201501 gests423 s1

GESTS423
Intellectual Property Management &
Technology Transfer
Session 1: Introduction
Azèle Mathieu, PhD
February - June 2015
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Why Solvay/Polytech students would attend a course of
technology transfer ?
• Scientist vs business developer
GESTS423 – Technology Transfer – © Azèle Mathieu
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3
?

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All along this course YOU will be the BUSINESS
DEVELOPER …

The main benefit for you is:
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To learn how to turn a new academic
INVENTION into a USEFUL, commercialized
innovation BENEFITING THE SOCIETY

Today’s agenda
• Presentation
• Organisation
• Finding a patent
• Patent’s roles
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Today’s agenda
• Presentation
• Organisation
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Azèle Mathieu
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Business background
• Manager health cluster lifetech.brussels
(www.lifetechbrussels.com )
• Financial Advisor @impulse.brussels
• Business Development Manager@Bone Therapeutics
• Business Development Manager@ULB Technology
Transfer Office
Academic background
• Professor Technology Transfer (7th year) & Business
Planning (3rd year) @ Solvay Brussels School of
Economics and Management (SBS-EM), Master &
MBA
• PhD in Economics and Management

Presentation
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 Who are you?
• Year?
• VUB/ULB/Erasmus?
• Faculty?
• Knowledge of patent/technology transfer?
• Other courses followed in the field?
 What do you expect from this course?

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Intellectual property rights?

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Today’s agenda
• Presentation
• Organisation
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Learning objectives
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 Intellectual Property Rights
(and in particular patent applications)
 Specific case of academic knowledge transfer
 Business potential >< scientific issues
 Business risks >< great inventions
 Economic value
 Strategic aspects of the valorisation process

From research to business
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Objectives of the team assignment
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 To learn the managerial implications of knowledge transfer
mechanisms, through a real project: a ULB invention
 To understand the technology at stake
 To understand what a patent is
 To tackle issues to make an innovation from an invention

Questions you could raise (& answer) in your assignment
(1/2)
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• Understand the patented invention
• What is « protected » and… what is not protected by the patent?
• Who are the other academic/business teams publishing and/or patenting
in the same field?
• What has been the evolution of patent applications regarding one field?
• What is the maturity of the patent?
• What is the stage of development of the patented invention? Does a
prototype already exist?
• In this field when (from which stage of maturity) companies start to be
interested to in-license? Or to partner? What is the privileged way of
partnering?

Questions you could raise (& answer) in your assignment
(2/2)
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• What are the competitive products alternative solutions? Who are the
competitors for what regards claims of your patent?
• Which companies could be considered as potential licensees? Why?
• Would you advise to go for licensing-out option towards an existing
company or for launching a new spin-off company?
• If the patented invention has the potential to be marketed, what are the
milestones (technological, market, financial,…) to be reached?
• What are the challenges to make the technology available to users?
• Does the patented invention fulfill unmet needs?
• If the patented invention has application in health and healthcare, what
about Health Economics, Certification aspects?
• …

Contribute to build the proof of concept/proof of business
by assessing one or more typical risks
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1. Technology risk assessment
2. Team risk assessment
3. Social health/risk assessment
4. Appropriability risk assessment
5. Budget risk assessment
6. Short term market risk assessment
7. Long term market risk assessment

Team risks assessment - The gaps
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Origin of the project Characteristics of the
solution
Gaps
Academic researcher Technology push Customer pain taken into
account?
Entrepreneur?
Business model?
Regulatory requirements?
Health economics?
Physician/doctor Demand pull Entrepreneur?
Business model?
Scalability of the solution?
Serial entrepreneur/Tech
person (outside of health
sector generally)
Depends, generally
answers a real customer
pain but…
Knowledge of the
medical/health sector?
Health economics?

Team assignment
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 2 to 3 persons/team
 5 February: compose teams of 3 persons
 By 8 February: each team chooses its 3 most preferred patents
(1email/team to the Professor: first name, last name of team
members + 3 most preferred patents)
 11 February: the teacher attributes 1 patent/team
 2 teams could work on the same patent
!Do not imitate the other team!
 By the end of February: having met the scientific advisor of
the TTO to better understand your patented invention

Next steps
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05/02/2015:
composition of each team
08/02/2015:
deadline to send
your 3 most
preferred patents
to the teacher
11/02/2015:
you will know on
which patent you
will work
Please indicate your team
number, your first names and
last names, and the patents
numbers!
1 e-mail/team!

