The DTU patenting, licencing and
spin out support system
DTU Patent Course, January 14 2015
Preben Kjær Kristensen
Egil F. Hulgaard
AIS - Innovation
13-01-2015
AIS Innovation – organization, relations and roles
Director Sr. VP
Innovation and
Entrepreneurship
2
13.01.2015
Staff AIS Innovation January 2015
Innovation Manager - Helle Bunkenborg
Large customer - contracts
Business development teams
Department/center
Aqua
Biosustain
Byg
Cen
Compute
Danchip
Elektro
Energikonvertering
Food
Fotonik
Fysik
Kemi
Kemiteknik
Managing
Engineering
Maritimt center
Mekanik
Miljø
Nanotech
Nutech
Space
Systembiologi
Transport
Vet
Vind 3
Responsible
Rikke Westh Thon
Rikke Westh Thon
Rikke Westh Thon
Karsten
Svoldgaard
Preben Kristensen
Anne Vive
Preben Kristensen
Jesper Lundeman
Rikke Westh Thon
Jesper Lundeman
Mattias Dinnetz
Søren Hansen
Søren Hansen
Claus Andersen
Claus Andersen
Claus Andersen
Rikke Westh Thon
Egil Hulgaard
Rikke Westh Thon
Karsten
Svoldgaard
Rikke Westh Thon
Adam Hillestrøm
Rikke Westh Thon
Michael Lauridsen
Siemens AG
E-mail
(@dtu.dk)
rwet
rwet
rewt
Business Relations +
Skylab Team
Region Zeeland
(10,8 m DKK gap funding)
Jørgen Kejlberg
Christina Jespersen
kasvol
mdin
aviv
prkk
jehl
rwet
jehl
mdin
smh
smh
Jacob Ferdinand
Externally financed projects
Sannie Fisker
Copenhagen Cleantech Cluster
(16-18 m DKK gap funding)
Peter Falk
Pål S. Fernvall
---
Copenhagen Spin Out (1,5 m
DKK mini-PoC resources)
Proof-Of-Concept (approx. 6-7
m DKK /year)
Skylab team
cvoa
cvoa
cvoa
rwet
eghu
rwet
Patent- and project
administration
Krista Gammelgaard
Christina Philp
kasvol
rwet
adhi
rwet
milau
Anne Hornshøj
Student worker - TBA
20 employees
9,2-10,2 man-years externally
financed
= Appr. 9 man-years patent
administration/commercializatio
n outside of externally financed
projects, management,
innovation, development, etc.
1/13/2015
Our Mission
Patent
AIS Innovation
§
4
☺☺☺☺☺☺☺
☺☺☺☺☺☺
1/13/2015
Patents
• Exclusive right to commercially exploit an invention
– Time limited to 20 years from filing
– Must be published, available for anyone
– A right to exclude others from exploiting the invention
• No right to exercise invention itself
• What can be patented?
– Has to be novel
Patent
– Has to have an inventive step
– Has to be reproducible
– Must have industrial applications
• Important tool for commercialization
• Indirectly document that the invention is:
– New to the market
– Can be protected
– Has commercial potential
5
1/13/2015
Innovation at DTU
Increased innovation capacity and
societal impact
• DTU as source of more inventions and more
sustainable start ups
• Develop DTU’s approach to Corporate
Innovation in large Danish and international
companies and high-tech SME’s
• Increased focus on innovation and
entrepreneurship among students and
employees
6
Objectives
Objectives 2012-2014:
2012-2014:
400
400 reported
reported inventions
inventions
20
20 start
start up
up companies
companies
13-01-2015
AIS-Innovation
Broad perspective on innovation
• Technology-driven innovation
– Dealing with inventions and patents at DTU
– Development of commercialization projects aiming
at licencing of IPR and start up
• Market driven innovation
– One point of entrance for key accounts
– Create cooperation projects through large
externally funded projects and contracts
• Promoting innovation internally at DTU
• Support development of infrastructure like start up
house, test and demonstration facilities etc.
