technology transfer · • 90% of inventions received are assigned to aau • 10-30 % of inventions...
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Aalborg Universitet
TECHNOLOGY TRANSFER
PETER RASMUSSEN
HEAD OF TECHNOLOGY TRANSFER AT AALBORG UNIVERSITY.
Protecting AAU inventions and bringing them to market!
Aalborg Universitet
How research is utilized at AAU
• Research at AAU shall be made available to as many people as possible, so research
can provide the highest possible value and benefit to society.
• Through
• Education of young minds, which intrinsically has knowledge about the
newest research, and which can form the basis for innovation in the companies
around us
• Research at AAU or in cooperation with industry, government, universities.
• Open Access – to all Publications from AAU via: http://vbn.aau.dk
• Dissemination through
• Media & Conferences
• Matchmaking (http://match.aau.dk),
• Network activities (http://match.aau.dk/Netværk), and
• Technology Transfer: Spinouts, sales & licensing of inventions from AAU
(http://www.patent.aau.dk).
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Research & Technology Transfer
• AAU cooperates closely with companies, public authorities and other research
institutions, investing in
• Basic research,
• Applied research, and
• Commercialization of inventions at AAU,
• which secure that the research results in products,
• which are beneficial for society, and
• Become the foundation for new companies, and
• Create new jobs and financial development.
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Law of inventions made at public research institutions (law 347, 1999)
• ”§1. Purpose – to secure that research results generated through public funding is
utilized for the good of society, through utilization in industry.”
• The law means that universities, sector research institutions and hospitals are
obligated to work with commercialization of patentable inventions from research.
• Who owns the rights to inventions are technically defined by the law.
• The law means that:
• Employees are obligated to report inventions and AAU can take over the
rights to the employees inventions, and enter into agreement with
private industry regarding spinout, sales and licensing
of patentable inventions.
• In return, the employees who made the inventions
shall have their share in the potential financial returns.
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Technology Transfer Organisation
• The Danish Law on Inventions from Public Research Organizations', state that
• Rector has the decision power
• At AAU, the Faculty Director,
has been nominated by Rector, to
have the decision power on
Technology Transfer in practice.
• The Technology Transfer Office,
has been set up to handle
all inventions disclosed by
AAU employees, reporting to
the Faculty Director.
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Typical forms of Technology Transfer
• Spin-out
• IPR Sales
• Licensing
Sales / Licensing are logically the most effective way to utilize research and
new technologies, as established companies already has the necessary assets
and expertise to turn inventions into real products on the market.
Spin-out often happens, when you have no other options, or the technology is
ground-breaking, is widely applicable (platform), etc.
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AAU commercialization in numbers
• Active Invention Portfolio = 92 (Dec 2011)
• Number of invention disclosures pr. year 40-60
• 90% of inventions received are assigned to AAU
• 10-30 % of inventions are patented by AAU
• 20-35 AAU inventions are sold pr. year
• License agreements approx. 4 pr. year
• Spinouts 1-4 pr. Year,
• Spinout portfolio = 13 (Dec. 2011)
Acarix A/S AlpCon
IFXa A/S TKS A/S
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Historically inventions at AAU have typically come from
Energy
Medical Technology
Chemistry & Biochemistry
ICT
Engineering
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3. What we do…
The Commercialisation Process @ AAU
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Invention Disclosure
First meeting with Inventor(s)
Novelty search (Patentability)
Commercial Potential
Evaluation and formulation of
the Commercialization Strategy Presentation &
Nomination
Receive AAU Rights Decision: - Assignment of rights.
- Return rights to inventors.
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Invention
Inventor resources
• Is it Core Research?
• Can/will Inventors help
move the invention to
market together with
AAU?
• Is funding Available /
Necessary?
• Does inventors need to
publish?
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Aalborg Universitet
PATENTING
- ONLY WHEN REQUIRED
Protecting inventions as a mean to commercialize
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Patenting is costly AND accelerate over time
50-120 K ?? K 30-80 K ?? K ?? K ?? K 100-200 K per
country
Source: Graph: Ploughmann & Vingtoft, Costs AAU
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Patenting - Protecting inventions as a mean to commercialize
• Facts:
• Patenting is only initiated on 10-30% of all Invention Disclosures received by AAU.
• At the present time, AAU owns issued patents on only 4 inventions.
• Patenting induces time pressure to commercialize!!!
• Deadline at 12 and 30 months after submission
• The patent application can be updated with in the first year (priority year), but
ONLY as long as novelty is maintained.
• Thus, progress is essential in the first year
• Novelty is destroyed by publication, making patenting impossible
• Patenting is thus not a goal for AAU, only a mean to commercialize!
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Why does AAU patent inventions?
• The invention has high commercial potential,
• The invention can be
• Exploited by multiple companies through licenses,
• Used for spin-out
• And/or:
• Necessary to commercialize the invention, because
• Some companies only wish to evaluate IPR, which is patented
• The research team has an ultimate requirement to publish results, or
• Funding is necessary to move the invention closer to market
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Why sell inventions before patenting?
• Inventions are often sold to companies w/o filing a patent, because the invention
• Have been generated in research collaboration, where the company is the natural
customer.
• Is incremental in relation to an existing product in the market
• Has a very narrow focus, which only makes it interesting for a specific company
• NDA’s are often used here to establish collaboration with an Industrial partner
• Find standard NDAs’ at www.kontraktenheden.aau.dk
• In some cases cost of patenting is too high compared to potential future financial gain.
• In addition, companies generally prefer to own, rather than license.
Or would like to be part of the patent process to optimize their market potential.
• And - AAU can free up resources to commercialize even more inventions!
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NEW European Patent?
• Impact
• SMV’s
• Commercial use of IPR
• Challenges with Freedom to operate
• Danish companies file EP, US or PCT today
• Change in IPR culture
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HOW HARD CAN IT BE?
Example - Patenting & Commercializing an invention at AAU
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Aalborg Universitet
Braking system for deorbit of satellites in LEO orbit
• Aero-Dynamic Drag System – works up to 1.000 km above earth.
• Factor 10-100 area increase at deployment!
• Satellite Deorbit reached withing max 1 year
SatelliteSatellite
Frame in stowed position Fully-deployed
Satellite
Top-view with wind direction
speed
wind
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ACOUSTIC DETECTION OF CORONARY ARTERY DISEASES
CORONARY ARTERY DISEASE
(CAD) IS A HEART DISEASE
WHERE A STENOSIS IN THE
CORONARY ARTERIES LIMITS
BLOOD FLOW TO THE
HEART MUSCLES.
Aalborg Universitet