science Quarterly, 35(1), pp.128-152.

Christensen, C. (03/11/2012). A Capitalist’s Dilemma, Whoever Wins on Tuesday. The New York Times.

European Communities – Gate 2 Growth (2002). A Guide to Financing Innovation.

Guellec, D. and B. van Pottelsberghe de la Potterie (2007). The economics of the European patent system : IP policy for innovation and competition. Oxford : Oxford University Press, 250 p. (ISBN : 9780199216987 ; 9780199292066 ; 0199216983)

Markides, C. C. (2012). How disruptive will innovations from emerging markets be? MIT Sloan Management Review, 54 (1), p.23.

Mullins, J. (2006). The New Business Road test. What entrepreneurs and executives should do before writing a business plan.

Peeters, C. and B. van Pottelsberghe de la Potterie (2007). Economic and management perspectives on intellectual property rights. Basingstoke [England] : New York : Palgrave Macmillan, 266 p. (ISBN: 9781403949639 , 1403949638)

References

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