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

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Content

• Pathways

• Factors

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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

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Factors

• Patents

• Innovation

• Technology

• Product

• Revenue

• Value

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Patent-product-value

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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.

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.

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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.

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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).

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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

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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.

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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.

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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.

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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.

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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.

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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.

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issues

• Trade secret dispute

• Licensing improved technology

• Know-how protection

• IP bundling

• Winning grants

• Getting VC funds

• Forming team

• Commercialisation

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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.

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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.

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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

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

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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

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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)

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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.

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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.

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Issues

• Long road map from lab scale to commercial product.

• Need for network support at every stage.

• Different partners at every stage

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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

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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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IP and Open Innovation

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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)

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Idea competitions

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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.

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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.

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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.

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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.

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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.

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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.

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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.

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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.

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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.

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Questions/ comments?

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