Principles of Technology Commercialisation
Dr Richard OldroydChartered (UK) Patent Attorney
European Patent Attorney
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Overview
• European legislative landscape (energy)
• Investment / value / risk profile
Wh d i t t f• Where does investment come from
• Sources / protection of valueSources / protection of value
• Summary and further considerations
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European Legislative Landscape
“Th it f i t l li i d i d b d l i i t t d“The security of internal energy supplies is undermined by delays in investments and
technological progress. Currently, nearly 45% of European electricity generation is based on low-
carbon energy sources, mainly nuclear and hydropower. Parts of the EU could lose more than a
third of their generation capacity by 2020 because of the limited life-time of these installations.
This means replacing and expanding existing capacities, finding secure non-fossil fuel
alternatives, adapting networks to renewable energy sources and achieving a truly integrated , p g gy g y g
internal energy market. At the same time Member States still need to phase out environmentally
harmful subsidies.”
COM/2010/0639 – Communication from the Commission to the European Parliament, The Council, The European Economic and Social Committee and the Committee of the Regions“Energy 2020 A strategy for competitive, sustainable and secure energy”
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EU Energy-Related Legislation
Regulations1099/2008 On energy statistics (as amended by 147/2013)1099/2008 On energy statistics (as amended by 147/2013)
663/2009 Establishing a programme to aid economic recovery by granting Community financial assistance to projects in the field of energy.
1227/2011 On wholesale energy market integrity and transparency1227/2011 On wholesale energy market integrity and transparency
256/2014 Concerning the notification to the Commission of investment projects in energy infrastructure with the European Union
Di tiDirectives
2009/28 On the promotion of the use of energy from renewable sources
2009/33 On the promotion of clean and energy-efficient road transport vehicles
2009/125 Establishing a framework for the setting of ecodesign requirements for energy-related products
2010/30 On the indication by labelling and standard product information on the consumption of energy and other resources by energy-related products
2010/31 On the energy performance of buildings
2012/27 On energy efficiency
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Relevance
• Active promotion of renewable energy to achieve 2020 targets
• EU funding and financing initiatives− European Energy Programme for Recovery− European Energy Efficiency Fund− Connecting Europe Facility− Horizon 2020− NER300− European Regional Development Fundu opea eg o a e e op e t u d− European Investment Bank− Financing Energy Efficiency schemes− Financing local sustainable energy schemes
• Also UK− Green investment bank
R i l th f d− Regional growth fund− Technology Strategy Board− Energy Technologies Institute
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Investment/Value/Risk Profile
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CONCEPT MARKETVALIDATION / TRIAL / MARKETCONCEPT MARKETPROTOTYPE
TRIAL / MARKET EVALUATION
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Investor’s Perspective
• Later Investment– Increased certainty, and reduced risk to investment
BUT l i hi h l h £/€/$– BUT value is higher – less share per £/€/$
• Earlier investment– Less certainty of success– Higher risk– BUT lower value– More share per £/€/$
Diff t f di /i t t d l t diff t t• Different funding/investment models at different stages of development
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Where does investment come from?
• Banks– Risk averse– Want defined exit after short-term (~5 years)– Generally late stage
• Venture Capitalists / Angel Investors– Arguably less risk averse– But still want planned exit
Early to mid stage want protection from competition– Early to mid stage – want protection from competition
• “Practising” Companies– Funding joint developmentFunding, joint development– Formation of spin out company/JV– Want control/access to arising IP
• Government subsidies / grants– EU (e.g. Framework Programs)– UK (e.g. Technology Strategy Board)
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How far should I take it?
• When to ExitWhen to Exit– When to capture fruits of investment– Early – take money and move on – let someone else take it further– Late – keep seeking funding/partners for further development to increase valueLate keep seeking funding/partners for further development to increase value
• How best to move forward– How many other players in market? - Is it a new technology area?How many other players in market? Is it a new technology area?– How can you compete – is someone else better placed?– What is the potential?
