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World Intellectual Property Organization DCPPS 1 presented by Mr. Vladimir Yossifov WIPO NATIONAL WORKSHOP ON INNOVATION SUPPORT SERVICES AND THEIR MANAGEMENT Muscat, April 20, 2004 omotion of Commercial Exploitation and Assessment o Research Results and Inventions at Universities

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Page 1: World Intellectual Property Organization DCPPS 1 presented by Mr. Vladimir Yossifov WIPO NATIONAL WORKSHOP ON INNOVATION SUPPORT SERVICES AND THEIR MANAGEMENT

World Intellectual Property Organization

DCPPS

1 presented by Mr. Vladimir Yossifov

WIPO NATIONAL WORKSHOP ON INNOVATION SUPPORT SERVICES AND

THEIR MANAGEMENT

Muscat, April 20, 2004

Promotion of Commercial Exploitation and Assessment of Research Results and Inventions at Universities

Page 2: World Intellectual Property Organization DCPPS 1 presented by Mr. Vladimir Yossifov WIPO NATIONAL WORKSHOP ON INNOVATION SUPPORT SERVICES AND THEIR MANAGEMENT

World Intellectual Property Organization

DCPPS

2 presented by Mr. Vladimir Yossifov

Introduction

To achieve success in research commercialization, it is

important from the outset to select projects that have the

greatest potential, not only technically but also commercially.

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World Intellectual Property Organization

DCPPS

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Assessment and Evaluation

Even with careful assessment and prudent management, only

about one in ten projects will make a profit and one in 100

will be a significant success.

The lead time before a new invention reaches the market

normally takes several years (at least five).

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World Intellectual Property Organization

DCPPS

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Technical Assessment

The technical assessment compares the new

research

result or development with existing products or

processes

and seeks to identify all the strengths and

weaknesses

and record their commercial significance.

Technology developed because of a market need is

more likely to be commercially relevant than

technology

that is of limited practical use.

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DCPPS

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Intellectual Property Rights Assessment

It is important to assess:

- the IP elements in the project (for example, confidential information);

- who owns project and/or the IPRs;

- if the rights can be transferred to a user;

- whether there has been any disclosures;

- how the rights can be protected;

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DCPPS

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Intellectual Property Rights Assessment

It is important to assess:

- whether additional valuable IP can be created;

-whether there could be infringement of third party rights;

-the potential cost of IP protection and management.

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World Intellectual Property Organization

DCPPS

7 presented by Mr. Vladimir Yossifov

Market Assessment

A project should have ideally a large financial “up-side”;

that is to say, a market potential of several million dollars per year.

It is necessary to compensate for the expense and risk of

developing a project.

Page 8: World Intellectual Property Organization DCPPS 1 presented by Mr. Vladimir Yossifov WIPO NATIONAL WORKSHOP ON INNOVATION SUPPORT SERVICES AND THEIR MANAGEMENT

World Intellectual Property Organization

DCPPS

8 presented by Mr. Vladimir Yossifov

Market Assessment

Information on the following should be collected:

- diversity of products or processes to which the

invention/R&D result is applicable;

- location of markets;

- $ value of individual markets;

- market size as global sales;

- competitive products;

- competitive companies and R&D organizations;

- potential allies.

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DCPPS

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Further Development Required

Inventions and early stage research can rarely be

commercialized without further investigation and

development.

An estimate of the unit cost of the finished product or

cost of introducing a new process is needed to help work

out the potential economic benefits of commercialization.

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World Intellectual Property Organization

DCPPS

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Regulatory Issues

Regulations and laws governing the conduct of

business can influence strongly the development and

launch of a new product or process.

Compliance with such laws can be time consuming and

costly and must be factored into the strategy for

commercialization.

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DCPPS

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Financial Requirements

R&D commercialization can only proceed through further

investment.

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DCPPS

12 presented by Mr. Vladimir Yossifov

The R&D Team

An assessment should be made of a researcher’s

potential

to work well with others and to achieve goals in a timely

fashion.

It is a golden rule that if you have to choose between

a great project with a mediocre R&D team, and mediocre

project with a great R&D team, the project with the

great R&D team is the best choice.

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World Intellectual Property Organization

DCPPS

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Commercializing Research: Optimizing the Outcomes

The greater value that can be added before

involving a third party, the greater the rewards.

When engaging in a commercialization process one

should aim to:

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DCPPS

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Add Value to the Project

- technical value adding

- commercial value adding

Reduce Apparent Risk for Investors

- verifying the scientific and technical viability of

the project

- commercial diligence (e.g. independent

assessments of the technical and IPR strength,

market potential)

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DCPPS

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Harmonize Technical and Commercial Strategies

- have regular meetings with research workers

- secure IPR and avoid premature disclosure

- beware of compromising IPR. Only senior

executives of a R&D institution should have

authority to bind these entities in contracts and

“informal” collaborative arrangements should be

avoided.

- ensure there is an IP policy

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DCPPS

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Negotiation and Management of Deals

To achieve the transfer of a technology and IPR to

manufacturers and marketers requires the negotiation of

a deal or several deals. The following comments will be

useful:

- specifically target suitable investors or developers

- know your target’s business

- be flexible and open minded

- an investor values a project by the financial return

it

could provide

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Negotiation and Management of Deals

- to the owner of the IPR, i.e., the Research

Commercialization Company, a project’s value is

what the market will pay for it.

- get first class professional advice

- even the best deals hardly ever go smoothly

- build good relationships between commercial

parties and researchers from the start.

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Research and Commercialization: On-Going Management

The technology provider should continue to monitor

the commercialization activities of the recipient during

the course of their agreement.

Diligent management of arrangements should help

maintain a productive relationship and catch problems at

an early stage before they become a danger to a project’s

success.