Innovationsram

Innovation /Tech transfer/patent-the knowhow
RAM INNOVATION LABS 4
Presented by
Mr. V.P.Sampath, M.E, M.I.E.E.E, M.I.E
EDA Tech forum Member,
IIT-M Research park Member.

Accredited to blessings Kallivallal Kalasalingam
without him am nothing:
• Thanks to the teachers who taught I pay attention to
Dr.Xavier Joseph,Former Senate ,MS University.
The blessings from the revered teachers,
• Dr C Thangaraj,Former Principal,Kalasalingam college,VC-
AUT,Chennai.
• Dr.E .Janardhanan,Prof -Eminence,ISRO scientist(Rtd)
SSN Institutions,Chennai and Prof .Dheenadayalu,IIT-M
• Special thanks to my friend Mr.Saravanan,Computer Science
Corporation and thanks to Dr.Srikanth,AU-KBC,Dr
Giridar,Prof-Te net, IIT-M.
• Thanks to my Boss Dr Ramkrishnan.

Waves of innovation
• Any good music must be an innovation.
• “I am not afraid…I was born to do this.” - Joan of Arc
Innovations –brainchild of infinite thinkers.
Everyone has talent. What is rare is the courage to follow the
talent to the dark place where it leads. - Erica Jong

Adviser to the Prime Minister on Public Information
Infrastructure & Innovations

My student@ New york institute of technology,US who s an
innovator.

I spends time with The almighty before taking
core decisions.Voice not my concerns but
voice others ones.Dont search for my wealth
,but search wealth to uplift others.
-V.P.Sampath

Create,Innovate
• Creativity
The ability to make or otherwise bring into existence
something new, whether a new solution to a problem, a new
method or device, or a new artistic object or form.
• Innovation
1 : The introduction of something new
2 : A new idea, method, or device
• Creativity = Idea + Action
• Innovation = Creativity + Productivity
• Innovation = Idea + Action + Productivity

Play by children

Posture

Entrepreneur’s Mantra
IF YOU DON’T TAKE THE
CHANCE,YOU HAVE
ALREADY LOST IT.

Inspirations
• Jesus Christ.
• Alexander the great.
• Abraham Lincoln.
• Dr.Sam pitroda.

My catalyst

Better overall understanding of technology
commercialization concepts and principles,better
understanding of intellectual property, its
protection, and its commercialization,better
understanding of commercialization options.
Assess the relevance and implication of these
concepts and principles, and the current trends in
the field for their institutions and others like
them.

AIM
• Better transfer and industrial linkage can open up interesting
new lines of inquiry.
• Better transfer and industrial linkage can expand opportunities
for education.
• Better transfer and industrial linkage can lead to new sources
of research support.
• Possibility of financial remuneration.
• Better transfer and industrial linkage can build national and
regional competitiveness and create jobs for graduates.

California institute of technology
• Founded in 1891
• ~2,000 students
(900 undergraduate + 1100 graduate)
• 280 professors and 130 research faculty
• 5,300 engineers/scientist at JPL
• 32 Nobel Prize Recipients among
faculty and alumni
• 72 members of the NAS
• 35 members of the NAE
• $240M in Research Funding

Jet propulsion lab
 Founded in the 1930’s when Caltech Professor Theodore von
Karman conducted pioneering work on rocket propulsion.
 Chartered to Conduct Unmanned Robotic Exploration of the Solar
System
 Federally Funded R&D NASA Facility operated by the Caltech
 Annual Budget - Over $1 Billion
 5200 Employees
 1/3 PhDs, 1/3 MS, 1/3 BS & Other

Smart Lander Sample Return
Bulldozer
Mars Express
Smart Rover
Reconnaissance Orbiter
MarsMarsM

Invention and Innovation
– An invention is an idea or concept for a new
product or process.
– An innovation is the successful entry to the
market of a novel product, process, or business
model.
– Creating an innovation from an invention is a
high risk venture.

Pre-IPO
Expansion
Start-Up
Seed
Idea / Concept
Time
$
• Bright Idea
• Experimental
• Research
• Business Plan
• Proof of Concept
• Legal Entity
• Founders = Mgt Team
• Minimal Revenue
• Slow Growth
• Support Functions
• Administration
• Marketing
• Revenue Growth
• High Growth
• Head Count
• Multiple Cycles
• Viable
• Market acceptance
• Heading to IPO or M&A
The Process/Steps of Innovation
Understanding the Process of Innovation

Translation of Creative Idea into Useful Application
Analytical
Planning
Organizing
Resources
Implementation
Commercial
Application
To Identify:
Product Design
Market Strategy
Financial Need
To Obtain:
Materials
Technology
Human Resources
Capital
To Accomplish:
Organization
Product Design
Manufacturing
Services
To Provide:
Value to Customers
Rewards to Employee
Revenue to Investors
Satisfaction of Founders
The Innovation Process

Innovation Process
• The adoption of an innovation by
similar firms
• Usually leads to product or
process standardization
• Products based on imitation often
are offered at lower prices but
with fewer features
Invention
Innovation
Imitation

The Development of Technology: From Knowledge
Generation to Diffusion
Basic
Knowledge
Invention Innovation Diffusion
IMITATION
ADOPTION
Supply side
Demand side

IIT-M Research Park

What prompted you to be an Innovator?
• Innovation comes from the Latin innovationem, noun of
action from innovare. The Etymology Dictionary further
explains innovare as dating back to 1540 and stemming
from the Latin innovatus, pp. of innovare "to renew or
change," from in- "into" + novus "new“.
• Innovation is a basic foundation of new thinking in
various sectors.
• It is a new creation,application of mind to design a
prototype.Innovation is the key to business excellence.It
nurtures mind,provokes thinking in different angles on a
whole index.

What prompted you to be an Innovator?
• Pertained to the customer segment.
• The customer may vary from social needs to corporate needs.
Colloquially, the word "innovation" is often synonymous with
the output of the process. However, economists tend to focus
on the process itself, from the origination of an idea to its
transformation into something useful, to its implementation;
and on the system within which the process of innovation
unfolds.
• Since innovation is also considered a major driver of the
economy, especially when it leads to new product categories
or increasing productivity, the factors that lead to innovation
are also considered to be critical to policy makers. In
particular, followers of innovation economics stress using
public policy to spur innovation and growth

How will your Innovation improve the world?
As me a Engineering professional,I concentrate on tech transfer
and development,market formation and mobilization.
There are many parts of the whole field of innovation:
strategy innovation, new product development, creative
approaches to problem solving, idea management, suggestion
systems, etc.
All of these components are important.