• Government/EU funds– Often facilitate collaborative research (e.g. FP7 or Horizon 2020)
• licence your “background” IP• share in resulting IP
– Large grants potentially available in strategically important technical areas– Expands your profile/network of potential partners
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Thoughts to keep in mind
1. You don’t have to take your technology all the way to market launchlaunch.
2. Just because you can’t take your technology “all the way”2. Just because you can t take your technology all the way doesn’t mean there isn’t value.
3. Aspire to achieve the long-term goals. However, consider capturing/locking-in value earlier – don’t try and go beyond your capabilities.y p
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Sources and Protection of Value
• Where does value in academic research lie?− With you!− Your ideas− Your expertise
• How do you capture this value?− Spotting potential uses (even medium to long term) of your technologySpott g pote t a uses (e e ed u to o g te ) o you tec o ogy− Speak with your technology transfer unit or coordinator− Consider whether you should wait a little before publishing your work
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Publish and be Damned?
• Seemingly simple acts can reduce/destroy the value of your IP.Any publication or open presentation– Any publication or open presentation
– Discussing with anyone without obligation of confidence– Grant proposals (check with funding body)
• Consequences– Information is no longer secret – in the “public domain”– Anyone can freely use information/inventions in the public domain– Anyone can freely use information/inventions in the public domain.– Value is lost
• BUT I’m an Academic - I NEED TO PUBLISH !!!BUT I m an Academic - I NEED TO PUBLISH !!!– Publication doesn’t have to be sacrificed, just delayed– Patents are published– Awareness of IP protection/value demonstrates business acumen - more attractive toAwareness of IP protection/value demonstrates business acumen more attractive to
investors/commercial partners– Can provide further avenues for funding
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Maintaining Value – Maintaining Options
• Confidentiality Agreements– Obliges others not to disclose/misuse your information
– Maintains legal protection – remedy against breach/damages
– Remedies regarding patent applications in case of breach
• Delay publications/presentations– Keeps your options openKeeps your options open
– Prevents destroying value before full assessment
– Maintains option to file patent applications
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Intellectual Property – Your Assets
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Your Knowledge – Intellectual Assets
• Confidential Information / Trade Secrets / Know-How– Information/knowledge that is not in the public domain– Undisclosed, or disclosed to others in confidence– Perpetual as long as confidentiality maintained
• Registered Rights– Patents / Utility Models / Plant Variety Rights / Integrated Circuit Topography– Limited term monopoly in return for disclosure– Fees payable – formal examination
• Other Rights– Copyright (computer programs)– Database rights– Clinical Trial / Regulatory Data
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Advantages/Disadvantages
• Confidential Information / Know-how+ Perpetual – if confidentiality maintained+ No formalities/registration required+ No formalities/registration required
– “leakage” – employee turnover risks loss of control– Vulnerable if independently developed and patented by others
• Patents (and other registrable IP rights)+ Can prevent others using your invention/plant variety
f+ Legally enforceable – injunction, damages+ Documented record of your invention/technology
– Limited termE i ( ffi i l d Att f )– Expensive (official and Attorney fees)
– Granted rights not guaranteed• examination process – opposition/revocation actions • invention has to be new, not obvious, capable of utility, sufficiently described
More valuable than freely disclosed and publicly available information.
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Summary
• Ideas/results/research/software can be of immense potential benefit• Ideas/results/research/software can be of immense potential benefit
• A variety ways of developing further and seeking investment
• Crucial to take certain steps to avoid destroying value– Don’t publish too early
f– Keep control of your intellectual property
• Protect your IP in crucial technical areas that have commercial potential– File for registered IP rights, e.g. patents– Control disclosure and ownership
• Liaise with your Technology Transfer Department
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Recommendations
• Don’t publish yet!• Don t publish yet!
• Speak with Tech. Transfer team first.
• Assess commercial potential.
• If no commercial potential, then publish!
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Finally…
Th k f li t iThank you for listening
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