IP MANAGEMENT OF STARTUPS FROM A UNIVERSITY

Transcription

1 IP MANAGEMENT OF STARTUPS FROM A UNIVERSITY INNOVATION AND RELATIONS MANAGEMENT (IRM) INNOVATIONS- UND RELATIONSMANAGEMENT (IRM) KIT The Research University in the Helmholtz Association

2 KIT at a glance Total Budget Amount of third-party Funds 851 Mio. EUR 336 Mio. EUR Employees Scientist Thereof PhD students > Chairs 365 Students Divisions 5 Institutes 129 KIT departments 11 Helmholtz programs 13 KIT centers 7 As of: July I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

3 KIT Research Profiles Five Discipline-focused Divisions Division I Biology, Chemistry, and Process Engineering Division II Informatics, Economics, and Society Division III Mechanical and Electrical Engineering Division IV Natural and Built Environment Division V Physics and Mathematics Seven Interdisciplinary KIT Centers Energy Mobility Systems Materials Structures Functions Humans and Technology Climate and Environment Elementary Particle and Astroparticle Physics Information Systems Technologies 3 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

4 Value-oriented Thinking and Acting Intellectual Property IP = Rights to intangible assets, i.e. the results of working including official inventions, brands, design, and computer programs as well as the know-how linked with it. 1. KNOWLEDGE DEVELOPMENT 2. DECISION 3. TRANSFER OPTIONS INTELLECTUAL PROPERTY = Intangible Assets active passive SPIN-OFF WHICH ONE IS THE RIGHT WAY? LICENSING CONTRACT RESEARCH (Role Contractor) IRM WHAT BELONGS TO WHOM? RESEARCH COOPERATION (Role Research Partner) GOVERNMENT SPONSORED RESEARCH INVENTION WHAT IS IT WORTH? PUBLICATIONS GRADUATES INTO ECONOMY SCIENCE KEY FIGURES 4 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

5 Innovation and Relations Management (IRM) KIT provides diverse services and forms of cooperation with companies, investors and private sponsors Our mission at this interface: Provision of professional services to enable the transfer of qualified graduates and innovative technologies as well as to build up trusting long term partnerships to create collective projects with a benefit for all participants. Five thematic fields of our daily actions: 5 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

6 Technology Transfer From idea to product KIT develops technologies to economically successful innovations in cooperation with industrial companies. Sighting of the research activities of the KIT with regard to suitable technologies for companies Placement of direct contacts and matching with scientists of the KIT Theme-oriented transfer events at the KIT as well as fairs Individual initiation of collaborations and project assistance Shared financing and implementation of innovation projects Access to the property rights portfolio of the KIT with about 2,000 patents and patent applications worldwide Awarding of usage rights to protected research results of the KIT 6 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

7 Technology Transfer Creating products together Experience technologies Licenses 7 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

8 Technology Transfer Interdisciplinary team Capped budgets Entrepreneurial acting Financing the Valley of Death classic TT NEW VENTURES 8 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

9 UNIVERSITY S INNOVATION ECOSYSTEM Universities are being called upon like never before to promote innovation, entrepreneurship and the commercialization of research Demonstrate the results of their efforts in terms of economic impact. Jobs and regional economic growth have become some of the new metrics for tech transfer organizations. Determination of Royalty Rates for Technology Licensing Eliminate barriers, expedite the licensing process for start-ups. Negotiating each deal on a case-by-case basis or use one-size-fits-all templates Customer service to inventors Patent-related communication and inventor relations 9 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

10 VALUE PATENT-COSTS ENFORCEABILITY IP-MANAGEMENT PATENT PATENT- APPLICATION INVENTION [INVENTION-DISCLOSURE] IDEA 10 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

11 BUSINESS CASE GATE 1 GATE 2 GATE 3 L V A S POTENTIAL EVALUATION Invention-Disclosure Technology Business Case Fusion Technology and Business and/or Revenue Model IMPLEMENTATION Commercialization Inventorship Legal examination Contract situation Technology readiness level (TRL) 1-9 IP-Protection-Prozess University IP-Policy Institutes-Policy Business-Model Revenue-Model Financing Financing Contracting IP Management Participation (Investment, Shares..) Controlling 11 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

12 DETERMINING INVENTORSHIP FOR UNIVERSITY IP The legal standard for inventorship is complex and can be particularly difficult in the context of university research Act on Employee s Inventions - 42 Special provisions for Inventions at Universities Students and scholarship students Even more complexity arises when researchers and labs from more than one institution (e.g. University A + FHG) are involved when a scientist with a corporate partner has contributed to the innovation Additionally, incorrectly determining inventorship can lead to patenting and commercialization delays and huge, costly legal headaches Patent budgets, research priorities, strength of the IP, interest among potential licensees, and faculty egos and relationships with the TTO weigh heavily on the decision-making process 12 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

