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Commercializing Innovations From UC Berkeley

Learn how UC Berkeley leverages IP to catalyze commercialization and how teams can obtain IP rights to UC Berkeley innovations. Explore the pathways and strategies used to commercialize university technologies.

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Commercializing Innovations From UC Berkeley

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  1. Commercializing Innovations From UC Berkeley Cleantech-to-Market 2010 Jan 28 Michael CohenUC Berkeley Office of Technology Licensing (OTL)mcohen@berkeley.edu510-643-7201

  2. UC Berkeley Innovation Commercialization Agenda: 5-10 Minutes • How Innovations Get Commercialized: the 4Ms • How UC Berkeley Leverages IP to Catalyze Commercialization • How Teams Can Obtain IP Rights to UC Berkeley Innovations

  3. UC Berkeley IPIRA Research to Determine How University Innovations Get Commercialized • How do university innovations get commercialized? • What catalyzed the commercialization? • How is university involved in the process? • Researched over 50 UC Berkeley spin-outs • Spin-out profiles formed 4 clusters / patterns • Developed a useful (but simplified) framework…

  4. UC Berkeley Innovation Commercialization Commercializing: 4 Pathways for Univ Tech High Milked Systematically out of research by corporate collaborators Pull The extent that companies drive the transition from research to product Opportunistically by entrepreneurs (e.g. MBA students) that periodically scour campus Mined Morphed Organically out of research by team member(s) Marketed Methodically to industry by campus (e.g. PI, PR, IPMO, etc) Low Low High Push The extent that universities drive the transition from research to product

  5. UC Berkeley Innovation Commercialization Commercialization: Morphed, Mined, Milked, Marketed • Examples:Amyris, Calimetrics, CaliSolar, CellASIC, Chiron, Excellin, Fluxion Biosystems, GoodGuide (TaoIt), Harmonic Devices, Inktomi, Integrated Diag, IntelliOne, Kalinex, Lumiphore, Mercator Med (EndoBionics), MicroClimates (Aptility), MicroFluiDX, OnWafer, ON Diagnostics, PhotoSwitch Bioscience, Redwood Bioscience, SiClocks, TheraFuse, Urban Scan, Verimetra Med, Wireless Industrial Tech, Dust Networks, Iris AO, SiTime • Drivers: • Great Research • Entrepreneurial culture & eco-system • IP: • Some obtain exclusive license to improve biz plan & attract investors • Some ignore or abscond with IP High Pull Morphed Organically out of research by team member(s) Low Low High Push

  6. UC Berkeley Innovation Commercialization Commercialization: Morphed,Mined, Milked, Marketed • Examples: Adura Tech, Aurora Biofuels, CommandCAD, Euclid Media, MediFuel, NanoRay, nanoPrint • Drivers: • Great Research • MBAs, Biz plan comp, OTL mrktg • IP: • Many obtain exclusive license to improve biz plan & attract investors • Some ignore or abscond with IP • Comments: • Pathway with highest growth rate • MBAs are the campus’s EIRs High Mined Pull Opportunistically by entrepreneurs (e.g. MBA students) that periodically scour campus Low Low High Push

  7. UC Berkeley Innovation Commercialization Commercialization: Morphed, Mined,Milked, Marketed • Examples (that licensed IP): Analog Devices, Ecoprene (XL Tech), Google, Honeywell, Intel, Berkeley Bionics (first morphed then milked) • Drivers: • Great sponsored research with optimized terms (i.e. 1st access, NERF, open source, etc) • Off-campus corporate labs (i.e. BWRC, Intel, Cadence, Yahoo, Starkey, etc) • IP: • Some jointly own IP • Some obtain a license to legally use IP or thwart competitors • Some ignore or abscond with IP High Milked Systematically out of research by corporate research sponsor Pull Low Low High Push

  8. UC Berkeley Innovation Commercialization Commercialization: Morphed, Mined, Milked,Marketed • Examples: Arkal Medical, Cisco, ClimateCooler, FuelFX, Luminus Devices, Honeywell, Microchip Biotech, Renovis, Silicon Basis, Solexel, Vitesse, 3M • Drivers: • Great Research • Marketing (i.e. IP Licensing offices, University PR programs, Faculty pubs & ppts, Patent pubs, etc) • IP: • Most obtain exclusive license to stay legal, improve BP, attract investment, or thwart competitors • Some ignore IP or abscond with IP • Comments: Didn’t get morphed, milked or mined because tech or market too nascent when invented High Pull Methodically to industry by campus faculty & staff (e.g. PI, PR, OTL) Marketed Low Low High Push

