Moving your Research to Market

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1 Moving your Research to Market Seize the opportunity Sacha Patera, PhD Associate Director of Corporate Relations Northwestern University, Evanston & Chicago IL 2011 NSF ADVANCE Meeting 10 Years of Broadening Participation and Inclusion November 15, 2011

2 Connecting with industry If you would like the results of your research endeavor to benefit society you will have to protect the ideas so that they can be marketed you will have to connect with industry/business world to translate your results from bench to shelf/bedside

3 Entrepreneurship among women faculty disproportionately low Invention disclosures. e.g. Northwestern: 20 inventions since 7/1/11, 49 male scientists (25 faculty), 7 female scientists (1 faculty). Scientific Advisory Boards. Men are 2x more likely to serve on SAB than women. At prestigious universities men are 2.5x more likely to be on SAB than women. Ding, Murray and Stuart (2006) Commercial Science: A New Arena for Gender Stratification in Scientific Careers? Startups. <12% of academic startups are started by women faculty

4 University Industry relations today Companies are looking to universities for the R of R&D. Agreements are more sensitive to the university mission and constraints than before. PI Autonomy Fundamental Research For Public Benefit Works for Hire Restrictions on Publishing Classified Work Confidentiality & Limits on Confidentiality Intellectual Property Licensure Licensing of Federally Funded Research Research Reports Insurance Overhead Costs Project Termination Signatures of documents **FACULTY NEVER SIGN AGREEMENTS - Documents can only be signed by OSR, OGC, OARD depending on the nature of the agreement. OGC oversees signatures of people with authority. **

5 Your university has dedicated industry liaisons staff Just about every university has at least one person dedicated to corporate relations outreach. This person may help you. managing industry interactions/visits following up with next steps moving the relationship forward university technology scout matching faculty interests & company interests liaison for recruitment of trainees (UG, PhDs, Postdocs) academic corporate relationship manager navigate internal stakeholders and contractual offices a matchmaker on STEM research/technologies/talent

6 Where are do you find them? Corporate relations program Development/advancement office broad definition of development Sometimes bundled with Foundation Relations program Research office research development School-specific office Technology transfer office external relations Research administration external relations

7 Disclosure is one of the first steps to translation Before you talk about it, before you publish it, disclose your invention to the university s technology transfer office (TTO). University will assess and decide whether to apply for patent If university does not, the invention is released back to faculty may do so on their own ~$15K

8 To startup or not to startup? Consult with licensing officer Learn about the level of commitment that it takes Understand what you are capable of committing to Understand what you are willing to commit to Is the market ready for your idea? Market assessment/business plan What resources can you tap to help you map the market landscape? Institutional NFP org resources Gvt resources

9 Why start a company? The mission of for-profit startups is to bring profits to the shareholders To make profits by selling products or services Dichotomy between academic and corporate cultures technology-driven academic entrepreneurs and cutting-edge technologies which drive the market vs. market-driven investors focused on how technologies respond to existing market needs

10 Starting a company is a lifechanging event it brings together a breadth of experiences and extreme emotions, ups and downs: from the allure of anticipated wealth societal impact the frustrations of continuous set-backs working with a tight budget The best entrepreneurs are motivated by the challenges and thrive from the ups and downs. Instead of feeling defeated by a failed attempt, they are eager to get back in the game and start again.

11 Contemplating forming a company? disclose the invention If the university decides to protect the invention, it will file a patent application and cover the legal costs associated with the application. Once the patent is issued, the startup will need to license the technology from the university to gain the rights to develop and commercialize it. This process is broadly described as technology transfer. disclose potential conflicts of commitment and conflicts of effort -COI management plans are above all concerned with protecting vulnerable parties, such as graduate students and human subjects participating in the research, who are under the charge of the academic entrepreneur -It is not about whether you think there is a conflict or not, but whether someone else might perceive one. When in doubt, disclose. know the institution s licensing agreements

12 Basic questions on Startups Why start a company? Incorporating the company Choosing the startup legal entity Requirements for a startup Work with your institution How do I know it is time to start a company? Steps towards a startup Building the startup Defining the market/elevator pitch Identifying the right CEO Fundraising The role(s)of the founders in the startup company How does one select the co-founders of a startup? Networking and finding the right mentors Disclosing information Can I do research in my academic laboratory for my startup? Do I need an option or license for the startup? What to expect with the startup license Leading sources of frustration for the academic entrepreneur