13 TECHNOLOGY READINESS LEVEL (TRL) 13 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

14 BUSINESS CASE GATE 1 GATE 2 GATE 3 L V A S POTENTIAL EVALUATION Invention-Disclosure Technology Business Case Fusion Technology and Business and/or Revenue Model IMPLEMENTATION Commercialization Inventorship Legal examination Contract situation Technology readiness level (TRL) 1-9 IP-Protection-Prozess University IP-Policy Institutes-Policy Business-Model Revenue-Model Financing Financing Contracting IP Management Participation (Investment, Shares..) Controlling 14 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

15 CONFLICTS OF INTEREST IN THE COMMERCIALIZATION OF UNIVERSITY RESEARCH Managing conflicts of interest (COIs) between funding sources, institute/ faculty researchers, and the start-ups they create is always a tough challenge for Tech-Transfer Sponsored research and compliance requires much coordination and careful handling Transferring IP either through a license agreement, spinout, or partnership, managing and mitigating those COIs is a seemingly never ending battle Blurred Lines and Gray Areas: Managing Conflicts of Interest in University Tech-Transfer and Sponsored Research Ensuring Compliance with Financial Conflict of Interest The TTO s ability to stay within its patent budget Understand licensing terms that impact funding The university s equity position 15 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

16 CONFLICTS OF INTEREST IN THE COMMERCIALIZATION OF UNIVERSITY RESEARCH A few scenarios that KIT TTOs (IRM) dealing with: A KIT inventor is double dipping, seeking equity as a founder and also sharing in the university s equity stake. Who s side is he on? A KIT researcher has created a start-up with the TTO s assistance, but it s barely off the ground. The researcher then applied for and won an grant but appears to be using it to fund his university-based research, not the company s. What should KIT do? A KIT inventor is spending much more time on his start-up than appropriate, and is also being funded largely by federal grants. How much time is too much? A KIT researcher and founder are engaged in what you feel are consulting arrangements, but they are all officially classified as sponsored research. Is this an COI? How can you correct this seemingly widely accepted practice? A researcher who just formed a start-up has no office space outside the lab, is using post-docs to help get the project moving, and is getting correspondence related to the start-up via the university mail and systems. What s the right move? Conflicts like these and hundreds of other variations are so numerous that TTOs can begin to feel like regulators rather than facilitators of new ventures 16 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

17 New Ventures and Shareholdings From inventor to entrepreneur KIT supports student and scientific new ventures and participates in selected spin-offs. Contact and intermediary for business and start-up ideas at KIT Professional support and promotion activities for start-ups at KIT Seminars, workshops and coaching programs with internal and external partners Support for initial and follow-up funding Public grants and funds for business ideas and start-ups Contact to leading business angels, venture capitalists and lenders Management of incubators and co-working space at KIT Arrangement of networking events and individual meetings with industry partners and investors 17 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

18 New Ventures and Shareholdings Support: Start-up consulting and coachings Events: Networking with like-minded people Incubators: Space for development Connections: Promote effective discussions with partners 18 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

19 Start-Up / Spin-Off e.g. Celitement ( Karlsruher cement ) Internal Public funded research and development Cooperation Bridging the gap: competence and finance External Seed - new customers -new markets -new products HEF Quiet R&D, preparing and IPR KIT-Fund 1. contact to industrial partner Founding the Celitement GmbH Plant Pilot facility Market entrance expected Technology screening Identification, assessment, and development of the business idea Spin off preparation Market analysis, structuring, financing, team building, business plan Start management marketing control, sales, finance, organisation, personal Equity management shareholder rights, seed finance, company transactions 19 I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

20 Start-Up / Spin-Off Franka Technology = Selective fragmentation with high voltage pulses Research Development of technology and equipment Economy Effect of fast and powerful current pulses on matter licensee selfrag 2015: 35 Employees and annual turnover of 1 Mio Fundamental research in the field of electrodynamic fragmentation Franka-stone (1999) Sugar beet before/after Further development for different fields of applications 12 Patent families (89 intern. IPR) selfrag Lab Spin-off/licensee Patent applications by FZK beginning 2000 KEA apple Application Franka-0 KEA potatoe Spin-off/licensee Co-operation partner Desinfection of wastewater by electroporation I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

21 Start-Up / Spin-Off Nanoscribe GmbH Research/ Teaching Innovation Economy Discovery by a team at the Institute of Nanotechnology - Prof. Wegener and U of T Generation of 3D structures on the nanoscale Technology marketing, e.g. at the Hannover Fair Business development within the framework of Helmholtz funding and transfer projects Startup support nanoscribe" Cooperation and shareholder Zeiss Patent application managed by KIT Accompanying search for partners and customers, among others at HanoverFair First invention disclosure: Process for producing photonic crystals 8 patent families (18 international property rights) Structurization, first business plan within the framework of HEF proposal Business development, funding, and contracting foundation Otto-Haxel-Award 2002 till 2006 april 2007 beginning juli I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM

22 Thank you for your attention I3PM Meets Academia 2018 // Dr. Ludwig Witter KIT / IRM-IPM