@ Factors.
• Choosing the right business to be in.
• Creating the right strategy.
• Building the right systems.
• Designing the right organization.
• Getting the right people.

What emerge from this??

What attracts industry to Silicon Valley?
1. Knowledge Intensity
2. High quality and mobile workforce
3. Results oriented meritocracy
4. Open business environment
5. Universities and research institutes that interact with Industry
6. Collaborations among business, government, and nonprofit
organizations
7. Specialized business infrastructure
RAM INNOVATION LABS 37(Lee, Miller, Hancock and Rowen 2000,7-12.

Silicon Valley
“Silicon Valley is the nation’s largest major export area, received
nearly one-quarter of the country’s venture capital investments
and is the world’s leader in the information technology
industry.-
Ron Gonzalez, Mayor of San Jose exert IBD 2000-2001, 51
In 1999, “merchandise exports increased to $26.2 billion” in San
Jose.
(International Business Directory 2000-2001, 52

Valley
• The largest manufacturing industry in the United States and the world
is the electronics sector, and ‘because of its growth and size, the chip
industry is the pivotal driver of the world economy’.” (Pellow and Park
2002, 86: Semiconductor Industry Associations,
http://www.semichips.org. )
• “Globally electronics is a $300 billion industry. Intel, the world’s
largest chip maker, is also one of the world’s most profitable
companies, with a market value of $117.6 billion in 1998—more than
the Big Three auto makers combined.” (Pellow and Park 2002, 86: USA
Today, January 12, 1998)
• “Electronics is a highly competitive industry that includes the
production of semiconductors, microchips, disk drives, circuit boards,
consumer electronics, communication devices, and video display
equipment.” (Pellow and Park 2002, 86]
• “In 1999, the CEO of Hewlett-Packard was paid $69.4 million, and
Santa Clara County has one of the highest numbers of millionaires per
capita of any community in the world.” (Pellow and Park 2002, 87)

Challenges
• Government regulation, market participants and consumers;
globalization, deregulation, quotas, tariffs, subsidies, market
access or non-tariff barriers
• Supply exceeds demand; fickle demand, risk, lean retailing.
• Trust and relationships: Consistency vs. Innovation
• Changing needs: need for creativity and/or innovation
• Mass production, custom made, personalization, co-
creation/designing
• Supply, demand, production, value chain or network
• Innovation/creativity: Customer, supplier, consultant, partner,
competitor, standards, product liability, risk sharing, ownership

Challenges IP
• Expand, adapt, fine tune, harmonize
• New categories (Sui generis systems)
• National, regional or global
• National treatment vs. reciprocity
• Digital environment and E-commerce
• Legal jurisdiction, applicable laws
• Fit for purpose: Clear, fast, cheap and effective
• Simple and cogent

Significance of the Tech Industry
• San Jose Metropolitan Area is
home to more than 6,382 high
technology companies focusing in
computers, software, multimedia
& Internet. (IBD 2000-2001,
179)
• 1 out of every 3.6 workers in
Santa Clara County is employed
in manufacturing. (IBD 2000-
2001, 179)
• 66.9 % of Americans use the Internet
• 54.6% of Americans use e-mail.
(International Business Directory
2000-2001, 183)
• U.S. internet users account for 45.2%
of the world’s internet users in 1999.
(IBD 2000-2001, 183)
• Top 10 Silicon Valley Brands
1. Yahoo! 2. Hewlett Packard
3. Intel 4. Netscape
5. Netscape Navigator
6. Netscape Communicator
7. e-Bay 8. Excite 9. Quicken
10. Java (IBD 2000-2001, 185)
Imagewww.krollworldwide.com/services/technology/

Varied Roles
Distribution
Research
Development
Production
IDEA
MARKET
Universities
Research
Institutes
Start-up
Firms
R & D
Firms
Larger
Companies
Manufacturing

Technology Transfer
DEPLOYMENTDEVELOPMENTRESEARCH

Patenting
Licensing
Disclosure
Commercialization
Products/Processes
(Royalties)
The Technology Transfer Process
Agreement Administration

Goals and Objectives
• Principal Investigator
Publications
Support of students
Long-term relationship
Multiple sponsor
relationship/consortium
Timeframe
Overall research program
Pending research projects
• Company partner
Past relationship
What do they expect? What
will they contribute to
research project?
Timeframe
Company position and likely
strategies

The U. S. Environment: Growth and Expansion
• Patents awarded to U.S. universities grew from 390 in 1980, to
3,764 in 2000.(Source: AUTM).
• According to an AUTM analysis (Stevens, 1993) the
compound growth rate of royalty revenues in 1990-2000 was
between 25-35%. With 2000 royalty revenue of $1.26 billion,
this represents $43.5 billion added to the economy in product
sales (using a multiplier of 34.5).
• Number of patents and licenses per $10 million in R&D
expenditure is increasing.
• Fraction of business support of university research is now
7.2% (1998), up from 3.8% in 1980.(but level since 1994).

The Bayh-Dole Act of 1980
Allows universities (and other non-profit contractors) to:
• Retain title to inventions produced under federal support
• Patent technologies
• License technologies
Requires universities (and other non-profit contractors) to:
• Share royalties with inventors
• Use royalties for laboratory purposes
Authorizes federal agencies to:
• Protect government-owned intellectual property
• Grant licenses for government-owned intellectual property
• Set restrictions on licensing

The “Chain-Link” Model of Innovation
Research - Knowledge Creation
Transfer Processes (varied)
Market Need
Competitive
Analysis
Invent
Prove Concept
Prototyping
Detailed
design
Product
testing
Redesign
Production
Market
Distribute
Customer
support
The Product Development Cycle

• Product Technology
• Many end-users (e.g., consumers)
• Non-obvious relationship to creating/making other technologies
• Often simpler
• Process Technology
• Intermediate users
• Instrumental to creating/making other technologies
• More complex
• Technologies can be both product or process, and on alternate days,
depending upon context (e.g., drill press is a product to drill press maker;
part of a process to a tool-and-die shop)

Protection of Intellectual Property
• General Definition
The Process by which the private value of the creative outputs of
research are protected.
• Items to cover
– The protection approach
– Disclosing and protecting inventions
– The nature of intellectual property

Protection of Intellectual Property
• Intellectual Property (as noun)
The results of research or other creative work that can be protected by
law
• Realizing private value from intellectual property
Using a legal mechanism which permits selected parties to utilize a
particular invention, work, or similar creative product; and precludes
others from doing so.
• Value
Private (commercial) value is not the same as public value. It is
usually not possible to achieve private value from creative work which
is in the public domain.

