iberian universities technology transfer conference technology licensing smbr and walkinsense 29th...
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Iberian Universities technology transfer conference
Technology Licensing
SMBR and Walkinsense
29th November 2010, Ayamonte
University of PortoUniversity of Porto
2,270 Teaching staff Researchers
1,700 Technical and Administrative Staff
28,900 Students
Faculties: 14
Business School: 1
Libraries: 30
Museums: 12
R&D units: 69
Independent Associated Institutes: 7
Funded in 2004, as the U.Porto Knowledge Transfer Office.
Staff: 8
© 2008 Maria M. Oliveira
Promote sustainable forms of knowledge and technology transfer and strengthen U.Porto links to industry
Promote sustainable forms of knowledge and technology transfer and strengthen U.Porto links to industry
University of Porto University of Porto InnovationInnovation
Industry-University liaison
Industry-University liaison
R&D results valorisation and
entrepreneurship
R&D results valorisation and
entrepreneurship
R&D funding programmesR&D funding programmes
-Management of Intellectual property rights - Technology transfer
- Entrepreneurship programmes
- Support spin-off creation
- Scanning of R&D results & skills
- Identify industry R&D & innovation needs;
- Serve as liaison with Industry
- Search and dissemination of R&D international funding opportunities
- Support in proposal drafting
- Project management
University of Porto University of Porto InnovationInnovation
Examples of activitiesExamples of activities
1. IP Regulation2. Technology offers Book3. Entrepreneurship
training4. UPIN website5. Researchers night
1 2
3
4
3
3http://upin.up.pt/
5
Simulated Moving Bed Simulated Moving Bed ReactorReactor
Technology: process for production of a green additive;
Status: laboratory prototype fully operational;
IP: Portuguese and European patent granted; extensions to 10 European countries, USA and Brazil;
Inventors: excellent reputation and cooperative;
Company: Ethanol producer. It wanted to produce biodiesel;
Time Period: started late 2006.
Framework:
Simulated Moving Bed Simulated Moving Bed ReactorReactor
Company interest in the technology;
Potential for market introduction;
Technology scaling up;
Ownership of future IP;
Non-monetary terms (legal and technical).
Negotiation Issues:
Simulated Moving Bed Simulated Moving Bed ReactorReactor
Milestones
Performance
Future IP ownership
Inventors collaboration
Infringement
Agreement on: No agreement on other terms:
Governing law for disputes
Up front payment
Licensing with R&D collaboration vs.
R&D collaboration with licensing
R&D consultancy payment
Simulated Moving Bed Simulated Moving Bed ReactorReactor
Dead end... Market potential was consider huge;
Technology presented a very interesting concept
BUT
High investment needed to introduce technology;
Large expenses in order to conquer authorities and car industry;
Company’s financial distress and downsizing;
...after 2 years of negotiation
Simulated Moving Bed Simulated Moving Bed ReactorReactor
Presently:
Technology is in the market for licensing
Contract with oil company to test additive in diesel motors
Other oil companies are curious about technology
Lessons: Do not lose momentum in negotiations
Creativity and flexibility in negotiations
Inventors have a decisive opinion but should not head negotiations
Look for other potential companies at the same time
Licensing to spin-offs?Licensing to spin-offs?
Who are they?Track record in academia? Track record in industry?
Will they be able to…?raise funds, recruit, invest in further research, manufacturing, marketing and sales….
How will this work? How to reach a win-win deal? Will they sponsor research? When will we see any return…
CChronology of a license hronology of a license
Tomorrow Options and Tomorrow Options and U.PortoU.Porto
Hired students
Engaged in further R&D contracts
Are located in our science park
Accept to speak at conferences and classes
Received future entrepreneurs for training
And...are paying royalties;)
Since their creation they:
Wrap upWrap up
Good patentable science is not always commercially relevant
Communicating a Value Proposition that reflects tangible results is difficult
Technology offerings are generally early stage
Subject to large amount of risk from several sources (scientific, financial and regulatory)
Often cannot show samples or prototypes
Patience and persistence are needed skills and a little luck certainly won’t hurt.
[email protected]://upin.up.pt/
T: +351 220 408 032 Praça Gomes Teixeira
4099-002 PortoPortugal
::: Thank you