13 What does it take? Motivation Reasoning Expectations Persistence Market demand Niche opportunity, underserved market Maximal impact Seasoned veteran No existing company has wanted to license my technology and I am committed to getting it to the marketplace, so it s time to start my own company. I have been approached by people asking, How can I get one of those things? This would be an opportunity to have a small operation that sells products in a niche market. Selling commercial products, as opposed to just publishing in a journal, increases the chance that my ideas will have a major effect. I didn t get it right with my first two companies, but this time I have a better handle on the market realities. We ll do what it takes to form a company to get this technology out there. There appears to be a market for my product. There s enough of a market there for me to have a nice supplement to my academic salary. We ll be able to hit a much wider audience through the commercial sector. Given our experience, we should be able to raise adequate investment funds and uses them to better advantage. * Select section reproduced from University of Georgia s Startups for Smarties

14 Requirements for a startup A good idea does not necessarily result in a good product A good product does not necessarily result in a company Essential criteria of a successful business: Innovative Products, Innovative Services Intellectual Property Product Pipeline Market need Specialized personnel Specialized facilities Capital

15 Steps to a startup Generalized chronology: Talk to university TTO Protect Intellectual Property Network/Find a Mentor Plan the Business Disclose to university TTO Assemble a management team/identify the right CEO Incorporate Negotiate the License or Option Agreement With university TTO Fundraise

16 Elevator pitch Create elevator pitch a one minute raison d'etre for your company have a well-defined market Do not to exaggerate the size of the market or gloss over the critical details Products should address unmet needs, as to create a compelling argument for a potential new product.

17 Fundraising Sweat Equity, family, friends Non-For Profit Grants SBIRs & STTRs play to the grant-writing strengths of academic researchers; outright grants, not equity investments Angel Funding - Angel investors usually come in at an earlier stage than venture capital financing. Industry Partners Venture Capital. VCs provide significant values to a startup company that is much more than just money. Many VCs were former executives who launched and managed successful companies and they can provide valuable advice and guidance

18 Find mentors! learn about organizing, funding, and launching a new company from the experience of others. The best way to access the know-how and wisdom of others is through networking. Find a mentor (or a group of mentors) that will be able to offer qualified advice and help open the doors. Find the right people. CEO and CSO (Chief Science Officer) candidates, consultants, corporate attorneys, insurance carriers, and potential investors. Tips on writing a business plan or applying for SBIR and STTR funding may also be gleaned from these interactions Find mentoring programs through technology organizations

19 Can I do research in my academic laboratory for my startup? Essentially - NO Once incorporated, all research related to the startup needs to be conducted within the startup. There are strict regulations why startup companies are not allowed to conduct company s work within the walls of the academic institution. Mitigate potential conflicts. In all agreements pay special attention to: graduate student human subject involvement to public disclosure in publications to corporate ties to the institution and the researcher.

20 Leading sources of frustration for the academic entrepreneur 1. Raising Capital. Academic entrepreneurs must make sure that the company is pursuing markets, not technology. 2. Frustrations with the University - IP assignment: You thought that you owned the IP on which your company is to be based. Make full disclosures of your plans to the institution s TTO before going too far in starting the company especially before dealing with potential investors. 3. Frustrations with the University - COI: Conflicts-of-interest review and approval entail more than checking a few boxes on a form. Full disclosure, often in face-to-face meetings, is necessary. 4. Relationships with business partners dissolve. It is essential that you understand the motivations, visions, and goals of your co-founders, both on the science and the business sides, before you enter into partnership with them. 5. You have to replace the CEO ---again and again. 6. Your and the CEO s visions for the company are at odds. If the business is to be successful, you must be willing to listen, communicate effectively, and trust the expertise and business acumen of your partners. 7. Relationships with investors sour. Be as realistic as possible about R&D timelines when courting investors. 8. Verbal promises have not been kept. Get matters in writing, especially when related to money or stock. 9. Starting and growing the company are consuming too much time. Do not underestimate how much time it will take to form a new company. 10. You fear losing control of the company.

21 There is room for more entrepreneurship from women Disclose your ideas to the university so your ideas can be available for commercialization Startup because you are entrepreneurial and passionate about translation of your work Become a serial entrepreneur failed attempts are better than no attempts! Participate in entrepreneurial/innovation activities on campus Serve on Corporate Scientific Advisory Boards

22 Resources In Illinois and

23 Thank you Northwestern University Innovation and New Venture Office (INVO), Jeff Coney, Director of Economic Development and Dr. Sonia Kim, Manager for Marketing and Industry Partnerships. Network of Academic Corporate Relations Officers (NACRO) national organization. AWIS and NSF ADVANCE Questions? Contact me: Sacha (Alexandra) Patera, PhD Associate Director of Corporate Relations Northwestern University NACRO Benchmarking Committee Co-Chair

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