Download About Technology Transfer at the University of Hawaii

University of Hawai`i
Office of Technology Transfer
and Economic Development
January 26, 2006
Office of Technology Transfer and
Economic Development (OTTED)
Revenue-oriented



service center
Help UH personnel identify, protect, and
commercialize their inventions/creations
Help build UH research enterprise
Generate licensing income
Support
State economic development
initiatives
UH Business Plan Competition




OTTED offering up to $20,000 in additional
prize money
Recipients must base their business plan on
a UH technology available for licensing
through OTTED
Recipient(s) must be 1st, 2nd, or 3rd place
winner(s)
Money must be used to help commercialize
the technology


generally means that winning team becomes a
licensee
Award goes to highest placing winner
Technology Licensing
Evolution of the relative value of tangible
and intangible assets to total value
100 years ago, tangible assets generally accounted for 90+% of a company’s
value . . .
90%
10%
100 years ago
Today
Today, the value of many companies is derived from their intangible assets.
University technologies are
valuable . . .
. . . and will become more valuable
as companies continue to leverage
their R&D budgets through the
acquisition of outside technologies
Stage 1
Technology
Transfer Process
TLG activities
Solicit,
accept,
administer
invention
disclosures
Invention
Disclosure
UH ownership ?
No
Stage 2
Yes
Legal protection
available?
No
Yes
Marketing
& Protecting
TLG activities
Evaluate,
market,
protect
technologies
Stage 3
Commercial interest ?
Yes
Return
to
inventor
Licensing
No
Note: This chart is necessarily brief - it represents only the most basic functions of the technology transfer
process. Please contact the Technology Licensing Group (539-3817) with questions or for further information
about your invention and the technology transfer process.
TLG activities
Negotiate,
formalize,
audit
licenses
Licensing as a Business Model




Licensor – Inventor/owner of
technology
Licensee – User
License – contract not to sue
Consideration – usually financial

but may include other
consideration, such as cross license
Why license university
technologies?

Technologies – early stage, high risk



Technological risk – it may not work
Market risk – unknown demand
Licensee – reduces risk


Reduces R&D expenses
Proves concept, may provide working model
 Permits end users to “kick the tires”, lowers market
uncertainty


Establishes relationship with University
Licensor – expands income potential



Reduces/eliminates mfg., mktg., dist’n costs
May help identify new income opportunities
Establishes relationship with company(ies)
Possible Deal Structures


Traditional licensing w/fees,
royalties
Equity participation




Spin-offs/start ups
Sublicensing
Options
Sponsored research agreements

With/without option to acquire license
Compensation, Diligence,
Patents, and Liability
Compensation Structures and
Alternatives
 Up-front
fees
 Royalty arrangements
 Milestone payments
 Patent registration costs
 Liability/indemnification
Up-front fees

Good for University




Reduce University’s financial risk
Offset University’s previous out-of-pocket
expenses (research costs, patents, etc.)
Generally not refundable nor creditable against
future royalties
BUT …



Increase licensee’s financial risk
May reduce licensee’s research sponsorship
commitment
May “lock in” licensing rights
Royalty arrangements



Permits University to share in the
success of commercialization
University’s increasingly willing to
be flexible in their approach and
royalty requirements
Equity can be exchanged for
royalties
Milestone payments




Milestones should follow natural
development of the technology
Often tied to diligence provisions
Levels revenue flow to University in
early years
Equity can be exchanged for cash
payments.
Payment of Patent Expenses
 Licensed
patent = licensee pays
 Business expense
 Cost sharing for multiple
licensees
each licensee pays 1/n of patent
expenses
 licensor may limit licensee’s
liability, cap or set n>1

Liability Issues and Disclaimers
 Licensee
takes all the blame
and the responsibility
and the cost
 University
takes all the credit
and none of the responsibility
…and wants to be paid for it
Liability Issues
 Licensee
assumes fitness for
use
 Licensee assumes product
liability

and names university as
additional insured
 Licensee/university
each
assumes liability for its own
employees
Success Stories and
Exemplary Technologies
Past Business Plan Participants/Winners

Pipeline Communications and Technology,
Inc.



Hawaii Environmental BioSolutions



telecommunications and antenna technologies
company has 7 employees, is in pre-production
phase
dairy waste processing
company has 0 employees, is in start-up phase
Research Analytical Labs


diagnose and treat pre-term labor
status of company unknown
Examples of UH technologies
available for licensing
Hydrogen storage materials
 Biodegradable biopolymers
 Hydrogen/oxygen production
from water
 Acoustic wave micromixer
 Wastewater treatment with zero
valent iron
 Ventilating roofing system

Contacting OTTED
 Website

http://www.otted.hawaii.edu
 Email/Phone






Richard Cox, [email protected], 539-3818
Gaylene Anderson, [email protected], 539-3836
Lisa Matsunaga, [email protected], 539-3826
Ann Park, [email protected], 539-3829
Jonathan Roberts, [email protected], 539-3828
Andrea Yuen, [email protected], 539-3823