• Filed with institutional intellectual property office
• Evidence for date of invention or creation and names of
inventors or creators (for primary)
• Identifies funding source
• Provides information for choosing a protection approach
(or whether to protect)
• A disclosure assumes that intellectual property exists, and
has value (in fact, these assumptions are often
unwarranted)
First Step in a Protection Strategy:
The Invention Disclosure

• In a global economy, world - wide patent rights can be essential for
commercial success.
• World-wide patent rights will be lost due to public disclosure of an
invention before the patent APPLICATION is filed.
• What constitutes public disclosure?
Publication of a research paper
A speech or a talk at a public or open meeting
A poster presentation
Collaborative research after a discovery
• If you think you have a patentable invention - THINK!
Delay public disclosure.
Let your institutional intellectual property or technology transfer
coordinator evaluate.
If possible, remove disclosing material before a public disclosure.
Publication Vs. Patent Protection

Disclosing and Protecting
Worst Better
Best
1. Invent
2. Publish or talk
3. File invention
disclosure
4. File for patent
or otherwise
protect
1. Invent
2. File invention
disclosure
3. Publish or talk
4. File for patent
or otherwise
protect
1. Invent
2. File invention
disclosure
3. File for patent
or otherwise
protect
4. Publish or talk

Intellectual Property:Protection Approaches
Patent
Copyright
Trademark
Trade Secret
All can be used concurrently, and SHOULD BE.
“Investment grade” technologies tend to be in a “thicket”
of protection

Patents
• SPECIFIC CRITERIA DEFINED BY LAW
Novelty, Non-obviousness, Utility
• BURDEN OF PROOF ON THE APPLICANT
Applicant must prove in the examination that the invention
meets the criteria
• CAREFUL EXAMINATION
Technically qualified examiners
Review of the “prior art”
May take two to five years
• EVERY COUNTRY HAS A DIFFERENT SYSTEM
Patents are granted by national offices
One invention may differ in coverage from country to country
Patent cooperation Treaty and the European Patent Office

• TERM OF PATENTS
20 years from date of application
Most countries have similar terms (harmonization)
• COST OF A PATENT
Expensive to apply - legal costs and fees
Expensive to maintain - maintenance fees
• “FIRST-TO-FILE” vs. “FIRST-TO-INVENT”
U.S. is sole major “first -to-invent” country
May mean an invention in Europe will not get a U.S.
patent
Patents (Cont.)

What is Patentable?
May include anything “under the sun” made by man...
• Process—a method of doing something (e.g., manufacturing steel,
surgical or medical procedures)
• Machine—combination of mechanical elements
• Article of manufacture—anything which has been manufactured
• Composition of matter—a new chemical, a new formulation of
elements, a genetic construct
Ideas, formulas, and “principles of nature” are not patentable.

Patentability Issues
• What is “patentable matter” differs from country to country. for
example:
U.S. Europe
Methods of treat-
ment or therapy Patentable Not Patentable
Inventions from
collaborative
research Not Patentable Patentable
[sometimes]
• What is “patentable matter” changes from time to time
Lesson: You have to work with a patent attorney whom you trust.

Copyrights
• The exclusive right granted by the government to the owner of an original
work of authorship to reproduce, distribute, perform, prepare derivative
works, and/or display the copyright work
• Term for individual is life plus 50 years; for organizations, publication plus
75 years (or creation plus 100 years)
• Covers the expression of an idea in tangible form but not the idea itself
• Traditionally the vehicle for mass market software protection, print
material, and recorded materials (tapes, records, film)
• Acquisition upon creation; U.S. registration relatively easy
• Automatically protected in many foreign countries
• Issue: work for hire versus original creation

Trade Secrets
• Derives economic value from not being known to persons
who can obtain economic value from its disclosure or use
• Need explicit efforts to maintain secrecy, internal and
external
• Incompatible long-term approach for universities, because
of publishing norms (possible exception is “know-how”)
• Trade secrets can be commercialized, via license or other
approaches
• Used when other protection approach can lead to
“inventing around”

8 Golden Rules” for Patenting
1 Avoid early public disclosure. File first, then disclose.
2. Do not publish interim results or speculate on broader applications
of a discovery.
3. Do research on the commercial market and technical novelty of an
invention before filing a patent application.
4. Consider the possibilities to license or develop an invention before
filing.
5. If you cannot protect the patent from infringement, don’t file.
6. File locally first. Drop international applications if there is no
interest in development in a reasonable time.
7. If you cannot prove the concept of a new invention in a reasonable
time, drop the application.
8. Periodically clean out your patent portfolio if you are a research
institute. Do not pay for non-productive

Why Software is Problematic
• Software as intellectual property fits into one of two difficult
categories:
– Software as a “writing”— traditionally copyright-protected
– Software as part of a “machine”— traditionally patent-
protected
• Since software tends to be a mixture, it causes problems for
the legal system

AUTM Data FY1991-2000
Created by L Berneman, UPenn, modified by J Fraser, FSU
100,000 disclosures
(discoveries)
$200B +
Research
Opportunity
Assessment
(Triage)
50,000
Patent Applications
25,000 Licenses
125 > $1M/year
50% <$10k cum.
2,500
Start - ups
$2M : 1 disclosure
• Commercial potential
• Technical advantages
• Protectability
• Inventor profile
50% do not move forward
25%
(10% lics / 2.5% discl. )
Positive exit (liquidation)
License Income
( 3.5% per year )

Why is it difficult to license out early-stage technology?
• Industry (especially the pharma industry) is traditionally
conservative.
• Industry looks for short-term results on its investments.
• There is internal competition within companies for
research and development funds. (If there are 2 or 3
projects in the company pipeline, why add another
without having complete data?)

