Technology Licensing
SMBR and Walkinsense
Iberian Universities technology transfer conference
29th November 2010, Ayamonte
University of Porto
2,270
Teaching staff
Researchers
Faculties: 14
Business School: 1
Libraries: 30
1,700
Technical and
Administrative Staff
Museums: 12
28,900
Students
R&D units: 69
Independent Associated Institutes: 7
University of Porto Innovation
Funded in 2004, as the U.Porto
Knowledge Transfer Office.
Staff: 8
Promote sustainable forms of knowledge and technology
transfer and strengthen U.Porto links to industry
© 2008 Maria M. Oliveira
University of Porto Innovation
R&D funding
programmes
- Search and
dissemination of R&D
international funding
opportunities
- Support in proposal
drafting
- Project management
R&D results valorisation
and entrepreneurship
-Management of Intellectual
property rights
- Technology transfer
- Entrepreneurship
programmes
- Support spin-off creation
Industry-University
liaison
- Scanning of R&D
results & skills
- Identify industry R&D
& innovation needs;
- Serve as liaison with
Industry
Examples of activities
1
1. IP Regulation
2. Technology offers Book
3. Entrepreneurship training
4. UPIN website
5. Researchers night
2
4
3
3
http://upin.up.pt/
3
5
Simulated Moving Bed Reactor
Framework:
Technology: process for production of a green additive;
Status: laboratory prototype fully operational;
IP: Portuguese and European patent granted; extensions to 10 European
countries, USA and Brazil;
Inventors: excellent reputation and cooperative;
Company: Ethanol producer. It wanted to produce biodiesel;
Time Period: started late 2006.
Simulated Moving Bed Reactor
Negotiation Issues:
Company interest in the technology;
Potential for market introduction;
Technology scaling up;
Ownership of future IP;
Non-monetary terms (legal and technical).
Simulated Moving Bed Reactor
Agreement on:
No agreement on other terms:
Milestones
Governing law for disputes
Performance
Up front payment
Future IP ownership
Inventors collaboration
Licensing with R&D collaboration
vs.
R&D collaboration with licensing
Infringement
R&D consultancy payment
Simulated Moving Bed Reactor
Dead end...
Market potential was consider huge;
Technology presented a very interesting concept
BUT
High investment needed to introduce technology;
Large expenses in order to conquer authorities and car industry;
Company’s financial distress and downsizing;
...after 2 years of negotiation
Simulated Moving Bed Reactor
Lessons:
Do not lose momentum in negotiations
Creativity and flexibility in negotiations
Inventors have a decisive opinion but should not head negotiations
Look for other potential companies at the same time
Presently:
Technology is in the market for licensing
Contract with oil company to test additive in diesel motors
Other oil companies are curious about technology
Licensing to spin-offs?
Who are they?
Track record in academia? Track record in industry?
Will they be able to…?
raise funds, recruit, invest in further research, manufacturing,
marketing and sales….
How will this work?
How to reach a win-win deal? Will they sponsor research? When
will we see any return…
Chronology of a license
2008
2007
2004-06
2009
2010
Tomorrow Options and U.Porto
Since their creation they:
Hired students
Engaged in further R&D contracts
Are located in our science park
Accept to speak at conferences and classes
Received future entrepreneurs for training
And...are
paying royalties;)
Wrap up
Good patentable science is not always commercially relevant
Communicating a Value Proposition that reflects tangible results is
difficult
Technology offerings are generally early stage
Subject to large amount of risk from several sources (scientific,
financial and regulatory)
Often cannot show samples or prototypes
Patience and persistence are needed skills
and a little luck certainly won’t hurt.
:::
Thank you
afernandes@reit.up.pt
http://upin.up.pt/
T: +351 220 408 032
Praça Gomes Teixeira
4099-002 Porto
Portugal