Entrepreneurial Universities:Integrating Perspectives on Law and Business with Innovation

JoAnna M. EstyMajesty Law Group PLC

Background

IP Development and Technology Transfer:

Commercialization IssuesIntegrating R&D and business strategyGrowing businesses through innovationTechnology transition to commercial markets

Issue Focus …• The issues are not purely technology

related.

• The major issues are all at the intersection of technology, law, and business.

• There is a need to develop an awareness

of innovation processes particularly as they relate to the business and legal activities necessary to commercialize new technology and to build skills that will help new technologies succeed.

Model for Technology Transfer

Administration & Organization & Coordination Operation

Private Sector

R & D Institutions

Business Entities

What About Commercialization of Government-Funded

Inventions?It was all tied up ….

Government-Funded InventionsThe Bayh Dole Act of 1980

Before: Government-funded research belonged to the governmentAfter: The patent as the research result now belongs to the University

Model for Technology Transfer

Administration & Organization & Coordination Operation

Universities and Government Funded Institutions under Bayh Dole

Universities Business Entities

Model for Technology Transfer

Administration & Organization & Coordination Operation

Private Sector

R & D Institutions

Business Entities

Model for Technology Transfer

Administration & Organization & Coordination Operation

Universities under Russian Decree 217

Universities Business Entities

Model for Technology Transfer

Administration & Organization & Coordination Operation

Universities under Russian Decree 217

Universities Business Entities

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Strategic Issue

– Technology Assessment– Cultural Conditioning– Ownership

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Technology Assessment

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Why is it Necessary?

Limited Resources

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Technology from Private R&D or Universities

transitions to … Business Entities

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Even with Accelerators and Incubators

There are never enough resources

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Best Practices: Optimize Technology Choices before Transition and Monetization

Limited Resources: Funding, Human Assets, Capital

Assets

X

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Implementation: the beginning …

R.O.I. vs. R.O.I.?

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R Report

O On

I Invention

Report on Invention, Technology Assessment, Commercial Analysis• Technology Protection: Patentability• Freedom to Operate: Freedom to

Market, Product or Process Clearance• Market Analysis: Revenue Model,

Valuation, R.O.I. (Return on Investment) R.O.I

Technology Protection: Patentability1. Is it Protectable at all? - Non-enabled (inadequately described),

Unproven (not reduced to practice), - Unpatentable (anticipated, obvious) (Prior Art

Search)2. Where is it protectable? Countries3. Scope of Protection? Unprotectable (too narrow, use undectable), Design arounds

4. Cost of Protection?

Freedom to Operate: Clearance

1. Are there blocking patents or other blocking intellectual property rights?2. Are there intellectual property rights that have not been acquired and are necessary for commercialization?

Marketability Analysis• Market size• Market location• Market characterization (e.g., new,

emerging, mature, dynamic)• Market exclusivity and barriers to entry• Technology life• Revenue model

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Report on Invention

Reasons to do Early (IP Selection, Partner ID)

Cost?

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Cultural Conditioning

TeamworkAcceptance of FailureRisk Tolerance

Science Engr. Mgmt. Law

Partnerships for Learning

Technology Entrepreneurship

ProjectTeam

Business and Management

Law

Science and Engineering

Goals• Produce individuals with

multidisciplinary skills and entrepreneurial perspective needed to succeed in innovation-related careerso Scientists and engineers aware of

business and legal issueso Management and legal experienced

in technical research settingo Communication and team skills

• Produce R&D development results of technical merit and market relevance

• Produce research in management, law and economics that improves understanding of innovation

Implementing Technology Commercialization Procedures:

Beyond R.O.I.

• Setting up the entity• Drafting NewCo agreements• Advising regarding newly developed

technologies• Evaluating new partnerships• Preparing for audits and liquidity event• Complying with due diligence best practices

 

OwnershipInventionsLicensesStock

Thank you!