The patents you will work on
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# Ref ULB Theme
P1 P.ULB.193 Method for recording gabor hologram
P2 P.VUB.029 Active Corrosion Protection Coatings
P3 ULB-069 Reactivation of HIV-1 gene expression to treat persistent HIV
infection
P4 P.ULB.183 Blood test
P5 PELVIC AND FEMORAL ANATOMICAL LANDMARKS
P6 T262 METHOD FOR DETERMINING SUSPENDED MATTER LOADS
CONCENTRATIONS IN A LIQUID
P7 ULB197 Deformable mirror and method to produce it
P8 U6613 Materials coated with calixarenes
P9
T228
Device for visualization and three-dimensional reconstruction in
endoscopy

Confidentiality
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 Delay between a patent’s application and its publication
 Confidentiality agreement
 Implications:
!Do not transfer your patent to anybody!
!Do not speak about the invention to anybody!
!Do not publish information related to the patent!

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=> Notion of INDUSTRIAL SECRET, another mean to protect IP

Examples of final assignments
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● The simple case…
● … and the complex one

Schedule* (1/2)
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Date Topic
04/02/2015 Introduction
11/02/2015 From research to business (Part I)
18/02/2015 From research to business (Part II)
25/02/2015 The different types of intellectual property rights
04/03/2015 How to best use patent databases?
11/03/2015 Valorisation plan (Part I)
12/03/2015 Valorisation plan (Part II)
18/03/2015 Intermediary presentations
19/03/2015 Intermediary presentations
*: may be adapted

Schedule* (2/2)
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Date Topic
25/03/2015 Valorisation plan (Part III)
01/04/2015 Valorisation plan (Part IV)
02/04/2015 Questions & Answers
22/04/2015 Case study
23/04/2015 Barrier to tech transfer
29/04/2015 What is the value of your patented invention?
30/04/2015 Final presentations

Grading
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● ~45%: team work (form and content):
o Form (5%)
o Content of the written work (20%)
o Final presentation including relevancy of
questions/answers (20%)
● ~5%:
o Attendance & active participation to the class sessions
o Respect of deadlines
● ~50%: final exam

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Today’s agenda
• Presentation
• Organisation
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Find your patent on your own
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● European Patent Office (EPO), esp@cenet
● United States Patent & Trademark Office (USPTO)
● Japan Patent Office (JPTO)
Example:
● Patent title: «Digital holographic microscope»
● Applicant: Université Libre de Bruxelles
● Inventor: Frank Dubois

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Today’s agenda
• Presentation
• Organisation
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A patent: definition
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 Exclusive right
 “Negative” right
 Granted for an invention, product/process offering a new
technical solution to a problem
 Length: 20 years
 Implication: the invention cannot be commercially made,
used, distributed or sold without the patent owner's
consent

Conditions to be fulfilled
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 Practical use
 Industrial application
 Element of novelty
 Inventive step
 Accepted as "patentable" under law

Remark
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 Distinction between
 A pending patent application
 A granted patent application

Timeline for international application
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Source: Dehns

Applying for a patent: only a part of the journey…
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 Applying for a patent is one thing… protecting the patents’
portfolio is another…
Agreement between Facebook et Yahoo! regarding patents
and marketing (06/07/2012 – L’Echo)
Apple wins over Samsung (27/08/2012)

Which roles a patent may fulfil ? (1/2)
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 Competitive advantage
 Attraction of capital
 Negotiating power
● Technological negotiations
● Business negotiations
 Cross-licensing agreements
 Bargain against financial difficulties

Patent portfolio = a valuable intangible asset
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1.100 patents
$500 millions - $2.6 billions
=

The multiple roles of a patent: (2/2)
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 Securing international and national markets
 Defensive and offensive strategies
 Improving the reputation
 Facilitating the coordination amongst partners
 …

References
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 World Intellectual Property Organization (WIPO): www.wipo.int
 Japan Patent Office (JPTO): www.jpo.go.jp
● United States Patent & Trademark Office (USPTO): www.uspto.gov
● European Patent Office (EPO), esp@cenet: http://be.espacenet.com
o Guide for applicants. Part 1 «How to get a European patent ?”
(http://www.epo.org/applying/european/Guide-for-applicants.html)
o Guide for applicants. Part 2 « PCT procedure before the EPO ("Euro-
PCT")” (http://www.epo.org/applying/international/guide-for-
applicants.html )
● Patent reform: http://ec.europa.eu/growth/industry/intellectual-
property/industrial-property/patent/index_en.htm

201501 gests423 s1

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201501 gests423 s1