Licensing technology out of a university

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Transcript Licensing technology out of a university

University Licensing
Dominique Kleyn
27th June 2003
Overview of Innovations
• Technology transfer arm of Imperial
• Aim to maximise the value returned to
Imperial from the commercialisation of
intellectual assets and to support the
attraction and retention of quality
academic staff
• Transparent and equitable process to
make money for the College and
reward inventors
Experience & Diversity
• Working with 150 inventions per year
• Filing 1 new patent per week
• Extensive industrial experience
• Established licensing and spin-out
• Interdisciplinary working
Successes at Imperial
• Drug development eg Remicade,
Temezolamide, Malavone
• Spin-out listing eg Turbogenset
• Portfolio sale eg Fleming
• Seed funding eg University Challenge
• Co-investment eg Nikko
Early years
• DTI headcount support (£750k)
• Create Company Maker, establish spinout process, build support networks
• University Challenge Seed Fund (£4m)
• 2 tier investments, external advisory
committee, rigorous assessment process
• Science Enterprise Challenge (£2m)
• Entrepreneurship Centre established,
entrepreneurs programme introduced
Period of growth
• Rapid formation of spin-outs
• Rapid growth of Innovations team
• increases from 5 to 25 FTE
• New finance initiatives
• NIKKO – extending UCSF
• Fleming – realising equity
• Paul Capital - royalty sale
Innovations 1997 to 2002
Spin-outs formed
Licence income
circa £7.1m
Development income
circa £15m
Equity realisation
circa £20m
Finance raised
Spin-out jobs
Innovations approach
• Inform & educate
• Identify & assess
• Protect & publish
• Explore & exploit
• Develop &
Well trodden path
Decision making
• Due diligence on technology
• Engagement of patent agent to
proceed with filing
• Licence or spin-out
• Due diligence on commercial potential
• Type of marketing?
• Terms of agreement?
Typical concerns
• Cost of patenting process and funding
for technology exemplification
• Seeking external endorsement
• Ability to discern optimal use and
access right partners
• Diversion of effort away from research
Observations on licensing
• Universities are focussing more on
interfacing with potential partners and
have developed a better base of
industrial experience in tech transfer
• New generation of SME’s can make
good licensing partners
• Licensors are seeking certainty and
are reluctant to commit to royalties
• Spin-outs are also licensing vehicles
International perspective
• Exploit Technologies Singapore and
University of Columbia New York
• Leverage opportunities for international
licensing and spin-out activity
• Access to international networks of
investors and industrial partners
• Technology exchange and joint
• Further understanding of commercial
Funding for Innovations
• Service fees from College and industry
• Balance of spin-outs and licences
• Limited ability to fund technology
development before licensing
• Equity squeeze for those unable to follow on
• Diminished returns to universities
• Development fund management fees
• Commercialise industry’s unexploited IP
• Technology transfer has been
transformed by spin-out activity
• Universities are developing a
supportive environment for
• Access to technology development
funding and management expertise is