1. Technology licensing pathways include licensing from research institutes, commercial firms, independent innovators, and open innovation platforms. Key factors for licensing include patents, innovation, technology, products, revenue, and value. 2. Battery startups can gain competitive advantages through partnerships with national laboratories to develop new battery technologies and acquire promising patents and innovations through such collaborations and grants. 3. Open innovation provides opportunities to tap unknown sources for problem solving and opportunities, but comprehensive intellectual property strategies are needed to integrate proprietary and shared knowledge from such collaborations.

1. Technology licensing pathways
ADVANCED TECHNO-MANAGEMENT PROGRAMME FOR SCIENTISTS,
ADMINISTRATIVE STAFF C0LLEGE OF INDIA, 07/04/2014
ASRao
http://www.indiainvents.blogspot.in
indiainvents@gmail.com 1

2. Content
• Pathways
• Factors
2

3. Pathways
• Technology licensing from research institute.
(vertical transfer of technology)
• Technology licensing from commercial firms
(horizontal transfer of technology)
• Technology licensing from independent
innovators
• Technology licensing on open innovation
platforms.
• Ideas from crowd sourcing
3

4. Factors
• Patents
• Innovation
• Technology
• Product
• Revenue
• Value
4

5. Patent-product-value
5
MJ is known for many things- also as innovator,
who invented and patented "system for allowing
a shoe wearer to lean forwardly beyond his
center of gravity by virtue of wearing a specially
designed pair of shoes" (US patent5,255,452). A
heel slot in the shoes gets hitched to retractable
pegs in a stage floor. Wearing the shoes, Jackson
(or anyone) could seem to lean past his center
of gravity without toppling. The effect would be
most striking in live performances, during which
harnesses and wires would be too cumbersome
or impossible to disguise.

6. Knowledge Economy
• Private , appropriated knowledge is
traditionally viewed from commercial
perspective.
• Now, there is commercial potential in publicly
accessed knowledge too.
• Wider availability of knowledge pockets
created more pathways for transfer of
knowledge.
6

7. Licensing from Research institutes
• There was a time only few countries invested
in research.
• OECD countries invest heavily as economists
prescribe advances in research the only way
for these countries to maintain technological
lead , which hopefully would convert into
competitive advantage.
• And there is an oversupply of research.
7

8. Lab to market
• XCyton Diagnostics launched Syndrome Evaluation System (SES), a
diagnostic tool which can simultaneously identify the root cause of
the infection, address whether the organism is bacterial, viral or
fungal, in a specific test from a single sample.
• XCyton Diagnostics developed the SES for AES, Sepsis, Antibiotic
Resistance and Eye infections in collaboration with other Institutes
and the effort was supported by a financial loan from Council for
Scientific and Industrial Reasearch (CSIR) under New Millennium
Indian Technological Leadership Initiative (NMITLI). For AES or
Encephalitis XCyton collaborated with National Institute of Mental
Health and Neuro Sciences (NIMHANS), for Sepsis with Centre for
Cellular & Molecular Biology (CCMB), St John's Medical College and
Sankarnetralya and antibiotic resistance was done by XCyton. Eye
infections were done in collaboration with CCMB, Sankarnetralya,
LV Prasad Eye Institute and All-India Institute of Medical Sciences
(AIIMS).
8

9. Battery Startup Envia
• Telsa the market leader and GM are in race for an
EV which can run 200 miles without recharge.
• Kumar from Patna is electro-chemical expert with
PhD in materials science from the Rochester
Institute of Technology.
• A promising cathode was invented by Argonne
National Laboratory outside Chicago. The
cathode combined nickel, manganese and cobalt
into an exceptional composite, called NMC
9

10. Lab technology
• Workhorse batteries based on lithium-cobalt-oxide
chemistry—the type contained in most AA and laptop
batteries—deliver around 150 milliamp-hours of
specific capacity per gram (a measure of how densely
they can store electricity).
• But Argonne researchers had managed at lab scale to
push an exotic formulation of NMC to 250 and even
280 milliamp hours per gram, a 66% jump.
• The composition also provided pep—the lithium could
be shuttled fast. And, made with manganese, NMC is
one of the safest lithium-ion formulations; lithium-
cobalt-oxide is much more prone to catching fire.
10

11. Pooling IP
• An anode made of silicon, a metal that could
absorb a much larger ratio of lithium was
developed by purchasing silicon-carbon anode
material from Shin-Etsu, a Japanese supplier.
• The anode’s true value emerged in the
processing steps Kumar had developed that
allowed the anode to cycle hundreds of times
without shattering.
11

12. Innovation competition
• Kumar applied for the Arpa-E competition in
collaboration with Argonne. Their joint submission said
that if you started with Envia’s High Capacity
Manganese Rich cathode, you would achieve energy
density of about 280 watt-hours per kilogram.
• When you coupled it with a silicon-carbon anode, you
could get a 400-watt-hour-per-kilogram battery,
sufficient to power a car 300 miles on a single charge at
half the cost of current technology.
• They win $4 million grant.
12

