José Silva Lopes,PhD Researcher at FCT Nova and … · 2020. 8. 2. · • CV • Jobs • New...

José Silva Lopes,PhD

Researcher at FCT Nova and REQUIMTE/LAQV

(former)TTO at FCT Nova

The path…with lot of mutual technology and knowledge transfer

• PhD in Chemical Engineering (Supercritical Fluid Technology). Output : a Thesis and a patent(co-inventor) and lots of working hours(good for experience)!

• During PhD…Industrial Engineering BSc.(good for industrial systems awareness)

• After PhD…Education, R & D with a company and with Technology Transfer (another patent!),ITN Officer

• More recently, MIT Portugal Bio-Engineering Systems : Education and Science Manager, Innovation Systems and Technological Inovation, TTO at FCTUNL,Scientific Officer at a R & D Unit

• Current: Researcher in Green Engineering Innovation

R & D Outputs

Technology & Science in the Lab

InnovationCommercial and/or

Societal Value Scientific Production Career Development

Scientific Production

• Publications• Conferences;Workshops• Degrees(PhD,Tenure)• Projects(National,European,With

Industry)• Collaborations and Cooperations

Career Development

• CV• Jobs• New ideas, new collaborations, new

scientific projects• Interaction with Industry• Networking

Technology value from innovation..all are Knowledge and Technology Transfer in

some way • Patents and Publications• Knowledge Transfer • Sponsored Research Agreements• Licensing/Assignment of Technology• Start-ups/ Spin-Offs• Voluntary Work/ Service to Mankind• Societal and Community Improvement

And it starts with an invention…or an innovation

What is an invention? And Innovation?

A technical teaching which defines a relation

between technical features and technical

effect; it is in the realm of research and

discovery, fundamental science and the

development of new ideas and knowledge

Invention has to be reproducible

Innovation is the new and successful application of those inventions to address issues and generate value

Invention

Conception (in the lab orother technology environment)

Reduction to Pratice-constructive(patent application)

-actual(working model, proof of concept,prototype)

And how you get the value from the technology? With technology transfer!

Technology Transfer – what is it?

Technology Transfer General Definitions

• Technology Transfer : process of movement of technology from one entity to another;

• Application of information (in the form of a technological innovation) into use;

• Movement of a technological innovation from an R&D organisation (e.g University research center) to a receptor organisation (e.g. a private company).

• Flow of technology and important means of technology development

• Transfer of technology from production to application, making full use of the technology and realizing its value.

• Transfer, proliferation, promotion, and transplantation of technical achievements

Technology Transfer: early definitions in 60s and 70s

• Transfer for the receptor (buyers of technology were mainly passive recipients who depended greatly on aid programs for the purchase of technology) from the donor (technology developer) (Bar-Zakay 1971)

• Transfer of technology plan and knowledge for the purpose of building a manufacturing unit (plant construction,product technology transferred skills, infrastructure development) in which multinationals transfer their know-how to developing countries(Behrman-Wallender 1976)

US Bayh/Dole Law of 1980 changed Technology Transfer policy and methods…

• Option to Ownership of Government Sponsored Inventions (2 Years or 90 Days before Patent Bar Date);if Option Exercised, Must Patent and Diligently Seek a Licensee

• Must Share a Portion of Royalty Income with Inventors

• Non-Exclusive Royalty-Free License to Government• Government Retains March In Rights• Preference to Small Business • U.S. Manufacture if Exclusive License in U.S.

Technology Transfer – more recent definitions

• “Involves a relationship dimension. Research and technology transfer activities comprise an extended series of “interactive relationships” that connect the functional activities of basic (disciplinary) research, applied (problem-solving) research, development, diffusion, adaptation, and dissemination into an overall technology delivery system” (Feller 1987)

• “Deliberate, goal-oriented relations between two or more persons, groups or organisations to exchange technological knowledge and/or objects and rights” (Autio & Laamanen 1995)

• “Ultimate objective of technology transfer is commercialisation, the movement of know-how, technical knowledge or technology from one organisation to another” (Bozeman 2000)

• “The process by which technologies developed in universities are transformed into marketable products” (McDougall 2005)

Bridging the gap between research (academic, industrial) and the

marketplace/economic value by developing a knowledge transfer

strategy (a linear perspective):

Market is more important than the technology itself (but not by

much…).

research and development marketplace

What drives Technology Transfer between Organizations?