  9. UC Berkeley Innovation Commercialization Commercializing: Pathways, IP & Know-How • Morphed commercialization, by definition, depends on UCB know-how, that is sometimes augmented with UCB IP • Marketed commercialization usually involves UCB IP but frequently not UCB know-how • Milked commercialization can involve the least amount (and sometimes no) UCB IP or know-how • Mined commercialization usually involves a mix of UCB IP & know-how High Marketed Morphed Importance of UC Berkeley IP Rights (i.e. exclusive license) Mined Milked Low Low High Importance of UC Berkeley Know-How (i.e. faculty consulting & student hiring)

  10. UC Berkeley Innovation Commercialization Leveraging IP: Segmenting Innovations * Note that some technologies can be applied to multiple markets that each have their own risk/return profile Potential Return on Investment Commercialized UC Berkeley Innovations High Orphaned UC Berkeley Innovations Low Risk of Investment Required to Try to Commercialize Technology Low High

  11. UC Berkeley Innovation Commercialization Leveraging IP: Catalyzing Applications Potential Return on Investment • License to • REWARD RESEARCHERS • Can motivate researchers to continue innovating • Exclusive or non-exclusive with or without field-of-use demarcations High • License to • REMOVE RESTRAINTS • Non-exclusive, royalty free • Public domain • Open software • License to • RAISE RETURNS • Improve biz plan & attract investment • Power to exclude competitors • Freedom to operate without infringement Low Risk of Investment Required to Try to Commercialize Technology Low High

  12. UC Berkeley Innovation Commercialization Leveraging IP: Examples* of UCB Licensing * These are approximate placements Potential Return on Investment High ?Gecko-Nano Adhesives? LED Lighting (Luminus) 3D Images for Mapping (Google, Urban Scan) Medical Devices (Arkal Med, Mercator Med, NanoRay, OND) Web Search (Inktomi) Electronic Design (CommandCAD) Car Traffic Info (Intellione) UNIX (Sun) Carbon Calculator (ClimateCooler) ?IR Sensors? Demand Response (MicroClimates) Video Branding (Euclid Media) RF MEMS (HD, SiClocks) Clean Energy Model (FuelFX) Exoskeletons (Berkeley Bionics) Energy Scavenging (Medifuel) Product DB (GoodGuide/TaoIt) Molecular Design (Caveat) Low Risk of Investment Required to Try to Commercialize Technology Low High

  13. UC Berkeley Innovation Commercialization Licensing: Common Steps* • Objectives: commercialize IP broadly, quickly, beneficially • Challenges • Manage uncertainty & risk of commercial success • Understand & reconcile different perspectives (corps, inventors, univ) • Approach • Entrepreneurial (flexible, creative) • Principled (win-win) • Transparent (no conflicts of interests) • Process: Incremental Common Steps (*simplified) Market IP Evaluate Opportunity Letter Agreement Option Agreement License Agreement

  14. UC Berkeley Innovation Commercialization Licensing: Managing Risk Risk Risks decrease as technology is developed into products Time

  15. UC Berkeley Innovation Commercialization Licensing: Commitment = f (Risk) • Issue Fee (& equity) • Earned Royalties • Min Annual Royalties • Indemnification • + below Partner Commitment Commitment incrementally increases as risk decreases • Annual Fee • Diligence Terms • + below • Comm Plan • Patent Costs • + below • Confidential • Agreement Common Steps Market IP Evaluate Opportunity Letter Agreement Option Agreement License Agreement

  16. UC Berkeley Innovation Commercialization Licensing: Complexity • 30-Page Doc • Patent Life is Term • If no extraordinary issues, • then can be completed in • 30-90 days Relationship Complexity Complexity incrementally increases as commitments increase & risks decrease • 10-Page Doc • 1-2 Year Term • If no extraordinary issues, • then can be completed in 30-60 days • 2-Page Doc • 3-6 Month Term • If no extraordinary issues, • then can be completed within 30 days • 1-Page Doc Common Steps (simplified) Market IP Evaluate Opportunity Letter Agreement Option Agreement License Agreement

  17. UC Berkeley Innovation Commercialization Summary • Key points • 4M university pathways: morphed, mined, milked, marketed • Leverage IP rights to catalyze commercialization • IP rights agreements can be multi-step process • Follow up • http://IPIRA.berkeley.edu • Michael Cohen; mcohen@berkeley.edu

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