13. Prototype results
• It had produced a prototype car battery cell
that demonstrated energy density between
378 and 418 watt-hours per kilogram. Envia
said the achievement had been validated by
Crane, the Indiana-based testing facility of the
US Naval Surface Warfare Center, which cycled
the cell 22 times.
13

14. Commercialization with GM
• In November 2012, contract signed with GM to develop
Arpa-E battery cells for an electric car that could go 200
miles on a single charge in 2016. For the 200-mile car, Envia
was to provide a working battery delivering around 350
watt-hours per kilogram that could endure 1,000 charge-
discharge cycles. Dead line October 2013.
• Envia, would receive $2 million a quarter from GM, adding
up to $8 million a year for at least four years. That money
was sufficient to pay all of the startup’s bills, representing
its entire burn rate. On top of that would be royalties once
the cars began to be manufactured. Depending on car
sales, the contract could be worth hundreds of millions of
dollars.
14

15. Dropping energy density
• According report, dated June 28, 2012, Envia’s
claim was accurate—its cell demonstrated
energy density of 378 to 426 watt-hours per
kilogram and had been put through 406
charge-discharge cycles. But the superlative
energy density registered only in the first
three cycles. After that, its performance
plunged: By the 25th cycle, the density was
down to 290 watt-hours per kilogram. At the
100th, it was at 266. At the 200th, it was
below 250, and by the 300th at 237. 15

16. issues
• Trade secret dispute
• Licensing improved technology
• Know-how protection
• IP bundling
• Winning grants
• Getting VC funds
• Forming team
• Commercialisation
16

17. Wireless Digital Stethoscope from CDAC
• CDAC Mohali has developed a wireless Digital
Stethoscope The device works with a wired
headset as well as with a Bluetooth enables
wireless headset. The heartbeat analysed
through the device can be displayed on a mobile
handset and the data can be stored on a laptop.
• Compared to a commercially available digital
stethoscope, that costs about `60,000/-, CDAC
developed Digital Stethoscope will cost around
`6,000/- (prototype) plus `2,000/- for the
Bluetooth Headset.
17

18. Joint ventures
RBI survey (200708 to 2009-12):
• Out of the 158 companies which had entered into
foreign technical collaboration agreements ,129
were subsidiaries, 19 were associates having
equity participation and 10 had pure technical
collaboration (PTCC).
• Out of 678 companies which has entered into
foreign non-technical collaboration (equity only) ,
543 were subsidies and 92 associates.
• 1818Patents transferred as part of agreement
stood at 5 in 8th survey compared to 3 in seventh
survey.
18

19. Issues in R&D partnership
• Management of pre-existing intellectual property or
knowledge assets more broadly
• Agreement of how to document results of the collaboration
• Ownership of intellectual property created by the
collaboration
• Payment of fees for filing any jointly owned intellectual
property
• Licensing models
• Terms of commercialisation and payments
• Ethical considerations
• Confidentiality and non-disclosure agreements
• Liability
• Dispute Resolution 19

20. Technology licensing-checklist
A. Identification
B. Recitals
1. Licensed subject matter
2. Field of the agreement; areas of
technology
3. General rights to be licensed
4. Definition of terms
5. Representations made by parties
6. Background
7. Consideration; acknowledgements
20

21. Cheklist
II. GRANT OF LICENSE RIGHTS
A.Exclusive (or non-exclusive or sole)
B. License limitations
C. Territorial restrictions
D. Quantity restrictions
E. Field-of-use restrictions
G. Sale price limitations
H. Tying arrangements
I. Antitrust and antimonopoly considerations
21

22. Independent innovators.
Grass root innovators
• Independent innovators also referred as
garage scientists develop innovations without
any institute affiliation. They are supported by
TePP of DSIR and incubators funded by DST,
MSME and several private incubators like
Startup Village, Cochin.
• Grassroot innovators are non-schooled
creative community scouted, documented and
supported by NIF (Prof Anil Gupta)
22

23. Young scientist :
Chandrika Varadchari
• Dr Chandrika Varadachari is an interdisciplinary scientist working in the
interfaces of chemistry with Earth Science, Environmental Science and
Material Science. Her research is fusion of several disciplines of applied
sciences and technology mostly in the geology-mathematics-
thermodynamics and technology-chemistry-agriculture interfaces
and materials modelling and design.
• Dr Varadachari’s PhD thesis was on the development of processes for the
conversion of waste micas into potash fertilizers. She successfully
developed unique processes for utilisation of muscovite wastes for
producing potassium phosphates. Biotite mica (black mica) which has no
commercial utility at present, was converted to potassium sulphate (a high
value fertilizer), ammonium alum and pure silica. The process was
subsequently upgraded to a pilot level
• Dr Varadachari later pioneered the development of a new category of
slow-release fertilizers, now termed bio-release fertilizers. These
compounds, which contain various micronutrient ions, are not only water
insoluble but also completely bio-available (unlike all previous slow-
release fertilizers). The bio-release fertilizers are non-leachable and non-
polluting; yet they contain nutrients in a chemical form that is extractable
by plant roots. 23

