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

Public Sector IP Discussion

Peter Willimot, IP Australia

Clarify of ownership is essential

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

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

Trends

in the past very focused on registered IP rights

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

patent protections being sought over services now too

Questions

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

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, if not we really shouldn't do it ourselves, Yes, if that's the best way to get it into the world, i.e. if open sourcing it won't work, but, should focus on one off cash sale of IP rather than ongoing revenue, and should look at national good in non-financial terms also, e.g. environmental benefit of a new technology, and benefit from this at a national level through environmental good, and selling it overseas, challenges, often they don't have effective KPIs (even though high level policy is there), protecting/generating political capital rather than financial capital

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

IP Law

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

Expert accountant delivered many public lectures

Book compiled with all the materials, employer asserted copyright

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

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.

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.

Distinction between contract of service, and contract for service.

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

‘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.

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.

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

But any employee can contract to change this rule

Prof Kamal Puri

Most IP is developed in an employer/employee context

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

Commercialisation in Universities

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

5 staff, formed in 2001

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

KCA Commercialisation Metrics Survey 2005

Results

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

$1.29 million, most from a few big deals

Measures

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

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

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.

Removing Barriers

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

Researchers tend to be interested in the research not the development

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.

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

IP Management

Durham Grigg

Principal, Tres d'Marque IP

Key Actions

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

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

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

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, IP ownership strategically and sensibly

Framework for commercialising University Research

Models of Technolgy Transfer Offices

TTO

Hub and Spoke Company, BDMs shared, contract research and grants

Commercial Company

Simon Williams, CEO ITEK, Uni of South Australia

ITEK, tech commercialisation, Incubator, commercial section, lawyers and accountants, Figures, $1M back to the Uni, in profit from ITEK activities, 6.3M to Uni since 2002, realisable assets of $23M

when to quit

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

ducking the chicken gun test, 1970 rolls royce RB211

the glossier the newsletter the more incompetent the CEO

top lies

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

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

TTO Death Cycle

faculty demands for action outstrip supply so add staff

costs go up

start adding lots of patents

patents get dropped

all about sunk capital and dead inventory of patents

academics get angry

call for new leadership

new leadership gives hope

Process

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

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

Engagement, want to talk to the researchers right at the start, and right at the end

Common Sense

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

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)

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)

Commercialisation in Government

Dr John Kapeleris, Deputy CEO, Australian Institute for Commercialisation

AIC

30 staff

'Black box' missed opportunity story

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

Commercialisation means

Value Currencies, economic, social value, environmental value, community value

knowledge diffusion, consulting services and contract research

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

part of a value chain

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

Collaboration

co-creation of value

value networks and value webs

crowd sourcing, e.g. Goldcorp

IP diffusion