IP and Knowledge Commercialisation Conference

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IP and Knowledge Commercialisation Conference by Mind Map: IP and Knowledge Commercialisation Conference

1. Public Sector IP Discussion

1.1. Peter Willimot, IP Australia

1.1.1. Clarify of ownership is essential

1.1.2. Public Sector is commercialisation the right word? or is it about knowledge dissemination/transfer

1.1.3. Embedding an IP culture making staff IP aware using staff to maintain integrity of IP assets In innovation context queensland government has IP revenue sharing policy in place with lots of checks and balances to ensure probity but no dept has actually done anything yet with this need an IP policy and resources for patent budgets

1.2. Trends

1.2.1. in the past very focused on registered IP rights

1.2.2. now focused also on less formal strategies eg trade secrets as filing a patent puts it out there for the world to see patent is only as good as inclination/ability to monitor for infringement enforce/defend patent against infringement

1.2.3. patent protections being sought over services now too

1.3. Questions

1.3.1. Do public Research Organisations and Universities have the same objectives regarding commercialisation of IP?

1.3.2. Should Public Research Organisations get involved in commercialisation at all? Should NASA create a velcro factory? i.e. is holding onto the commercialisation their core business or not? If we can get commercial partner on board that's a very good acid test about whether it's a good technology Yes if that's the best way to get it into the world but challenges often they don't have effective KPIs (even though high level policy is there) protecting/generating political capital rather than financial capital

1.3.3. Does responsibility to carry out research include duty to invent the further it is towards basic research the lesser the duty to invent the further towards applied research the greater the duty to invent

2. IP Law

2.1. Stephenson, Jordan & Harrison Ltd v. MacDonald & Evens (1951 CA)

2.1.1. Expert accountant delivered many public lectures

2.1.2. Book compiled with all the materials, employer asserted copyright

2.1.3. Held that copyright vested with employee because the employer could not direct the employee to give such lectures

2.2. In most cases he presented, anything that was outside of the explicit terms of service in the employment contract, was held to be the employees IP.

2.2.1. This was especially the case in the context of scientists where the expectation on them was to research, not invent. And the IP for inventions is conventionally (and legally) held to be theirs. So, it’s really important to explicitly agree and contract for IP sharing between employers and employees.

2.3. Distinction between contract of service, and contract for service.

2.3.1. Case from 1916 where dispute between whether the university of London owned the copyright or whether the examiners owned the copyright.

2.3.2. ‘control’ is the key test, if the employer has control and provides significant direction then it’s a contract of service and the copyright vests in the employer.

2.4. But now, with specialised knowledge work, where a person exercises a high degree of skill and expertise, control is not the only reasonable test / sole determining factor.

2.5. Why should employers own IP – return on their investment, provide opportunities for creative works to employees, organise production of material and distribution/marketing of the product

2.5.1. But any employee can contract to change this rule

2.6. Prof Kamal Puri

2.7. Most IP is developed in an employer/employee context

2.7.1. How do you create accountability in IP generation during R&D

3. Commercialisation in Universities

3.1. Dr Andy Sierakowski, Director Office of Industry and Innovation, Uni of Western Australia

3.1.1. 5 staff, formed in 2001

3.2. Knowledge Commercialisation Australia (KCA) http://www.kca.asn.au/

3.2.1. KCA Commercialisation Metrics Survey 2005

3.3. Results

3.3.1. 10 start-up companies, 40 licensing and option deals. First cash exit with sale of shareholding

3.3.2. $1.29 million, most from a few big deals

3.4. Measures

3.4.1. Should be generating 2-3% of total research funding in licensing income. e.g. on $100M, $2-3M from licensing Uni has $900 M in external consultancy revenues from industry contracts, much larger than revenue from products/licensing revenue

3.4.2. Think that market cap of companies held is an OK measure, so much better to only measure what you’ve gotten out (like when you value/sell as house

3.4.3. Measures per $100M research income & benchmarked against US Universities Invention disclosures and patent applications lag the US but US universities take out patents faster and harder just to see if anything sticks (eg have 3 patent attorneys on staff…) Number of licences is similar to the US, but lower revenue per licence (but attributable to economies of scale and market proximity) Startup performance essentially the same in comparison to the US $100M per year will generally buy you 1 startup company (on average) 75% of licences are overseas don’t’ get obsessed about national benefit at the expense of getting the technology out there.