24. Chandrika journey
• DST young scientist award
• DSIR support for slow release fertilisers under
PATSER
• TePP support for scaling up.
• FICCI support in technology licensing
• Final product released in market by several
agro firms like Sowbhagya Amino
inputs, Godrej Agrovet.
24

25. Issues
• Long road map from lab scale to commercial
product.
• Need for network support at every stage.
• Different partners at every stage
25

26. Impact investment:
Chaff cutters
• Samalkha Foundry Cluster in Haryana has over
30 enterprises, all casting products like chaff
cutter since 1950 without change.
• A design intervention needed creation of a
network involving Entrepreneur, Fabricator,
Design expert, Mock-up or prototype
developer, Cluster Development Agent (CDA),
Marketing expert
26

27. 27

28. Innovation prizes
• Prizes or Patents?
• Google Lunar X Prize: the safe landing of a private
craft on the surface of the Moon. $30 million in
incentive based prizes. In order to win this
money, a private company must land safely on
the surface of the Moon, travel 500 meters
above, below, or on the Lunar surface, and send
back two “Mooncasts” to Earth.
• 18 teams active including Team Indus from India.
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29. 29

30. IP and Open Innovation
30

31. Examples :IP in Open Innovation
• Calm & Puddle: Acquire IP of use and similarly
give away IP not used. (P&G)
• Turbulent & Ocean: Open IP to third parties to
attract them to their ecosystem (IT
companies).
• Calm & Ocean: Pay and take ownership of all
ideas.
• Turbulent & Puddle: Strategic partnering
(Pharma)
31

32. Idea competitions
32

33. Task specificity
Addresses the openness of the seekers problem.
• Innocentive: seeks for its clients, mfrs from
ptocess industries, solution for very specific
problems.
• P&G YET2.com: asks continuously for any
contribution that could provide interesting
new technologies for one of its many
divisions.
•
33

34. The degree of elaboration
Addresses the quality & kind of user inputs the
manufacturer is seeking for.
• P&G demands the solution is highly
elaborated and proven by a working
prototype.
• BMW asks users for functional novel ideas for
future products like telematics services.
34

35. SEBI Mobile application development
contest
• Objective: to make learning of securities
market and financial education easy and
entertainment based.
• Scope of contest: to develop applications
(games, educational appls etc) for android
based mobile phones. To demonstrate the
application,
• Prize: Rs 3 lakhs.
35

36. NDA in Crowd Sourcing
• With normal employment contracts, employees receive a
salary for their contribution and the firm owns any
intellectual property developed by the employee during
their tenure with the organization. In a crowd-sourcing
constellation, people are participating voluntarily. Unless
the position on Intellectual Property (IP) is clear and
explicitly stated, i.e. a condition of the right to participate is
the acceptance of Intellectual Property transfers to the
client, potential for IP infringement by the contributor
exists.
• Open sourcing has many contributors and many
beneficiaries whereas crowd sourcing has many
contributors an few beneficiaries.
36

37. Summery 1
• Licensing research from institutes is now more
attractive as there is an oversupply from smaller
countries of Europe with no prospect of local licensing.
• China gained leadership position in Battery technology,
investing in battery startups , spin-offs from US
university system.
• Indian industry needs to engage university TTOs on
regular basis.
• Patent is part of research output but innovation,
technology, product, value are all in hands of licensee
firm.
37

38. Summery 2
• Joint venture are ideal as they transfer patent,
innovation, technology, product, value in one
package.
• But MNCs are not keen and not required to enter
into local partnerships.
• Mature technologies can be sourced by engaging
specialist suppliers like design houses, core
component supplier with proper understanding
of value in supply chain.
• China became a world leader in high speed rail
transport.
38

39. Summery 3
• Innovations can be licensed from independent
innovators/ grass root innovators.
• Licensee firm need to have competencies to
upgrade product, add value and market it with
fair share of profit to creative innovator.
• Innovative business plan is needed to take
innovation to market.
• Acquiring promising startup for technology is
another opportunity area.
39

40. Summery 4
• Open innovation is an exciting opportunity to
tap the unknown, unexplored sources for
problem solving, opportunity grabbing.
• Comprehensive IP strategy needs to be
developed by firms to integrate, proprietary
knowledge with shared knowledge of non-
commercial entities.
• Problem definition and post acceptance
development are critical phases.
40

41. Summery 5
• Idea competitions are useful to locate talent.
• Developing crowd sourced idea into product
needs fine-tuning of agreement reinforced
with TRUST.
• External ideas spur / strengthen internal
brainstorming and other internal idea
management tools.
41

42. Questions/ comments?
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