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Spinning Off in the U.S.

Spinning Off in the U.S. Dr. Gary W. Matkin Associate Dean University Extension University of California, Berkeley. University Technology Transfer Activities. Patenting and licensing of university intellectual property Research Partnerships with industry

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Spinning Off in the U.S.

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  1. Spinning Off in the U.S. Dr. Gary W. Matkin Associate Dean University Extension University of California, Berkeley

  2. University Technology Transfer Activities • Patenting and licensing of university intellectual property • Research Partnerships with industry • Industrial affiliate or liaison programs • Technical/managerial assistance programs • Business incubators • Research parks • Venture capital/business start-up activities • Continuing Education

  3. Taking Equity Model Research Institution License For Profit Company Equity License For Profit Company Equity For Profit Company License Equity

  4. Taking Equity Model Advantages • Replication after established policy • Diversification • Equity build up • No up-front investment • Not dependent for return on one technology

  5. Taking Equity Model Disadvantages • Little control • Equity dilution • Portfolio management overhead cost • Case-by-case negotiations • Messy (relations with inventors)

  6. Taking Equity Model Issues • Inventor share distribution • Degree of management involvement • Exercising voting rights • Board of Director membership • Anti dilution opportunities • Liquidation policy • Limits to percent of ownership

  7. License Equity For Profit Spin-Off Non-Profit Buffer ModelAlternative 1 Assigns IP Ownership Research Institution Non-Profit Subsidiary Receives share of profit & equity buildup Tech Licenses

  8. Non-Profit Buffer ModelAlternative 2 Selective Assignment Research Institution Non-Profit Subsidiary Receives share of profit & equity buildup Tech License Office License Equity For Profit Spin-off Tech Licenses

  9. Non-Profit Buffer Model Advantages • Maintains control • Provides initial buffering • Can provide markedly increased flexibility Disadvantages • Still has non-profit status • Hard to attract capital • Still removed from marketplace

  10. Equity License For Profit Spin-off For Profit Alternative One Research Institution For Profit Subsidiary Creates & Owns

  11. License Equity For Profit Spin-off For Profit Alternative Two For Profit Subsidiary Research Institution Investor(s) Majority Owner Minority Owner

  12. License Equity For Profit Spin-off For Profit Alternative Three For Profit Subsidiary Research Institution Investor(s) Minority Owner Majority Owner

  13. License Equity For Profit Spin-off For Profit Alternative Four Research Institution For Profit Partner New For Profit Venture Investor(s) Investor(s)

  14. License Equity For Profit Spin-off For Profit Alternative Five Research Institution A Research Institution B New For Profit Venture Investor(s) Investor(s)

  15. For-Profit Alternatives Advantages • Immediate entry into market • Can attract capital • “Rheostat” on control Disadvantages • Sometimes little buffering • Often loss of control • UBIT, legal costs • Often high cost

  16. The Arms-Length For-ProfitIP Manager Model IP IP Research Institution For Profit IP Management Corporation For Profit Spin-offs $ $ + Equity IP Research Institution Tech License IP $ $ IP Research Institution $

  17. The Arms-Length For-ProfitIP Manager Model Advantages • Little cost to institution • Low risk (but low return) • Arms-length deal with faculty • Ability to gain critical mass, econ of scale Disadvantages • Low return • “Cherry picking”

  18. The Future of University IP Management • University as beneficial holder/clearinghouse • University as aggressive defender of IP • Research universities united • University IP policy as a condition of employment • University IP policy and collaborative education • Universities as heavies in national and international IP law development

  19. Gary W. Matkin Associate Dean/Director Technology Initiatives UC Berkeley Extension gwm@unx.berkeley.edu

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