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GESTS423 Intellectual Property Management &
Technology Transfer Session 7: Valorisation plan
Step II: To who?
Azèle Mathieu, PhD February - June 2015
GESTS423 – Technology Transfer – © Azèle Mathieu
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WHAT SHOULD YOU TAKE INTO ACCOUNT WHEN COMMERCIALISING A PATENT?
The Valorisation Plan (VP)
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As you make a Business Plan when you want to launch a new company
You make a Valorisation Plan when you want to make a new invention/competences useful for the society
The VP is built around 4 main axes:
● What?
● To who?
● How much?
● How?
Today’s agenda
• The Valorisation Plan
● What?
● To who?
● How much?
● How?
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To Who?
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Existing company
To be created company – “spin-out/spin-off company”
What are the transfer options?
Sale of the technology – transfer of the ownership
License on the technology – transfer of some rights
Transfer options
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Patented
Technology
License
Existing company
Spin-off company
Sale
Existing company
Spin-off company
Licensing: pro’s
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LICENSOR LICENSEE
1 - SKILLS OF 1/3 √ √
2 - CROSS-LICENSING √ √
3 - SPARE RESOURCES – OPPORTUNITY COST √ √
4 - KEEP IP + BENEFIT ADDITIONAL $ √ NA
5 - ACCESS NEW MARKETS √ NA
6 - TURN INFRINGER OR COMPETITOR INTO PARTNER √ NA
7 - CONTROL ON INNOVATION √ NA
8 - COMBINATION OF PRODUCTS: INNOVATION NA √
Roles of licensing (1/3)
Cross-licensing:
A
Access new markets:
Novartis Ophthalmics, part of the Novartis Pharmaceuticals Division, has licensed the exclusive rights to develop and market Lucentis outside the US for indications related to diseases of the eye. As part of this agreement, Novartis paid Genentech an initial milestone and… GESTS423 – Technology Transfer – © Azèle Mathieu
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Roles of licensing (2/3)
Innovation:
XOLAIR
In February 2004, Novartis Pharma AG, Genentech, Inc., and Tanox, Inc., finalized a three-party collaboration to govern the development and commercialization of certain anti-IgE antibodies including Xolair (anti-asthma) and TNX-901. Under this agreement, all three parties co-developed Xolair. On August 2, 2007, Genentech, Inc. completed the acquisition of Tanox, Inc. and has taken over its rights and obligations. Novartis and Genentech are co-promoting Xolair in the US where Genentech records all sales
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Roles of licensing (3/3)
Innovation:
40 Examples of Open Innovation and Crowdsourcing
http://www.15inno.com/2012/08/09/oicrowdexamples/
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Licensing: con’s
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LICENSOR LICENSEE
1 - NOT AS PROFITABLE AS OWN INVESTMENT √ NA
2 - LICENSEE BECOMES COMPETITOR √ NA
3 - TECHNOLOGY NOT CLEARLY DEFINED √ NA
4 - DEPENDENCY √ NA
5 - TECHNOLOGY NOT READY FOR EXPLOITATION NA √
6 - COST NOT SUPPORTED BY THE MARKET NA √
Sale
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New asset for the buyer
One payment unless agreed otherwise
To be considered when no further developments can be made by the applicant
Usually not universities’ favourite option
Heavy consequence in case of bankruptcy
One sale >< multiple licensing agreements for multiple applications
Existing company versus spin-off company (1/2)
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SPIN-OFF COMPANY EXISTING COMPANY
PATENT PROTECTION -NEEDED -SCOPE
Yes
Broad
No
Narrow-broad
FREEDOM TO OPERATE Required Not required
STAGE OF DEVELOPMENT -STAGE -INVESTMENT NEEDED
Early POC
High
Any
Small-high
MARKET: -NEED -STAGE -SIZE -COMPETITION
Major
New, emerging or fast growing Large Low
Minor
Any Small to large
Low-high
Source: Rudy Dekeyser, Managing director VIB, 30/10/2009, IFB Masterclass Biotechnology.
Existing company versus spin-off company (2/1)
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SPIN-OFF COMPANY EXISTING COMPANY
PRODUCT TYPE: - ORIGINALITY - ADDED VALUE
High High
Low-high
Small-high
SCIENTISTS - PROFILE - TT ATTITUDE
Leader
Very positive
Good-excellent Neutral-positive
RESEARCH PROGRAM Core Any
EFFORTS Very high Low-high
RISK Very high Low
LEGAL COMPLEXITY High Low
TIMING FIRST REVENUES Slow Fast
Source: Rudy Dekeyser, Managing director VIB, 30/10/2009, IFB Masterclass Biotechnology.
Sources of VC’ risks in a NTBF investment
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SOURCE OF RISK INTERNAL (I) OR EXTERNAL (E) RISK
MANAGEMENT RISK I
MARKET RISK E
TECHNOLOGY RISK E
PRICING RISK I/E
FINANCE RISK I/E
LIQUIDITY/EXIT RISK E
Source: European Communities - Gate 2 Growth (2002)
Assessing the financial soundness of the company
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For a spin-off company:
Business plan?
Financial plan?
For an existing company:
Solvency
Liquidity
Profitability
…
For both:
Development plan of the technology?
• Cohen, W.M. and D.A. Levinthal (1990). Absorptive Capacity: A New Perspective on Learning and Innovation. Administrative Science Quarterly, 35(1), pp.128-152.
Christensen, C. (03/11/2012). A Capitalist’s Dilemma, Whoever Wins on Tuesday. The New York Times.
European Communities – Gate 2 Growth (2002). A Guide to Financing Innovation.
Guellec, D. and B. van Pottelsberghe de la Potterie (2007). The economics of the European patent system : IP policy for innovation and competition. Oxford : Oxford University Press, 250 p. (ISBN : 9780199216987 ; 9780199292066 ; 0199216983)
Markides, C. C. (2012). How disruptive will innovations from emerging markets be? MIT Sloan Management Review, 54 (1), p.23.
Mullins, J. (2006). The New Business Road test. What entrepreneurs and executives should do before writing a business plan.
Peeters, C. and B. van Pottelsberghe de la Potterie (2007). Economic and management perspectives on intellectual property rights. Basingstoke [England] : New York : Palgrave Macmillan, 266 p. (ISBN: 9781403949639 , 1403949638)
References
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