Nature of the Market
• Is the market well-developed (mature), or
underdeveloped?
• How differentiated, specialized or “niche-ified” is
the market?
• How much capacity/intelligence do the end-users
have? Do they need hand-holding? Can they
accept innovation?
• How big is the potential market?
• Is product liability a problem?
• What are the regulatory hurdles?

License vs. Start-up Company
Must consider a combination of:
– Industry Structure
– Competing technologies
– Size of market
– Product profitability
– Cost to develop product, bring to market
– Ability to Raise Capital

License vs. Start-up
• Established Companies (Licensees)
– Have established marketing functions and big markets
– Know how to manufacture
– Have capital
– Better resources to protect the intellectual property
– May “lose” or “orphan” the technology
• Small or New Companies (Licensees or Start-ups)
– Can serve specialized, “hands-on” markets
– Can maintain pace of technological innovation
– Are organizationally flexible
– May result in closer long-term relationship for inventor
– Subject to buyout or rapid change of plans

The Entrepreneurial Option:Why Not?
• For the Inventor/Scientist:
>> Enterprise management is a set of skills,
unrelated to being a good scientist.
>> Financial backers want control.
>> Failure rates are high, financial
remuneration takes years.
>> Failure rates are high, financial
remuneration takes years.
• For the University/Research Institute:
>> Culture-perturbing.
>> Potential conflicts of interest.
>> Intrusion into student training.

License vs. Start-up
Remember....
Only 1-2% of all technologies from research institutions
can become successful start-up companies

Decision Factors for the University
• Nature of the market.
• Nature of the technology.
• What does the commercialization entity (to be selected)
need to do well?
• What does the inventor want to do? VERY IMPORTANT.
• Does the commercialization path enhance other mission
goals? (e.g., research development, quality teaching,
regional economic development)

Decision Implications for the Inventor
• Licensing or Sale to Third Party Company
– Less hassle, the “hands-off” path (relatively speaking).
– Less opportunity for return.
– Less personal and financial exposure and risk.
– Less control, and ego-identity.
• Participation in a Spin-off or Start-up venture
– Likely to demand a career shift.
– Maximum potential for gain (and risk).
– Opportunity to stay with the invention throughout its
life cycle.

Licensing to an Existing Third Party Company: When and
Why?
• The inventor wants to stay in the lab.
• Subsequent needed development is obvious.
• Markets are relatively clearly defined.
• An established marketing structure is an advantage, particularly a
geographically diverse one.
• The technology is a natural complement to the product portfolio of one or
more potential licensees.
• Development and production costs are large (e.g., drugs).

The Entrepreneurial Option:Issues for Research Institutions
• To encourage or discourage?
– Mission of the research institution?
– Culture of the research institution?
• Management of tension with other institutional missions.
• Management of individual conflicts of interest.

Start-up Companies
• To be successful, a start-up must have all of the following
ingredients:
– Commercially motivated scientist
– “Flexible” research institution
– Exciting market potential, a “good story”
– Management team
• All of the above will permit the company to obtain capital
resources.

Starting a New Venture
• Decision to commercialize:
– Based on competitive advantage of
Product/Technology/Service
• Value to end-user (therapeutic efficacy)
• Value to developer (product differentiation)
• Defensibility of commercial position (survival value)
– Accurate marketplace analysis is necessary to determine
strength of competitive advantage

Starting a New Venture
• Must assemble proper:
– Technology
– People (management team)
– Capital

New Venture: Technology
• Technology
– Clear, exclusive access to technology
– Usually obtained through license(s)
– Provision for technology transfer
• inventor joins company
• inventor consults with company
• company has access to inventor’s research facilities

New Venture: People
• People
– Commercial Staff (CEO)
• credibility at raising money, building a business
• usually experienced businessman from industry
– Technical Staff
• experienced in specific technology
• experienced in product development

New Venture: Capital
• Capital
– Capital raised in stages
– Requires Business Plan
• Market Opportunity
• Technology/ Solution to Opportunity
• Development Plan
• Marketing Plan
• Management
• Financial Projections

Role of the Inventor
• Option 1: Inventor assumes all aspects of enterprise
management LEAST DESIRABLE.
• Option 2: Inventor assumes primary responsibility for
technology development, and business manager
assumes responsibility for business planning and
operations; these are co-equal or business
manager is subservient to inventor ALSO
UNDESIRABLE.
• Option 3: Business management (not the inventor) assumes
primary authority over all functions, including
technology development, which might be directed
by the inventor THIS ONE MIGHT WORK.

Biolex, Inc.
Timeline
1992 -scientific research begun
Aug 97 -patent filed
Oct 97 - incorporation
Oct 97 - Feb 98 - recruit management team
Mar 98 - Apr 98 - write business plan
Apr 98-Aug 98 - contact “venture capital” investors
Oct 98 - receive $1.1 million “seed round”
Nov 98 - begin operations (under contract at
University)
Jul 99 - move into rented laboratories

Typical Start-up Company
• Technology invented at government or university
laboratory, patents initiated
• Technology shows “proof of concept”, which dramatically
reduces risk
• Technology licensed to management team (inventor may
be on management team)
• Management team raises capital from government, private
investors, or professional investors (venture capitalists)
• Hard work begins

Best Practices Starting New Companies
Research Institutions which do well at licensing
technology to to start-ups adopt the following “best
practices”:
• An economic development mission.
• Strong linkage to business development infrastructure
(e.g., incubators).
• Novel, early-stage financing (e.g., seed funds, prototype
financing).
• Attention to faculty culture, incentives, and rewards.
• Enabling policies (e.g., conflict-of-interest).
• Administrative flexibility in deal-making.

