Lecture 3 - Technology Transfer

Question 1

What is a University Technology Transfer?

Answer 1

Takes IP from University Research and turn it into a product or service for benefit of society

Question 2

What is the Tech Transfer Process?

Answer 2

1. Invention Disclosure
2. Assess
3. Protect
4. Commercialise

Question 3

What is included in the Invention Disclosure Form (IDF)?

Answer 3

1. Problem
2. Solution
3. Funding and collaborators

Question 4

What is Intellectual Property?

Answer 4

Creations of the mind such as inventions, literary and artistic works; and symbols, names and images used in commerce

Question 5

What are Intellectual Property (IP) Rights?

Answer 5

Temporary monopoly rights given by a government allowing the right to exploit the IP. Includes: Patents, Copyright, Trademarks, Design rights

Question 6

What are examples of Non-registered IP?

Answer 6

1. Confidential Information (eg. Know how, trade secrets)
2. Copyright (eg. literary, dramatic, musical and artistic works)
3. Trade marks

Question 7

What are examples of Registered IP?

Answer 7

1. Patents (eg. processes and methods, machine, articles of manufacture, composition of matter)
2. Registered Designs
3. Domain names
4. Plant Breeders Rights
5. Business Names
6. Trade Marks

Question 8

What are the key factors and considerations to determine whether an invention should be commercialised?

Answer 8

1. Ownership
2. Technical Analysis
3. IP Analysis
4. Market Analysis

Question 9

What defines ownership?

Answer 9

1. Who created the invention
2. Where do they work
3. Who owns it

Question 10

What defines technical Analysis?

Answer 10

1. what is the problem being investigated
2. what is the technology and how does it solve the problem
3. stage of development
4. resources to further develop and/ or commercialise this technology

Question 11

What does IP Analysis do?

Answer 11

To find out if there is any IP underpinning the disclosed technology which can be commercialised

Question 12

What is the purpose of Market Analysis?

Answer 12

1. Find out the market need (is industry interested in the problem and is there a clearly identifiable industry partner)
2. Have a competitive advantage (how is it better than products on market or in development)
3. Find out market size/ value (expected share of market segment)
4. Commercialisation route (License or spin-out company)

Question 13

What are characteristics Commercialising through IP License?

Answer 13

1. IP remains owned by University
2. Licensee responsible for developing and selling a product
3. University receives payments in consideration for grant of the license
4. Low risk and hands-off: cost and risk of development passed on to Licensee
5. Lower potential overall return to Licensor

Question 14

What is a spin-out?

Answer 14

A new company formed by a University to develop early stage (high risk) technologies with greater value potential

Question 15

What are the characteristics of a spin-out?

Answer 15

1. IP is licensed into the company
2. University will have equity stake
3. Business plans, experienced management and investment are required - set up can be resource intensive
4. End objective is to ‘exit’ the company - University receives money by selling its shares

Question 16

What are the Pros of a Spin-out and IP License?

Answer 16

Spin-out:

1. Equity stake - greater average return in the long run compared to licensing
2. More control over product development

License:

1. Quicker and less complex
2. Potential for value return throughout product development and commercialisation pathway

Question 17

What are the Cons of a Spin-out and IP License?

Answer 17

Spin-out:

1. Value return delayed
2. Higher resource burden on inventors, tech transfer team and University

IP License:

1. Lower Value return
2. Less control over development of product

Question 18

What is a Staff Start-up?

Answer 18

A new company formed by Staff or Students to develop University IP

Question 19

What are the characteristics of a Start-up?

Answer 19

1. IP is licensed into the company on the basis of a development and commercialisation plan agreed with the university
2. University will often take an equity stake (or equivalent)
3. Business plans, experienced management and investment are required - set-up can be resource intensive
4. End objective is to ‘exit’ the company - Staff receives money by selling their shares, university receives money from shares, license fees and royalties