Technology Push

Market Pull

Technology Transfer Models – The Traditional Linear Model

Linear Model : based on stages such as basic research, applied research, prototype development, market research, product development, marketing and selling

Technology Transfer-Linear Model as a Cycle

Technology Transfer Models

•Non-linear models : “emphasise multi-directional linkages, interdependency between “hard” technology and “softer” issues of people management and information flows, cumulative flows which involve individuals, organisations, regions and government, and the social, cultural, economic and institutional bases of innovative action” (Mitra and Formica, 1997).

•These models evidence the importance of collaborative activities occurring within an established network of formal and informal relationships.

Technology Transfer Models – Non-Linear Model

Technology Transfer Non-Linear Models

Framework of these models:

•Academic Entrepreneurship ( PhD Students and PIs involved in academic and start-ups/spin-offs);

•Open Innovation (between academia and industry , innovators who integrate their ideas, expertise, and skills with those of others outside the organization );

•Collaborative View (between academia and industry, both stakeholders fully involved, collaborative organizations that have developed legal and technical infrastructures for engagement in knowledge and idea-sharing as joint effort)

Technology Transfer Models –Hybrid Models (Bozeman 2000)

Technology Transfer Models – Hybrid Model

Technology Transfer in Practice

• From the University Lab to the Society/Industry

• From the (University Lab collaborating with Industry) to the Society

• From the Industry to the Society

And it starts with an invention…• A new and useful process• A machine

• An article of manufacture (product)

• A composition of matter ( a substance, a material)

• Any improvement related with the above

So…what we do with it? Is it intriguing, it has potential?

University Technology Transfer Office

Should I file an Invention Disclosure??? Or should I publish?

Should I consider Intellectual Property protection??

Contact the TTO!

Technology Transfer At MIT – another example of a Linear Model quite common in Nova’s TTO

Overview of intellectual property

Legal right What for? How?

Copyright Original creative or artistic forms

Trade marks Distinctive identification of products or services

Use and/orregistration

Registered designs Registration

Patents New inventions Application and examination

Exists automatically

Trade secrets

External appearance

Valuable information not known to the public

Reasonable efforts to keep secret

Adapted from D.Chaves 2010

Registered industrial property

Patents

Duration: 20 until years

Trademarks

Duration: until 10 yearsor life

Utilitymodels

Duration: until 10 years

Designs

Duration: until 5 x 5

years

IP rights with a legal certificate


Unregistred IP rights

Unregistered IP = Copyright

The right will be in force until 70

years after the death of the

creator

Literature

Pieces of music

Paintings

Drawings

Films


Trade marks:• Made by "Nokia"• Product type “7” or “6”• Software “Android", "Java"

Patents:• Data-processing methods• Semiconductor circuits• Chemical compounds• Touch Screen• Bateries

Copyrights:• Software code• Instruction manual• Ringtone

Trade secrets: ?

Designs (some of them registered):• Form of overall phone• Arrangement of buttons in specific shapes• Interior 3D space organization

Combined use of IP rights

What rights a Patent gives to the Inventor ?

You can say it is:

• An agreement between the

inventor and society

Alternative definition (legal):

• A patent is an exclusive right to commercially

exploit the invention in this country. Protection up

to 20 years

-It gives the inventor,owner or the licensee the right to exclude others from making, using or selling the patented invention for a specific period that begins with the issuance of the patent

-In return, the inventor has to publicly disclose the invention

-Protects investment in innovation(Return On Investment)

What can be Patented ?

• A new and useful process• A machine

• An article of manufacture (product)

• A composition of matter ( a substance, a material)

• Any improvement related with the above

Examples: a chip, a process to build new materials for the semiconductor industry, a robot, a new material superconductor

What cannot be patented?