Financing New Ventures
Ability to finance new ventures depends upon:
• Quality of management team
• Economic value of business concept
– Value to end-user and developer
– Patents

• The first million Dollars is the most difficult to
find
• All money is not created equal

• Financing sources for “early stage” companies:
– Founders, Family and Friends
– Scientific Institutions
– Government programs
– “Angels”
– Corporations
– Venture Capital Funds

• Founders, Family and Friends:
– Usual source of earliest capital
– Have confidence in ultimate success
– Know the people, technology and business well
– Capital limited, usually less than $100,000
– Strained personal relationships if business fails

• “Angels”
– Difficult to find
– Can bring more than money
• industrial contacts
• financial contacts
• credibility
• experience
– Typically invest in $200,000 to $1,000,0000 range

• Corporations:
– Excellent sources of capital
– Funding levels can be very high
– Relationship with corporation builds credibility
• corporation brings more than money
• access to additional technology, facilities, customers
– Decision-making process can be slow
– Corporations may want excessive control

• Venture Capital Funds
– Professional Investors
– Typically manage $50 - 200 million
– Invest funds in 10 -15 different companies
– Before they invest, they look for an “exit strategy”
• sale of company to larger company
• public sale of stock

Value of New Companies
• Early stage company:
– Patented technology licensed from research institution
– Initial commercial proof of concept demonstrated
– Most of management team in place
• Typical value:
– $1-5 million before new investment capital is obtained
(“pre-money” valuation)

Value of New Companies: Example
Pre-money Pre-Money Value/ New New Post-Money Post-Money
Shares Valuation share Investment Shares Valuation Shares
Start-up 1,000,000 $ 500,000 $ 0.50 $ 1,000,000 2,000,000 $ 2,000,0 00 3,000,000
Early Stage 3,000,000 $ 6,000,000 $ 2.00 $ 5,000,000 2,500,000 $ 11,000,000 5,500,000
Mid-Stage 5,500,000 $ 33,000,000 $ 6.00 $ 10,000,000 1,666,667 $ 43,000,000 7,166,667
I.P.O. 7,166,667 $ 86,000,000 $ 12.00 $ 35,000,000 2,916,667 $ 121,000,000 10,083,333

• Early-stage life science company
– technology patents pending, business concept
defined, management team in place
• Mid-stage life science company
– technical and commercial proof of concept more
clearly established, collaborative (validating)
relationships in place with technology and/or
commercial partners
• Later-stage life science company
– initial products in clinic, corporate partnerships well
established, additional technologies under
development

VALUE
RISK
EARLY MID LATE
Idea Patent In vitro In-vivo Clinical trials In-market
Protection (proof-of-concept)

Exit Strategies
• Sale of company to larger company in same industry
• Public stock offering
– Usually life science companies have “pre-money”
valuations of $50-100 million at time of Initial Public
Offering (IPO)

Public Companies
• Positives
– Access to large amounts of capital
– Liquidity for all stockholders
– Motivation for employees
– Status
• Negatives
– Expectations of financial markets
– Legal reporting requirements
– Reduced operational flexibility

Lessons
• Technology transfer and commercialization CAN be
compatible with, and in fact enhance, the traditional
missions and roles of a university or research institute.
• Technology transfer and commercialization requires a
dedicated effort to be successful
• The skills necessary for successful technology transfer and
commercialization are different than the skills necessary to
do good science.
• The research organization of the 21st century will be
heavily involved in technology transfer.

Capital
Labour
Knowledge
Capital
Labour
Knowledge
Capital
Labour
Knowledge
Pre -industrial era Industrial era
The « knowledge
economy »

market
product
prototype
consept
idea
StrategyInnovation Process
Monitoring
competitors + technology
inspiration, generation of new ideas,
- Technical solutions (how?)
- market info (who?),
- strategic information
(licence <-> develop)
Monitoring
competitors + technology
protection
protection
Protection as a
source for
extra income
Developing
technical knowledge
Use of technical
information
Which is developed by
Other companies
Avoiding infringements
Patent = Protection
Patent = Information
Innovation – IP Relations

Business strategy is ...
• the group of dynamic, integrated decisions that position the
business in its competitive environment
Marketing Strategy
• Product/market definition
• Pricing
• Distribution
• Promotion
• Customer support
Production Strategy
• Facilities
• Integration
• Capacity
• Quality
• Production technology
• Operations control
• People management
Financial Strategy
• Capital structure
• Cash flow
R&D Strategy
• Basic and applied research
• Product/process innovation
• Lead or follow
Objectives
• Growth
• Profitability
• Diversification
• Innovation
• Market share
• Working environment
• Corporate citizenship
Legal Strategy
• Intellectual property
protection
• Corporate

Marketing Strategy
Production
Strategy
Financial
Strategy
R&D Strategy
Legal Strategy
Execution
• People
• Systems
• Organizational
structures
Results
Strategy Sets a Dynamic Loop in Motion

Basic Research
Applied Research
Invention
Development
Production
Marketing
“Technology-Push Linear Model of Innovation”

New/Improved Product Development
• Stages in a New/Improved Product Development process:
• Ideas Generation
• Ideas Screening
• Concept Development and Testing
• Business Analysis
• Beta Testing and Market Testing
• Technical Implementation
• Commercialization

IDEA to PRODUCT
Innovation
(Tech/Non-tech)
Invention
Idea
Technology (Internal, External or Joint)
Product (Internal, External or Joint)
Functional or
Technological
Form or
Appearance
Marketing (Branding)
Manufacturing or
Business Process
@Entrepreneur@
Financial, legal or
organizational
Business
model
Internal,
External, or Joint
Internal,
External,
or Joint
Internal,
External or Joint
Business
Strategy

IDEA to MARKET
Fixation/Replication/Distribution
Creative Expression
Idea
Product
Marketing
Technology
Technology
Technology
Technology

Idea to Profit
Intellectual PropertyBusiness Model
Idea
Relationship of Trust
Marketing
Value Extraction (Sale)
Product

Expansion
Start-Up
Seed
Idea / Concept
Time
$
•Business Plan
•Prototype/ POC
•Project Management
•Business Premises
•Project Management
•Management Training
•Corporate and
Secretarial
•Financial
•Training
•PR and Marketing
•Networking
•Business
Development
•Recruitment
•Business
Development
•A & P
•Market Access
•International support and
Mkt. Access
•Diversification strategies
and support
•Recruitment
•Training and Incentives
The Needs of Each Stage
IP Management Needed in all stages

