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COMMERCIALIZING R&D IN THE PUBLIC SECTOR: PERSPECTIVES ON ACADEMIC-INDUSTRY TECHNOLOGY TRANSFER
Bob StembridgePrinicipal Patent Analyst
Thomson Reuters IP & Science
AGENDA
• The research and innovation cycle• The role of IP in commercialization• Technology transfer
– Process– Steps– Challenges
• Strategies• Case study• Discussion
Significant innovations that have originated from academic research
WHAT DO THE FOLLOWING INNOVATIONS HAVE IN COMMON?
Gene splicing in biotech industry
Internet search engine
Imaging bundles in fibre optic networks
Stanford University and University of California
Stanford University
Imperial College and Technical University of Delft
THE RESEARCH & INNOVATION CYCLE
Basic Research
Applied Research
Innovation / Protection / Exploitation
Patents
Wealth
THE ROLE OF PATENTS
Research &Innovation
Application &Prosecution
Maintenance &MonitoringLicensing &
Commercialization
Protection &Assertion
COMMERCIAL RETURN ON INVESTMENT
A patent is a contract between the state and an individual whereby the state grants monopoly rights to the individual to exploit their invention in return for which the individual provides full disclosure of the invention
TECHNOLOGY TRANSFER• The process of transferring
laboratory findings to the marketplace through:– Licensing agreements– Joint ventures– Partnerships– Spin offs
STEPS• Research• Evaluation about the commercial potential of the invention• Assessment with the researchers• IP protection• Marketing• Licensing / Spin-off company creation• Product development and commercialization by one or more
licensees• Revenue generation by one or more licensees
These steps may vary in sequence and often occur simultaneously
SOME COMMON CHALLENGES• What does the market want? • How do I attract more industry funding? • Which R&D project should I invest in? • How can I create more licenses and spin-offs? • How can I measure the success of technology
transfer more accurately? • How do I motivate my researchers to do more
applied research? • How do I value my Intellectual Property (IP)?
Technology Transfer is a long and risky process and requires significant time and investment
THE TECHNOLOGY TRANSFER FRAMEWORK
WORKFLOW
RESOURCES
TALENT
MARKET IMPACT
Meeting the market need is key!
STRATEGIES FOR SUCCESS• Frame the R&D project as a marketing challenge
– Research projects are usually viewed as a scientific or technology challenge. Successful technology transfer depends on identifying and satisfying a market need
• Early in the R&D Cycle:– Understand your target market’s needs– Understand and navigate the IP landscape
• Throughout the R&D Cycle:– Constantly monitor the market and IP landscape and adapt your R&D
strategy
• Use necessary tools and databases to understand the market
DECISION SUPPORT TOOLS: THOMSON INNOVATION
PREMIER IP RESEARCH & ANALYSIS SOLUTION
Patent Search: Access the most relevant and comprehensive, global IP data, including the Derwent World Patents Index®, Asia-Pacific patents and Scientific Literature. Streamline your work with powerful productivity and collaboration tools.
Patent Analysis: Turn large volumes of data into actionable intelligence with interactive analysis and visualization tools.
DERIVING INFORMATION FROM PATENT DOCUMENTS
Patent data – a valuable resource to support business decisions
THE THEMESCAPE ANALYTICAL AND VISUALIZATION TOOL
ThemeScape Map • Integrates data from multiple patent records in a visual form • Uncover relationships between patent documents and helps focus on related technology in a crowded space
ThemeScape Map allows you to understand quickly the patent landscape and market dynamics
MAPPING YOUR RESEARCH TO THE MARKET PLACE
• Use ThemeScape Map to understand your target market in the following 4 ways: – Patent landscape: understand how
your patents fit in the overall landscape compared to your competitors
– Forward citations: use citations to understand downstream R&D Activity and search for potential licensees
– Research collaborations: gain insights into who your industry partners are collaborating with and on what
– Portfolio Management Tool: cluster your patents and discover new industry applications
PATENT LANDSCAPE FOR EXOSKELETONS
RAYTHEON CO
UNIV DELAWARE
BERKELEY BIONICS
ARGO MEDICAL TECHNOLOGIES LTD
HONDA MOTOR CO LTD
0 10 20 30 40 50
Exoskeleton inventions
FORWARD CITATIONS HELP IDENTIFY DOWNSTREAM R&D ACTIVITY AND POTENTIAL LICENSEES
• Impact via Citation: – Self-Citations claim priority
or measure follow-on R&D– Cites from external sources
measure competitive interest
– Cites from examiners may reflect closeness of the art
Forward citations provide an indication of downstream R&D activity by industry players and how the market has adopted your research
EXAMPLE OF A UNIVERSITY PATENT FORWARD CITATION
First level citations
Second level citations
Third level citations
Use citation maps to identify different citers and their downstream activities
FIRST AND SECOND GENERATION FORWARD CITATIONS
ThemeScape Map can be used to cluster forward citations to understand downstream R&D Activities
RESEARCH COLLABORATIONS: COMPETITIVE INSIGHTS INTO INDUSTRY PARTNERS’ COLLABORATION ACTIVITIES
• Research collaborations with private corporations are important engagement points for Universities:√ IP Commercialization (for Pre- and Post-Collaboration IP)√ Learning from the Corporation√ Branding√ Industry Revenue√ Economic Benefit
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COMPETITIVE INSIGHTS INTO INDUSTRY PARTNERS’ COLLABORATION ACTIVITIES
• Engaging Industry Partners √ Publish Strategically √ Develop Key Account Managers √ Study Your Industry Partner’s Roadmaps √ Understanding who and what your Target Industry
Partners are working
CONCLUSIONS• Commercialization is a long and risky process and requires
significant investments in talent, resources and workflow processes• A key to crossing the “Valley of Death” to successful
commercialization is understanding the market needs and competitive landscape
• Thomson Innovation and the ThemeScape Map are useful tools to understand the market dynamics and patent landscape
• There are four different techniques available. This allows R&D to be more “structured” and enhances commercialization opportunities