.: Computer programmes

.: Medical and surgical treatments

.: Mathematical methods

.: Business methods

.: Discoveries

.: Aesthetic creations

.: New species of plant or animal

.: Inventions which are contrary to moral standards and public order (e.g. instruments of torture)

.: The human body and any non-separate part/s thereof


Intellectual Property Rights

• Intellectual property : inventions and/or materials that may be protected under the patent, trademark and/or copyright laws.

• It is not exclusive of publication!

• It is important to get the right value from your invention (very important in a technology transfer process from academia to the society)

Intellectual Property Rights

• Can protect your rights as an inventor and the university as your host

• Eventually may lead you to start your own business or get commercial from your invention through third parties

More on IP with Marta Cerejo’s class tomorrow IP in Academia

Can it be Patented?

What is-and is not-patentable?

-Must be Novel/New (non public disclosure in any form before filling);

-Must be Useful ( must have industrial or agriculture application potential);

-Must be Inventive (“nonobvious to someone of ordinary skill in the art”)

Industrial Application

.: The invention must have at least one

practical purpose and must be

reproducible

.: There is no evaluation of quality or

economic factors! And no

“optimality”

.: Only the technical qualities

(features) are relevantAdapted from D.Chaves 2010

Technical Features of an Invention

YES NO

-Physical element (compound, mixture formulation, solution, material, biological substance, object, apparatus, machine, sensor)

-Methods(stages,steps, algorithms)-A Particular Functionality (means-for, use, utilization, coupled)

-Special Relationships (inventive relations non-obvious or capable of solving the problem with a new solution)-Embodiment of the invention (a particular example on how the several parts are integrated, how they work between each other, how the apparatus functions)

•Advantages and/or Disadvantages•Optimization of any processes•Performance improvements (Reliability,sensibility,reproducibility, precision and accuracy) •”Uses that makes things easier,faster and better”•Adjectives related to the invention or of parts of the invention that makes it a big development from the current state of the art

It must be New - Novelty

.: Novelty: An objective, global demand

.: New in relation to that which is

known prior to the date of filing

the application

.: Known = general availability through

the written word, spoken word

(lectures, etc.), usage, etc.


Novelty of an Invention-The Search Process

-Searching for Novelty of an Invention

1- Search for the Current State of the Art in Scientific Literature (non-Patent Literature) as Scopus, Web of Knowledge IEEEExplore, et al.

2- Search for the Current State of the Art in Patent Databases

3- Assess the search based on technical characteristics or chemical formulas

-KEYWORDS

-TECHNICAL CHARATERISTICS

-SYNONYMES

-PATENT CLASSIFICATION CODES (only in Patent Databases

Patent Databaseshttps://worldwide.espacenet.com/

https://patentscope.wipo.int/search/pt/search.jsf

https://www.uspto.gov/patents-application-process/search-patents

http://www.marcasepatentes.pt

https://worldwide.espacenet.com/

https://patentscope.wipo.int/search/pt/search.jsf

https://www.uspto.gov/patents-application-process/search-patents

http://www.marcasepatentes.pt/

The Inventive Step

To differ essentially =

Inventive step =

Not obvious to a person skilled in the art...

“As a general rule, there is an inventive step if the prior art leads theperson skilled in the art away from the procedure proposed by theinvention. This applies in particular when the skilled person would noteven consider carrying out experiments to determine whether thesewere alternatives to the known way of overcoming a real or imaginedtechnical obstacle” EPO Handbook

What is the invention? Is it really inventive?

Identify what problem did the invention intend to solve and what problem he did objectively solve (Questions to be made!)

• What are the differences between the closest prior artand the invention ?• What are the technical characteristics of an invention?

• Which specific difference has the technical effect thatseems to be the most important one?(most significant, most substantial or most unexpected one)?