Basic Message 1
IP adds value at every stage of the value chain from
creative/innovative idea to putting a new, better, and cheaper,
product/service on the market:
Literary / artistic
creation
Invention
Financing Product Design
Commercialization
Marketing
Licensing
Exporting
Patents /
Utility Models/Trade secrets
Copyright/Related Rights
Patents /
Utility models
Industrial Designs/
Trademarks/GIs
Trademarks/ GIs
Ind. Designs/Patents/Copyright
All IP Rights
All IP Rights

The Profitability of Innovation
• Legal protection
• Complementary
resources
• Ease of imitation
of
technology
• Lead time
Profits
from
Innovation
Value of an
innovation
Innovator’s
ability to
appropriate
value from an
innovation

Value
Appropriation
from
Innovation
Barriers to Integration
Different Time
Interpersonal
Different Goal
Formality of
Orientation
Orientation
Orientation
Structure
Facilitators of
Integration
Shared Values
Leaders’ Vision
Effective
Budget Allocation
Communication
Appropriating Value from Innovation
Cross-Functional
Integration/
Design Teams
Time to
Market
Product
Quality
Creation of
Customer
Value

Product Development Strategies
Old
Market
New
Market
Old Product New Product
Market
Penetration
Product
Development
Market
Development
Product
Diversification

Technology Adoption – Diffusion of Innovation
New Product Adoption Process
Innovators
Early Adopters
Early Majority
Late Majority
Laggards
Area under curve sums horizontally to form first three stages of the
product life cycle.

Technology Adoption – Diffusion of Innovation
Early
Adopters
Innovators
Laggards
Early
Majority
Late
Majority
Take up Rate
Time
Innovators: venturesome; greatest need
Early adopters: opinion leaders; needs driven
Early majority: deliberate
Late majority: skeptics
Laggards: traditionalists; suspicious

Commercialization Model
Strategic Investment is the Foundation of a
Successful Commercialization Model

New Business Models Emerge
Then…
One Integrated
Company
Now…
Many Distributed Companies
Product
Development
Cycle
Product
Development
Tool
Companies
Testing
Services
CRO’s CRM’s

Innovation, Intellectual Property and
Poverty Reduction
Critical Ingredients for Innovation:
• Intellectual Capital
• Human Capital
• Financial Capital
• Proximity
• Social Network Capital

Complementary Resources
Bargaining power of owners of complementary resources
depends upon whether complementary resources are
generic or specialized.
Manufacturing Distribution
Service
Complementary
technologies
OtherOther
Marketing
Finance
Core
technological
know-how

Risk &
Return
Competing
Resources
Examples
Licensing
Outsourcing
certain
functions
Strategic
Alliance
Joint
Venture
Internal
Commercialization
Small risk, but
limited returns
also (unless
patent position
very strong
Limits
investment, but
dependence on
suppliers &
partners
Benefits of
flexibility;
risks of
informal
structure
Shares
investment &
risk. Risk of
partner
conflict &
culture clash
Biggest risks &
benefits.
Allows complete
control
Few Allows outside
resources &
capabilities
To be accessed
Permits pooling of the
resources/capabilities of
more than one firm
Substantial
resource
requirements
Konica
licensing its
digital
camera to
HP
Pixar’s movies (e.g.
“Toy Story”)
marketed &
distributed by
Disney.
Apple and
Sharp build
the
“Newton”
PDA
Microsoft
and NBC
formed
MSNBC
TI’s
development of
Digital Signal
Processing
Chips
Alternative Strategies for Exploiting Innovation

Role
• Independently practice Patent Law being consultant to several
companies.
• Advisors to the Corporates in the matters of IP.
• Join the law firms as the Patent Agent / Technology
Specialists.
• Work as Drafting specialist in the field of expert/ Patent
Engineers.
• Join LPO / KPO as knowledge specialists, Patent Search &
Landscaping experts.
• IP Managers in corporates managing Patent Portfolios.

Role
• IP specialists in R & D organizations giving day to day
reports on Patentability opinions, infringement
assessments etc.,
• Join as IP Coordinators in the academic universities in
identifying the inventions developed in the universities
• Join as Technology Transfer Manager in research based
academic institutes to promote the invention.
• Join as academician in Universities and institutes
teaching Patent Law.
• Join as Patent Examiners / Patent Analysts with the IP
Offices.

Introduction to IP Management
• Legal
• Technical
• Business
• Export
• Financial
• Relationships
• Accounting
• Tax
• Insurance
• Security
• Automation
• Personnel

CONTROLLER GENERAL OF PATENTS, DESIGNS
AND TRADEMARKS
(CGPDTM)
T M REGISTRY
DESIGN OFFICE
G.I. REGISTRY
Head Office
KOLKATA
Branch
DELHI
Branch
CHENNAI
Branch
MUMBAI
Head Office
MUMBAI
DELHI
KOLKATA
CHENNAI
A’BAD
IPTI ,NIIPM,
P.I.S. Nagpur
KOLKATA
PATENT OFFICE
CHENNAI

STAGES - FILING TO GRANT OF PATENT
PUBLICATION OF APPLICATION
REQUEST FOR EXAMINATION
GRANT OF PATENT
3rd Party Representation
Revocation/Amendment
OPPOSITION
• PROMPTLY AFTER 18 MONTHS FROM P.D.
• WITHIN 48 MONTHS FROM F.D.
• ALL OBJECTIONS TO BE COMPLIED WITHIN 12
MONTHS
• IF P.S.IS FILED C.S. TO BE FILED WITHIN 12MONTHS
• WITHIN 12 MONTHS
FILING OF APPLICATION
PROVNL. / COMPLETE
Decision of
Controller
EXAMINATION-ISSUE OF FER
Appeal
Appellate Board

Patents
• If you do not want to go through all the time and hassle of
bringing an idea to market yourself, there is an alternative:
• license your idea to a manufacturer. In doing this, you are
granting someone else the right to create your idea and bring it
to buyers via the marketplace. However, there are some
important steps and considerations that you should keep in
mind if you choose to do this. In this article, we will make you
aware of them.

Patents
• Licensing an idea actually means licensing a patent, which
protects your idea. If your idea is not patented already, you
will want to apply for one.
• You can call 832-683-1527 for more information on filing for
a patent.
• Once your patent is filed it will be considered ‘patent pending’
which will give you the ability to begin presenting it to
investors, patent buyers, manufacturers, and retailers looking
for patents to license or purchase outright.