Frames
• 25 persons commercial/technological/IPR backgrounds
• 50% externally funded
2014
2014 figures
figures
152 reported
reported inventions
152
inventions
11,4
11,4 mill.
mill. DKK
DKK patent
patent and
and
software
software revenues
revenues (2013)
(2013)
400+
400+ patent
patent families
families
30+ start
start ups
30+
ups (9
(9 based
based on
on IPR)
IPR)
12
12 sales/licence
sales/licence agreements
agreements
(2013)
(2013)
Two
Two digit
digit million
million DKK
DKK GAP/PoC
GAP/PoC
funding
funding
7
13-01-2015
Statistics – invention disclosures per year DTU
The average
time from filing
a PCT
application to:
•entering an
agreement with
a company is
1,5 years
•returning the
patent to the
inventor is 2,4
years
8
13.01.2015
Statistics – invention disclosures by department, 2014
9
13.01.2015
The Patenting Process
• The inventors fill in an invention notification form and file it with AIS
– It is mandatory
– Must be agreed with - and signed by the department patent responsible
• AIS calls for a pre-meeting (inventors and patent responsible)
– Presentation and clarification regarding the invention
– Discussion about commercial potential
– Strategic importance for the institute
– Discussion about different commercialization options
• The invention is sent to a patent consultant for patentability
evaluation
– The inventors sign an NDA to prevent publication before filing the patent
application
– The patent consultant will typically call for a clarification meeting and a
few follow up calls
– Findings from the evaluation will be presented for commenting within 10
working days
• DTU evaluates if the invention will be taken over by DTU
– Must be approved by DTU management in collaboration with institute
– Decision must be announced no later than 2 months from filing
10
1/13/2015
DTU decides to take over the invention
• Requirements
– A patent with strong scope can be expected
– Must have an obvious commercial potential
– The invention must be beyond the idea stage and reasonably documented
– The inventors are committed to further develop and commercialize the
invention
• Implications
– DTU manages the patenting process and pays all associated costs (approx.
150-200.000 DKK for the first 3 years)
– DTU has an obligation to commercialize the invention
– Commercial income related to the patent (that exceeds the direct patenting
costs) are shared as:
• 1/3 to the inventors (personally), 1/3 to the department, 1/3 to DTU
• Process
– The patent application is written by the patent consultant and can typically
be filed 3 months after the notification of invention
– After that, the inventors are in principle free to publish their results
• A caveat here: what about updates to the patent application?
11
1/13/2015
Filing Process
•Important NOT to publish anything until the patent application is
filed – cf. updates!
•Papers may however be sent for review, instructing not to publish
until permission is granted
time
12
13-01-2015
DTU patent portfolio management system
13
Patent Portfolio Management
13.01.2015
Three categories of patents to structure the
yearly review
Partner
patents
Platform
patents
Application
patents
Purpose
Secure IPR in
partner projects
Secure technology
area with several
applications or
several individual
patents needed for
one application
Secure targeted
commercialization
of patents towards
one or more
application
Action
Follow partner
agreements
Action plan and
review
Action plan and
review
Commercialization
Licence or
sale to partner
Ownership by DTU
until application is
clear
Licence or sale to
start-up or existing
company
14
Patent Portfolio Management
13.01.2015
There are optional ways to drive action plan
quality and progress
15
Patent Portfolio Management
13.01.2015
DTU decides NOT to take over
• Implications
– DTU gives rights back to the inventors
– The inventors are free to publish results or to file a patent application
at their own expense (approx. DKK 200.000 for the first 3 years)
– DTU however still has he right to claim 1/3 of future income less
patenting costs!
• We have not yet seen cases where the inventors have proceeded with the
patenting process on their own
• Although DTU decides not to take over the invention we are trying to
make the process a positive experience for the inventors
– Inventors understand why.
– Inventors learned about patents and commercialization.
– Inventors come back with new inventions.
16
1/13/2015
Typical timeline for process once patent
filing is agreed on
• Patent application developed by the patent agent (with limited support
from the inventors)
– To be filed typically 3 months after notification of invention
• Usually filed in the EP -> Priority Date for all subsequent filings from
it
• To be filed in the PCT within one year -> Priority Year lapsing
– Pay out inventors fee (25.000 DKK shared between DTU employee
inventors – deducted in income)
• After 16 months first feedback from the PCT (ISR report)
• Possibility to challenge the findings until 22nd month (Demand)
• Published after 18 months – open to everyone! (cost to this point app.
150.000 DKK)
EESR Report
ISR Report
Demand
Months
0
EP&US
Application
16
6
22
12
18
30
PCT
Application
Publication
National Phase
17
1/13/2015
Timeline typical patenting process continued
• To be prosecuted or validated locally (nationally or regionally) after 30
months
– Country Selection – what countries are of interest (US, EP, CN/JP/KR)
– Rather expensive (Translations and local fees)
– Should attempt to dispose of/sell the patent before national phase
• Patent issued after prosecution in the individual countries – takes some
years
• Costs pr. country may exceed DKK 150.000++!
