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Entrepreneurial Universities :

Entrepreneurial Universities :. Integrating Perspectives on Law and Business with Innovation JoAnna M. Esty Majesty Law Group PLC. Background. IP Development and Technology Transfer: Commercialization Issues. Integrating R&D and business strategy

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Entrepreneurial Universities :

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  1. Entrepreneurial Universities: Integrating Perspectives on Law and Business with Innovation JoAnna M. Esty Majesty Law Group PLC

  2. Background

  3. IP Development and Technology Transfer: Commercialization Issues Integrating R&D and business strategy Growing businesses through innovation Technology transition to commercial markets

  4. 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.

  5. Model for Technology Transfer Private Sector Business Entities R & D Institutions Administration & Organization & Coordination Operation

  6. What About Commercialization of Government-Funded Inventions? It was all tied up ….

  7. Government-Funded Inventions The Bayh Dole Act of 1980 Before: Government-funded research belonged to the government After: The patent as the research result now belongs to the University

  8. Model for Technology Transfer Universities and Government Funded Institutions under Bayh Dole Universities Business Entities Administration & Organization & Coordination Operation

  9. Model for Technology Transfer Private Sector Business Entities R & D Institutions Administration & Organization & Coordination Operation

  10. Model for Technology Transfer Universities under Russian Decree 217 Business Entities Universities Administration & Organization & Coordination Operation

  11. Model for Technology Transfer Universities under Russian Decree 217 Business Entities Universities Administration & Organization & Coordination Operation

  12. Strategic Issue • Technology Assessment • Cultural Conditioning • Ownership

  13. Technology Assessment

  14. Why is it Necessary? Limited Resources

  15. Technology from Private R&D or Universities transitions to … Business Entities

  16. Even with Accelerators and Incubators There are never enough resources

  17. Limited Resources: Funding, Human Assets, Capital Assets Best Practices: Optimize Technology Choices before Transition and Monetization X

  18. Implementation: the beginning … R.O.I. • vs. R.O.I. ?

  19. R Report O On I Invention

  20. 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

  21. Technology Protection: Patentability 1. 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? Countries 3. Scope of Protection? Unprotectable(too narrow, use undectable), Design arounds 4. Cost of Protection?

  22. 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?

  23. Marketability Analysis • Market size • Market location • Market characterization (e.g., new, emerging, mature, dynamic) • Market exclusivity and barriers to entry • Technology life • Revenue model

  24. Report on Invention Reasons to do Early (IP Selection, Partner ID) Cost?

  25. Cultural Conditioning Teamwork Acceptance of Failure Risk Tolerance

  26. Partnerships for Learning

  27. Technology Entrepreneurship

  28. Goals • Produce individuals with multidisciplinary skills and entrepreneurial perspective needed to succeed in innovation-related careers • Scientists and engineers aware of business and legal issues • Management and legal experienced in technical research setting • 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

  29. 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

  30. Ownership Inventions Licenses Stock

  31. Thank you!

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