Patents
• You have licensed your patent when you (the licensor) grant
exploitation rights over your patent to a licensee (the person you are
licensing it to.)
• In this case, the licensee is whichever manufacturer you have licensed
your patent to. “Exploitation rights” simply means the right to create,
market, and/or sell something based on what that patent protects.
• A patent license is also a legal contract, and that contract is what will
spell out terms precisely which exploitation rights are being granted.
These include any performance obligations the licensor might demand
of the licensee.
• This means that if any performance obligations are included in the
contract (ie, “You must produce X number of sales by the year X.”),
and they are not met, this could lead to the license being terminated in
its entirety.

Patents
• If this sounds complicated, it can be, but it is actually quite
simple. The biggest consideration is finding the right
manufacturer to license your patent to.
• To do this, you should check resources like the Thomas
Register to find manufacturers related to your idea. These are
the people most likely to want to license it from you.
• There are other easy ways of finding manufacturers to license
your idea to, as well. See our article “Researching Your
Market Online” for more details. Once you have narrowed
down a list of 10-20 relevant manufacturers, the next step is
deciding on the terms of your license agreement.

Patents
• If you have certain expectations that you want to enforce, such
as X number of sales in the second year or a 4% profit margin,
performance obligations is the way to enforce them. Of course,
both parties will have to agree on the obligations before they
become final.
• There is also the issue of royalty requirements, where you can
specify that you must receive X dollars in royalties monthly,
annually, or semi-annually to keep the license agreement alive.
These are ways of ensuring that your own financial needs are
met from licensing your idea to the manufacturer.

Patents
• Another consideration is the term of the agreement. Do you
want a longer or shorter agreement? Well, that depends on
your circumstances.
• Do you want to someday capitalize on this patent yourself? If
so, you might opt for an agreement of 5 years or less.
However, if you’re the kind of person who just wants to
collect the royalty checks and move on to something else, a
longer agreement might suit you best. The key is to choose the
length consciously, based on your true needs and goals.

Scientists Invent in Research Labs
Invention Disclosures
to Technology Transfer Office
Evaluation of Inventions/
Patent Filing Decisions
Technology Licensing
Startup CreationEstablished Company
OTT’s
Activities

Top 5 Universities
A Global Analysis of University Biotechnology Transfer and
Commercialization, includes the Milken Institute university
Technology Transfer and Commercialization Index, which
ranks universities at their ability to take world-class research
and turn it into licensing income and business startups.
The top five are:
1. Massachusetts Institute of Technology
2. University of California system
3. California Institute of Technology
4. Stanford University
5. University of Florida

Five Universities You Can Do Business With
From: Inc. Magazine, February 2006
“ … Just five schools, in fact, constitute the elite of the
technology transfer world. They are Berkeley, Caltech,
Stanford, MIT, and Wisconsin. The list of universities
reporting new discoveries changes from one year to the next,
but each of these five schools consistently garners around
100 patents per year.”
“… Along with teaching and doing research, they seem to
be in the business of inventing companies.”
“… Administrators at the Big Five play their part in
nurturing tech transfer by resisting the temptation to
monitor and regulate business relationships aggressively.”

• The right to exclude others from making, using, offering for
sale or selling the invention.
Key Web Sites
• http://www.uspto.gov
• http://www.european-patent-office.org
• http://www.law.emory.edu/fedcircuit/

U.S. Filing
Office Action
Response
Final Office Action
Appeal
Patent Issues
Priority Filing
(e.g.,
provisional)
Publication
at 18
months
Patent Prosecution

Patent estimate
FY 2010 USPTO appropriation of $1,887M
 Patent estimate of $1,664.8M
 Trademark estimate of $222.2M
Current Fee Collection Projections are $2,003M
 Patent maintenance and issue fee increases are the main drivers
$116M in patent fee collections estimated as unavailable without
further legislation
USPTO is in discussions with OMB and DOC regarding full
access to fee collections in FY 2010.

Operating In 2010 at $1,887M —
Reductions in Patent Funded Programs
FY 2010 Current Operating Plan
CAO, $30,058,896 , 2%
CFO, $30,468,465 , 2%
Trademarks, $105,596,262 ,
5%
MGE, $206,030,318 , 11%
CIO, $234,879,962 , 12%
OGC, $52,975,383 , 3%
Policy, $34,461,443 , 2%
Patents, $1,249,494,463 , 63%
Used 2009 Savings to Offset Costs in FY2010
USPTO Made Further Reductions in FY2010 to Redirect
Additional Money to Activities with Direct Impact on Pendency
Hire 250 Examiners, Limited OT & PCT Outsourcing
(2/2010)
Early Data Capture Halted—Funds Redirected to PCT &
OT
Awards Curtailed—Funds Redirected to OT and
Examiner Hires
Efficiency Improvements

Trademark Performance
Trademarks FY 2009 FY 2010 FY 2011 FY 2012 FY 2013 FY 2014 FY 2015
Applications 352,051 356,000 374,000 397,000 431,000 474,000 518,000
Growth Rate -11.8% 1.1% 5.1% 6.1% 8.6% 10.0% 9.3%
Balanced Disposals 784,990 742,000 753,000 824,000 889,000 975,000 1,067,000
Registrations 241,637 218,000 221,000 241,000 261,000 286,000 313,000
Performance Measures
Applications Processed Electronically 62.0% 65.0% 68.0% 71.0% 74.0% 78.0% 81.0%
First Action Compliance Rate 96.4% 95.5% 95.5% 95.5% 95.5% 95.5% 95.5%
Final Compliance Rate 97.6% 97.0% 97.0% 97.0% 97.0% 97.0% 97.0%
Avg. First Action Pendency (Months) 2.7 2.5 to 3.5 2.5 to 3.5 2.5 to 3.5 2.5 to 3.5 2.5 to 3.5 2.5 to 3.5
Avg. Total Pendency (Months) 11.2 13.0 13.0 13.0 13.0 13.0 13.0
Examining Attorneys at End-of-Year 389 372 364 357 404 433 479
Growth in Trademark Applications and Examiners
100
150
200
250
300
350
400
450
500
550
FY 2009 FY 2010 FY 2011 FY 2012 FY 2013 FY 2014 FY 2015
InThousands
200
250
300
350
400
450
500
550
600
Trademark Applications
Trademark Examiners