EESR Report
ISR Report
Demand
16
22
Months
0
EP&US
Application
18
6
12
18
PCT
Application
Publication
30
National Phase
1/13/2015
Commercialization efforts before, during and
after filing
• Commercialization meeting with inventors before, during and
after filing
– Action plan for commercialization
– Plan for further development of the technology
– Possible ways of financing
• Discussion about the interests of the inventors and departments
– Start-up potential
– Licence the patent to company
– Vehicle for research cooperation(!)
19
1/13/2015
Support Opportunities from AIS Innovation
• Assistance and consultancy in relation to applications and
business plans
• Establishment of contact to relevant external partners
• Negotiations on licencing and IP transfer agreements
– Contact to external lawyer – start-up advice package
• Support during the establishment phase
– Founder teams
– Project Pilots
– Mentors
– Investor pitches
• Raising Start-Up capital
– Pre seed grants
– Innovation incubators
• Seed Capital (DTU Symbion Capital), CAP-NOVA, Novo Seed,
Lundbeck Emerge, SDTI, Novi
– Early stage investors (Vækstfonden)
– Business angels
20
1/13/2015
Development of spinout
• Invention that has start-up potential
AND
• Inventors that have aspiration and the courage to participate
THEN
• The Business Developers from AIS Innovation may participate
more actively in supporting the inventors
– Ensure that public research funding is exploited in full to advance the
maturity of the invention as much as possible
– That is to a level where the effort no longer can be characterized as
research
• New sources of financing required
21
1/13/2015
Star Projects
What problem are we
trying to solve?
Do we have a clear
and realistic
understanding of how
we intend to solve
the problem?
IPR
Does our idea contain one or
more inventions?
Beware of maintaining the
novelty of the invention!
Solution
Partner/team
Who is to take the project to
the market? (existing
company, start up – team)
What about other
solutions?
Pain
Market
Do we see a clear problem?
Is any money released if we solve the
problem (new orders or clear savings)?
Who has presented us to the problem? (eg.
customer/user/expert)
Do we have contact with an industry insider
eg. a potential customer, a potential
manufacturer or an industry specialist?
Do we have a clear and realistic understanding of
the problem?
Funding
22
Where do we get the funding to develop the project
further? – technologically, commercially etc.
Death Valley
Invention
Incubation
Startup
Growth
Liquidity
Available capital
Risk
Idea
60%
45%
35%
25%
18%
A
”Death Valley”
Public money
B
Angels
12%
C
VC Funds
Stock
market
PE Funds
Banks
7
23
Claus Jørgen Nielsen
13.01.2015
Bridging the Death Valley
Proof of concept funding
Invention
Incubation
Startup
Growth
Liquidity
Available capital
Risk
Idea
POC
60%
45%
35%
25%
18%
12%
A
Public money
•
•
•
•
24
”Death Valley”
Angels
B
VC Funds
C
PE Funds
Banks
Stock
market
Novel DTU PoC fund for commercial maturing, technically already proven
Market research, commercial potential, proof of business
Inventors, External Consultants and Business Developers
Structured process
– Mini Business plan
– Selected by external review panel
13.01.2015
Bridging the Death Valley
Support Programs/Copenhagen Spin Outs
Invention
Incubation
Startup
Growth
Liquidity
Available capital
Risk
Idea
CSO
POC
60%
45%
35%
25%
18%
A
Public money
”Death Valley”
Angels
B
VC Funds
12%
C
PE Funds
Banks
Stock
market
• Various support programs to promote and assist start-up
companies
• Biobusiness and Innovation Program, Accelerace BIO,CPH Spin-out,
Copenhagen Cleantech Cluster, Medico Innovation, Region Sjælland
• Broad range of support programs offered:
• Education, Training, Mentors, Project Pilots
25
Claus Jørgen Nielsen
13.01.2015
Commercialization of inventions – traditional spin-out
model
– An invention disclosure becomes a commercialization project
– The commercialization project is matured to a level where it becomes
interesting for third parties
– A founder team shows interest in the commercialization project and
takes over commercialization (writing business plan etc)
– Investor is brought into the process and negotiation between founder
team, DTU and investor is initiated
– The founder team establishes a new company and DTU licence IPR to
the company
26
13.01.2015
Types of spin-outs
27
13.01.2015
Start-up companies with
DTU-owned IP from 2014
Innoneo Holding ApS
DTU Vindenergi
Hip support, HipStop, for hip surgery patients with risk of dislocating the hip