3.5. Removing Barriers

3.5.1. Patent vs publish – have to help the researchers understand when it is best to do either of these

3.5.2. Researchers tend to be interested in the research not the development

3.5.3. Hard to achieve market push from researchers, have to get market pull. Often the way you think it’ll be commercialised isn’t the way it ends up being done, ie what the real market is.

3.5.4. Communications have to be managed, commercial timeframes/expectations are different to academic ones.

4. IP Management

4.1. Durham Grigg

4.1.1. Principal, Tres d'Marque IP

4.2. Key Actions

4.2.1. Create recognition that IP is constantly being generated understanding the value of IP, how & where it's created in your agency interest in pursuing innovation in every aspect of operations a reward culture for creation of IP assets

4.2.2. Capture can't manage if you don't have anything to manage or your don't realise what you've got

4.2.3. Control categorise and consolidate understand what you have decide what use to make of it

4.2.4. Care for protect by registration or other methods use develop the IP further in accordance with a clear, costed IP development strategy to capture costs/in-kind inputs enforce

5. Framework for commercialising University Research

5.1. Models of Technolgy Transfer Offices

5.1.1. TTO

5.1.2. Hub and Spoke Company BDMs shared contract research and grants

5.1.3. Commercial Company

5.2. Simon Williams, CEO ITEK, Uni of South Australia

5.2.1. ITEK tech commercialisation Incubator commercial section lawyers and accountants Figures $1M back to the Uni realisable assets of $23M

5.3. when to quit

5.3.1. business awards or grants can be inversely propotional to levels of business success

5.3.2. ducking the chicken gun test 1970 rolls royce RB211

5.3.3. the glossier the newsletter the more incompetent the CEO

5.4. top lies

5.4.1. top lies of entrepreneurs our projections are conservative research firm says market will be $50B by 2010 all we have to get is 100% of the US market we have a proven management team

5.4.2. top lies of VCs I liked your co but my partners don't if you can find lead investor we'll follow we'd love to coinvest with other VCs we're investing in your team I have lots of time to dedicate to your company we can open doors at our client companies we like early-stage investing we think Unis are a great source of ideas

5.5. TTO Death Cycle

5.5.1. faculty demands for action outstrip supply so add staff

5.5.2. costs go up

5.5.3. start adding lots of patents

5.5.4. patents get dropped

5.5.5. all about sunk capital and dead inventory of patents

5.5.6. academics get angry

5.5.7. call for new leadership

5.5.8. new leadership gives hope

5.6. Process

5.6.1. Benefits equipment for researchers income to school 40% income to inventor 40% income to ITEK 20%

5.6.2. Activities have their own investment fund other standard commercialisation activities Incubator bridging the valley of death

5.6.3. Engagement want to talk to the researchers right at the start and right at the end

5.7. Common Sense

5.7.1. Myths value of the business == cost of the research money will ensure success licences are not as lucrative as spin out companies a patent is all the protection I will need and will make me money entrepreneurs are highly caffeinated, highly inspired insomniacs and idea or scientific result is an opportunity an idea has high value

5.7.2. common mistakes investing in a bad idea not investing in a good idea most business plans are a wish list features are not benefits the 'So What?' factor entrepreneurial persistence is important element of success and essential element of failure (knowing when to quit)

5.7.3. Truths it'll take longer than you think attrition is high 40% fail at ITEK product dev costs are less than 10% of overall commercialisation costs initial valuation is difficult inventors generally too product focused investors invest in people (cohesive teams)

6. Commercialisation in Government

6.1. Dr John Kapeleris, Deputy CEO, Australian Institute for Commercialisation

6.2. AIC

6.2.1. 30 staff

6.2.2. 'Black box' missed opportunity story

6.2.3. Units TechFast help SMEs adopt new IP & tech from research sector TechClinics GIS services hub to help Govt commercilise IP in partnership with industry

6.3. Commercialisation means

6.3.1. Value Currencies economic social value environmental value community value

6.3.2. knowledge diffusion, consulting services and contract research

6.3.3. maximising collaboration each small transaction (even if low value on the surface) can help build a network of relationships

6.3.4. part of a value chain

6.3.5. Open Innovation focus on spinning outside our current market and using external technology/IP to create new markets and combining the two to make even more new markets Principles work with smart people inside and outside the company profit from other's use of our IP in other fields of use, and license other's IP whenever it advances our business model

6.4. Collaboration

6.4.1. co-creation of value

6.4.2. value networks and value webs

6.4.3. crowd sourcing e.g. Goldcorp

6.4.4. IP diffusion