Requirements vs. Funding
by Business Line
Description FY 2011 FY 2012 FY 2013
Total Requirements 250 254 258
Fee Collections/
Other Income
213 237 257
Reserve-Activity (37) (17) (1)
Reserve-Balance 48 31 30
Description FY 2011 FY 2012 FY 2013
Total Requirements 2,081 2,222 2,275
Fee Collections/
Other Income
1,903 1,992 2,001
Surcharge 224 232 228
Total Collections 2,127 2,224 2,229
Reserve-Activity 46 2 (46)
Reserve-Balance 52 54 8
PATENTS
Dollars in Millions
TRADEMARKS
Dollars in Millions

What you don’t know about your customers and your
business may be costing you millions!
For example:
technology,
product &
service
value-creation
For example:
The best
customer
solutions to
maximize your
customers’
profitability
For example:
Your business
model is now
obsolete, limiting
your
effectiveness and
ability to achieve
a sustainable
competitive
advantage

Business Focus:
Effectiveness –
Business
Proactivity
Business Focus:
Efficiency –
Business
Responsiveness
7 levels for maximizing potential innovation value-creation

FINANCE
INFRASTRUCTURE CUSTOMER
VALUE
PROPOSITION
OFFER
gives an overall view of a
company's bundle of
products and services
PARTNER
NETWORK
portrays the network of
cooperative agreements
with other companies
DISTRIBUTION
CHANNELS
describes the channels to
communicate and get in
touch with customers
VALUE
CONFIGURATION
describes the
arrangement of activities
and resources
CUSTOMER
RELATIONSHIP
explains the relationships
a company establishes
with its customers
COST
STRUCTURE
sums up the monetary
consequences to run a
business model
REVENUE
STREAMS
describes the revenue
streams through which
money is earned
TARGET
CUSTOMERS
describes the customers
and customer segments
a company wants to offer
value to
CORE
CAPABILITIES
outlines the capabilities
required to run a
company's business
model
Creating, Defining and Improving a Company’s Business Model

Identify and Qualify New Opportunities
Exploited
Opportunities
Unexploited
Opportunities
Unexploited
Opportunities
Unexploited
Opportunities
Served Customers Unserved Customers
Unarticulated
Needs
Articulated
Needs
Articulated-Served
Customers: known
world of customer
needs
Articulated-Unserved
Customers: offerings
developed & perfected
for existing customers
extended to new
customers in different
markets
Unarticulated-
Unserved Customers:
proactive and visionary
companies like Honda
seek to get inside he
heads & experiences of
unaddressed customers
Unarticulated-Served
Customers: potential
for satisfied customers
to become frustrated
or uninterested if
unexpressed but felt
needs not addressed

Dimensions to Opportunities Available
Opportunities Identified
A. Unexpected Successes
B. Unexpected Failures
C. Unexpected External Events
D. Process Weaknesses
E. Industry / Market Structure
Changes
F. High-Growth Areas
G. Converging Technologies
H. Demographic Changes
I. Perception Changes
J. New Knowledge
Dimensions Available
1. Offerings
2. Platform
3. Solutions
4. Customers
5. Customer Experience
6. Value Capture
7. Processes
8. Organization
9. Supply Chain
10. Presence
11. Networking
12. Brand
Vs.

REVENUESCOSTS
KEY ISSUES TO
SOLVE
ACTIVITIES
PARTNERS RELATIONS
OFFER CLIENTSCHANNELS
Value
Proposition 1
Costing Issue1
Customer
Relations 1
Customer
Segment 1
Configure
Value 3
Core
Capability 4
Partner
Network 1
Revenues 1
Delivery
Channel 1
Configure
Value 2
Core
Capability 2
Configure
Value 1
Core
Capability 1
Core
Capability 3
Costing Issue
2
Delivery
Channel 2
Mapping
Opportunities

REVENUES
STREAMS
COSTS
STRUCTURE
CORE
CAPABILI-TIES
VALUE
CONFIG-
URATION
PARTNER
NETWORK
CUSTOMER
RELATIONS
VALUE
PROPOSI-TION
TARGET
CUSTOMER
SEGMENTS
DELIVERY
CHANNELS
Improving
Opportunities
5
6
5
6
Threats
Opportunities
1 1
1
Weaknesses
1
1
2
2
Strengths
2
2
2
2 2
2
2
2
5
5
6
6
1
2 2
2

REVENUESCOSTS
KEY ISSUES TO
SOLVE
ACTIVITIES
PARTNERS RELATIONS
OFFER CLIENTSCHANNELS
selling stuff
on the Web
IT infra
automatized
relationships
mass
customer
data services
Amazon.com
data grid
partners
selling stuff
Amazon S3
Amazon.com
Internet API
Web2.0
companies
warehousing
& distribution
distribution
content
management
product
selection
A9 product
search
data storage
fees
product
search
search engine
revenues
e-commerce
sites
Internet
marketing
affiliates
Example:
AMAZON.COM

Mapping Problems / Opportunities
Target
Segments
(TS)
Value
Propositions
(VP)
Value
Configurations
(VC)
Core
Capabilities
Customer
Domain
Functional
Domain
Physical
Domain
Resource
Domain
WHAT? HOW?
Vision Design
Phase:
Customer
wants & needs
WHAT? HOW?
Mission Design
Phase:
Strategies to
satisfy needs
WHAT? HOW?
Implementation
Design Phase:
Processes to
execute strategies
(CC)
Strategy Formulation & Implementation

Customer Contributions – what contributions do we require from our
customers if we are to maintain and develop our capabilities?
VALUE
PROPOSITION
DISTRIBUTION
CHANNELS
CUSTOMER
RELATIONSHIP
REVENUE
STREAMS
TARGET
CUSTOMERS

Customer Partnerships for Customer-driven Innovation:
Involve Your Customers as Co-innovators
Board
Marketing
Leadership
R&D
Finance
Operations
Customers
Sales
Purchasing

Role played
?
Role playing
?

Thanks to all.

Innovationsram

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