Sensitivus ApS
DTU Fotonik
Power sensor til bicycle pedal arm
TRD Surfaces ApS
DTU Mekanik
Extremely hard and wear-resistant steel surfaces
RenCat ApS
DTU Fysik
Catalystic-based processor that converts liquid ammonium to pure hydrogen that can be used for
fuel in PEM fuel cells
Sprinklr A/S
DTU Kemi
Granulate dissolved in water to form sprinkler liquid for wind shields
Nordic Power Converters IVS
DTU Elektro
Power converter that is a lot more compact and has better performance and lifespan than
traditional ones
Norlase ApS
DTU Fotonik
High-effect visible laser sources that are robust, cheap and compact
Fluidan ApS
DTU Nanotech
Rheological technologi for flow celler for in-line measurement of liquids (for example foods)
viscuous properties
Dacofi Holding ApS
DTU Food
Compact filter unit for example for use with beer brewing
Rheo Filaments ApS
DTU Kemiteknik
Instruments for measurement of extensional rheological properties on polymer solutions
28
13.01.2015
CASE
Innoneo Holding ApS
DTU Vindenergi
Hip support, HipStop, for hip surgery patients with risk of dislocating the hip
Sensitivus ApS
DTU Fotonik
Power sensor til bicycle pedal arm
TRD Surfaces ApS
DTU Mekanik
Extremely hard and wear-resistant steel surfaces
RenCat ApS
DTU Fysik
Catalystic-based processor that converts liquid ammonium to pure hydrogen that can be used for fuel in PEM fuel cells
Sprinklr A/S
DTU Kemi
Granulate dissolved in water to form sprinkler liquid for wind shields
Nordic Power Converters IVS
Power converter that is a lot more compact and has better
performance and lifespan than traditional ones
Norlase ApS
DTU Fotonik
High-effect visible laser sources that are roubus, cheap and compact
Fluidan ApS
DTU Nanotech
Rheological technologi for flow celler for in-line measuremnt of liquids (for example foods) viscuous properties
Dacofi Holding ApS
DTU Food
Compact filter unit for example for use with beer brewing ølbrygning
Rheo Filaments ApS
DTU Kemiteknik
Instruments for measurement of extensional reologiske properties on polymer solutions
29
13.01.2015
The story of a spin-out – or how I
learned to stop worrying and love
agreements
30
Power converters everywhere
9 billion
1.3
billion
2.5 billion
units/yr
by 2020
units/yr
units/yr
CONFIDENTIAL
31
10 years
Product example
20W power converter
92 %
3
$ 0.9
3
3
6 years
Lifetime 2 years 3
Efficiency
85 % 2
Cost
$ 3.2 1
Size
Weight 33 cm3 1
53 g
86 %
1
$ 1.6
1
7 cm3
11 g
3
3
cm3 3
5g
3
1
1
1
NPC (2015)
(fs ≈ 80 MHz)
Incumbent
(fs ≈ 150 kHz)
NPC (2014 H1)
(fs ≈ 50 MHz)
based on prototypes
according to datasheet
3 qualified estimation
1
2
CONFIDENTIAL
32
Title
• A fifth inventor made parts of his Ph.D. at another
company active within the area – and a future
competitor
• His – and the whole depatrment’s - research within the
Field (and it is wide) should be offered to his competitor
first – so no licencing to others
• The competitor accepted that the licencing requirement
only applied to the timespan where the Ph.D. work is
taking place at the competitor
• DTU can now start licencing the rights that have been
received before the start of the Pd.D. project (and after)
33
Negotiations
• Two strong parties and a mediator
• Royalty or equity model?
• Royalty free, exclusive licence with infinte Field
• Ownership size – very different opinions
• Call option: Spin-out can buy DTU’s patent filings
– At early exit, higher compensation to DTU (”the value
is in the patent filings”)
• Length of Board representation
• IPR transfer to spin-out
• Licence to IPR developed after signing of agreement?
34
Term sheet agreed on –
now to all the agreements
(licence agreement, ownership
agreement, transfer agreement,
assignment on patent assignment
agreement
35
Backup
36
13.01.2015
Spinouts from DTU in 2013
Nanovi Radiotherapy ApS
DTU Nanotech
• Cancer marker for improvement of radiation therapy
Light Extraction ApS
DTU Fotonik
• Technology to improve the output from LED’s
Silmeco ApS
DTU Nanotech
• Produces and sell nanostructure SERS-substrates
Saxocon ApS
DTU Food
• Computer assisted toxicological analysis of chemical compounds such
as drug candidates
IRSEE ApS
DTU Fotonik
• Technology to create images from the non-visible infrared spectre
EyeCular Technologies ApS
DTU Byg
• Improves the effect of sunheaters
DENCRYPT ApS
DTU Compute
• Encryption technology to enable secure mobile conversations on
standard smart phones
Innochem ApS
(non IP-based)
DTU Kemi
• Consulting company within advance chemical technology
DACOFI II
Hip Stop
Sensitivus Bike
Inferability
37
NorLase