Transcript Value of university IPto the university:

University – Industry Collaborations:
American Best Practices
Christopher Noble
Technology Licensing Officer
Christopher Noble
Technology Licensing Officer
Massachusetts Institute of Technology
E-mail: [email protected]
Christopher Noble is MIT’s Licensing Officer for energy technology. His responsibilities include the intellectualproperty terms of sponsored research, evaluation and patenting of MIT inventions, IP marketing and negotiation of
commercial licenses with startups and established companies. He previously worked for over 30 years in general
management and M&A for energy and technology companies. Chris has experience as a technology entrepreneur,
is the lead inventor on two issued patents, has raised and negotiated multiple VC financings as advisor to four
early-stage companies, and has served on the Board of private technology companies and non-profits. He lived
and worked in South America and Europe and is fluent in French and Spanish. Chris is Assistant Vice President of
the Association of University Technology Managers, lectures internationally, and advises universities in developing
economies on IP policy, management and licensing. Chris is a recipient of the Licensing Executive Society Deals of
Distinction award. He has a B.Eng. from McGill University and an M.S. in Management from MIT.
CRN 10/30/14 #2
“Technology Transfer” from the university
to industry occurs in many ways
• The Graduating Student
• Publications
• Collaborative/sponsored research with industry
• Outside Consulting by faculty
• University seminars/courses for industry
• And… Intellectual Property licensing!
CRN 10/30/14 #3
Value of university IP
to the university:
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Helps deploy university inventions in society
Attracts research sponsors, and employers for
graduating students
Attracts entrepreneurial faculty and students
Secures freedom of research
Regional and industrial development
Oh yes… also earns money for the university?
CRN 10/30/14 #4
Value of university IP
to the licensee:
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Proof-of-concept reduces risk and development time
IP blocks competition
Broadens licensee’s product portfolio
Door to future collaboration with university researchers
The university’s prestige and credibility
Training and motivation for licensee’s staff
Often a key to raising money for startup companies
CRN 10/30/14 #5
Companies have a range of licensing strategies
Non-Exclusive License
15%
46
Part of company’s
overall IP portfolio;
often defensive in
established market.
Differentiation
against
competitors
Important new
product area for
a growing
company
48%
146
Startups
MIT research is
complementary to
company’s own
(exclusive) research
37%
115
Other Small Co.
Large Co.
Exclusive License
21%
22
41%
43
Foundational
company
technology;
market-maker.
38%
39
Total licenses, 2010-2013
CRN 10/30/14 #6
So, which terms have value in
university licenses?
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Investment and commercialization diligence terms
Modest but uncapped royalties proportional to IP value-added
Sublicense rights? -- for exclusive licenses only
Enforcement rights? – also for exclusive
Terms that are easy to audit
Startup? Equity; dilution-protected until working model;
– and Participation Rights
• Prospects for future sponsored research
• Trade secrets? No, not our charter
• No branding or warranties
CRN 10/30/14 #7
Licensing to startups:
What about Equity?
• Startups are cash-poor
• Equity provides a return if licensed technology fails but
company succeeds with something else; or if company
changes strategy away from foundational IP.
• Determining fair anti-dilution and down-round protection?
• How about cash investment by the university?
– Better approach: Participation Rights
CRN 10/30/14 #8
Entrepreneurship in the university –
why is everyone talking about it?
• Entrepreneurial success – every university president wants the
next Google or Facebook
• Commercialization is more effective with the inventors involved
• Economic “ecosystem” development around the university
• Entrepreneurship reputation attracts entrepreneurial faculty and
students to the university
But – how will the industrial research sponsor benefit from
entrepreneurship in the university?
CRN 10/30/14 #9
University entrepreneurship is an
opportunity for the industrial sponsor
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Entrepreneurial faculty and students are motivated to conduct
industrially-relevant research.
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Faculty who are also startup company founders can apply that
experience to their industrial-sponsor relationships.
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Commercialization is often more effective with the inventors involved.
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Industrial sponsors are exposed to the entrepreneurial ecosystem of
the university: potential partnerships and even acquisitions of spinout
companies.
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but… industrial sponsors are legitimately concerned about their funded
research going “out the back door” with startup companies. Thus clear
and consistently-applied IP policies are extremely important.
CRN 10/30/14 #10
Industrial sponsors can collaborate with
university startup companies
For example: the sponsored startup model:
1. Industrial research sponsorship at the university, leading to
new IP;
2. Spinout of a startup company based on the IP results of the
research; discussed at the initiation of the research.
3. Industrial sponsor co-invests alongside VCs in the startup
company, rather than taking a commercial in-license to the
project IP.
4. Investment is combined with a commercialization partnership,
and potentially a buyout option.
CRN 10/30/14 #11
Thank you!
Christopher Noble
Technology Licensing Officer
Massachusetts Institute of Technology
E-mail: [email protected]