Krakow slides 2013

© Copyright 2013. ClearViewIP Ltd. All Rights Reserved.
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IP COMMERCIALISATION
Commercialising Publically Funded R&D

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Contents
• Introduction
– About ClearViewIP
– Speaker Insight
• In the UK
– The UK Scene: R&D Funding
– UK Research Council Interventions for the Commercialisation of Research 2013
– UK University Spin-Outs & Acquisitions Since 2003
– RCUK Examples Of Successful Commercialisation 2013
• Public Research Institutes
– Patents Filed by Public Research Institutions Internationally
– Why work with a Public Research Institute?
– Key Requirements
– Necessities Check List
– Subject Areas
– Rewards for Inventors
• Pitfalls
– Common Pitfalls
– Staffing Pitfalls
• Conclusion

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About ClearViewIP
“ClearViewIP is an Intellectual Property Consultancy providing a range of services
to help companies monitor, expand and better understand their IP portfolio and
its position within the industry”
Founded 2007
Extensive commercial and IP experience
Full range of IP services
Expertise across high-tech markets
Network throughout Europe, North America
and the Far East

4
Speaker Insight
• Worked with Universities, Health Authorities &
Government R&D Organisations
• Acted as an IP consultant and Agent for the
above institutions
• Initiated IP Capture & Commercialisation at
varied UK R&D centres

5
The UK Scene: R&D Funding
• 1995-2011: Government reduced amount spent on R&D
through public research institutions but increased funding
provided to UK businesses
• 2007-2011: Government funding of R&D undertaken by UK
businesses increased 37% to £1.6B p/a
– Non-government funding fell 1%
– UK business expenditure on R&D increased 1%
• 2007-2013: UK will receive c. £4B from the 7th Framework
Programme.
– UK received £1.58B from 6th Framework Programme

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UK Research Council Interventions for the Commercialisation Of
Research 2013
– BBSRC National Research and Innovation Campuses
– The Science and Innovation Campuses
– STFC Research Facilities
– STFC Innovations Ltd
– Innovation Technology Access Centres (ITAC)
– The Rainbow Seed Fund (RSF)
– Biomedical Catalyst Fund
– MRC Translational Funding
– MRC Technology
– Follow-on Funding
– Collaborative Training Schemes
– Support for Enterprise
– People and Information Exchange
– Collaborative Research: The Research Councils Fund
– Knowledge Transfer Accounts (KTA)
– Knowledge Transfer Secondments (KTS)
– Innovation and Knowledge Centres (IKC)
– Centres for Innovative Manufacturing

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UK University Spin-Outs & Acquisitions Since 2003

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UK Examples Of Successful Commercialisation 2013
– CONFORMETRIX: determining dynamic 3D shapes of drug molecules
• Spin-out company to commercialise technology
• Seed funding from Aquarius Equity Partners
– BENEFORTE BROCCOLI: super brocoli
• Collaboration between BBSRC & specialist tech transfer company
– EIGHT19: solar cell technology
• Spin-out from Cambridge Integrated Knowledge Centre
• IKC and Carbon Trust funded
– BAS: innovative tracking technology
• Technology licensed out to UK SME by TSB KTN
– COBALT LIGHT SYSTEMS: equipment for non-invasive analysis of materials
– ACTIVIOMICS: phosphoproteomics services
• MRC funded – has agreements with UCB and GSK
– NOVACEM: developing carbon-negative cement
• Spin-out from Imperial
• ESPRC funded
– ENERGY EFFICIENT LIGHTING: developing gas for use in LEDs
• Long-term ESPRC sponsorship

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Patents Filed by Public Research Institutions Internationally
2000-2002 and 2007-2009 filing trends per country as a percentage of patent applications
filed under the PCT

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Should IP from Public Research Institutes be patented & commercialised?
• Frequently asked question
• If public have paid make it available to “all”?
• Is “all” the world or local Polish companies?
• My view need to patent so know who owns
what and have vehicle for taking to industry.
– Industry needs certainty of IP position

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What do R&D institutions have to offer?
• Focused leading edge expertise
• Well formed teams with long term vision
• Long term benefit to society through taking
their innovations to market

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Prioritising Institutes:
– Any obvious
establishments with
industry keen to partner?
– Existing culture:
• Pure academia vs.
Entrepreneurial
• Who are the influencers?
• Contracts status?
• Who owns the IP?
In UK: funding made available &
institutions choose from bids
Key Requirements
Funding Needed To:
– Support commercial
team
• Size, skill, specialism, netw
ork
– Development & Proof of
Concept
– Patent & attorney costs
– Education & Promotion
program
– Rewards to Inventors

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Necessities Check List
 Ownership is crucial
MUST HAVE:
 Employment contracts for all inventors/researchers
 Collaboration contracts with key partners/sub-contractors
 Criteria to justify patent filing
 Inventive step
 Market opportunity
 Skills and team to support further development

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Opportunity Evaluation
– Need to develop evaluation method
• Important to share method
• Need to educate role of IP in commercialisation
• Initial focus should be on patenting
– Easiest to exploit globally
– Criteria to justify patent filing
• Inventive step
• Market opportunity
• Skills and team to support further development

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Decide Subject Areas for focus
Determine skill sets of team doing commercialisation and prioritise subjects:
 Chemistry
 Pharmaceuticals
 Bio-Tech
 Telecommunications
 IT
 Electronics
 General Engineering
 Music, Art

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Reward for Inventors
• Capturing IP is a big ask
• Increases researcher’s work load
• Need organisation onside
• Make it worth their while
– Payment on filing $200?
– Payment on Grant $400?
– Share of license income? Cap?
– Personal vs department/team payment?

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Common Pitfalls
Action
Set low initial threshold to encourage
submission
Consequence
Hostage to fortune when patent examination
and attorney time use budget rapidly
Action Inadequate resources
Consequence
 Slow to evaluate submitted inventions
 Slow to file patents
 Competition to publish for academic
status

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Common Pitfalls
Situation
Fail to develop coherent business plan for
technology
Outcomes
Lack of structure and planning can lead to failure often
results in reactive decisions such as abandoning patents if
timescale is unrealistic
Situation
Lack availability of funding to prove concept or
refine to meet industry requirements
Outcomes The Chasm/Gap/Valley of Death
Situation Leakage of IP
Outcomes
Culture of partners adopting IP proves difficult to
challenge/stop

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Staffing Pitfalls
Problem Staff upset in establishment
Causes
 Supervisors seeking to be named
as inventors
 Prestigious researchers seeking
to override evaluation
parameters
 Unrealistic expectations of time
to market and REWARDS!

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Conclusion
• Publically funded R&D presents a vast
opportunity for commercialisation
• Capture of IP and securing ownership is
vital
• Not a quick route to revenue but over time
can create significant social and
commercial benefits

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ClearViewIP Ltd
ClearViewIP Ltd
St George’s Chambers, St George’s Street
Winchester, Hampshire
UK, SO23 8AJ
Tel: +44 (0) 845 680 1953
Email: info@clearviewip.com
www.clearviewip.com
© Copyright ClearViewIP 2013
COLIN HUNSLEY- DIRECTOR OF
COMMERCIALISATION
colin_hunsley@clearviewip.com

Krakow slides 2013

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