• Unexpected benefits, the new feature(s) or combination of features , the “trick” of the invention

The Inventive Step- Problem-and-solution approach

Stage 1-Prior Art

Stage 2- Technical Problem

Stage 3-Analyzing and Considering if Obvious/Non-Obvious

Search Process

modifying,adapting

The Inventive Step

Problem-and-solution approach* Three main stages:(i) determining the "closest prior art",(ii) establishing the "objective technical problem" to be solved, (iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

Always try to define the objective technical problem and how it was solved! Unexpected bonus effect!

Not-Inventive :-compose previous art in a obvious manner (mere aggregation of features)-”filling the gap” or “analoguous substitution” or analogous use") -well-known equivalents, new use of a well-known material employing the known properties

The Patent Application

WIPO

IP in Academia with Marta Cerejo

Patent and Business

Is my invention new?

Who are my competitors,or potential partners and what do they do?

What is state of the art?

Am I free to use or do I infringe someone’s

patent?

Which solutions alreadyexist?

What’s going on in a specific technical field?


• Exclusivity enables investment and higher returns on investment

• Strong, enforceable legal right

• Makes invention tradable (licensing)

• Reveals invention to competitors (after 18 months)

• Can be expensive (total costs around 40 k€ during protection time)

• Patent enforceable only after official grant (this can take 4-5 years)

Advantages and disadvantages of patenting

Advantages Disadvantages


Alternatives to patenting

• Cheap• Prevents others from patenting

the same invention

• Does not offer exclusivity • Reveals the invention to

competitors

• Cheap (but there is the cost of maintaining secrecy)

• Does not reveal the invention

• No protection against reverse-engineering/duplication of invention

• Difficult to enforce• "Secrets" often leak quite fast

• No effort required• Does not offer exclusivity• Competitors will often learn details

Information disclosure (publishing)

Secrecy (creating a trade secret)

Do nothing


Patents – How to do technology transfer with them

• Assignment of your patent to companies (selling the patent rights)

• Licensing to companies

• Use/reduction to practice in Spin-off / Start-up by having your invention patented and licensed to you and/or your co-inventors or start-up team members

Assignment vs Licensing…

Assignment Licensing

The ownership of the patent is fully

assigned (sold) to a third party.

The owner of the patent grants a

third party the right to exploit the

patent, but retains ownership.

Typically, the assignor only gets a

single payment arising from the sale

of the patent.

The licensor receives royalties and other incomes according to the profits/sales/production of licensed products.

Assignment…

Advantages Disadvantages

Immediate gaining of the

financial compensation, by

receiving a single and pre-

determined payment

independent from future

profits/sales of the products

protected by the patent.

Loss of connection with the patented technology, its future developments, as well as with the assignee (short term relationship).

The assignee takes full responsibility on the patent maintenance, surveillance and enforcement.

Difficulty in doing the accurate market evaluation of the patent at this stage, when the technology is yet to be exploited. Usually, the assignor has a better knowledge of the market, and therefore is in a better position to dictate the value of the patent.

Licensing…

ADVANTAGES DISADVANTAGES

Participation in the market success

of the patent, by benefiting from

the results of its exploitation.

Need to keep an eye (both eyes, in fact…) on the licensee business, avoiding being misinformed in what concerns the patent commercial exploitation results.

Possibility of obtaining higher profits rather than in a assignment, considering that the profits are determined according to the sales/production of licensed products by the licensee (market success).

Difficulty to determine the licensee profits

Close relationship with the licensee, increasing the chances of new RD projects and possible sponsorships.

Need to keep watching for the patent maintenance and enforcement.

Trade Secret…

ADVANTAGES DISADVANTAGES

-Involve no registration costs;-Does not require disclosure or registration;-Protection is not limited in time;-Have immediate effect.

-The secret embodied in an innovativeTechnology/product may be discovered through “reverse engineering” and belegitimately used.-Protection is limited: only protects you against improper acquisition, use or disclosure of the confidential information.-A trade secret is difficult to enforceas the level of protection is considerably weaker than for patents.-Another person may patentsomeone’s trade secret if he haddeveloped the same invention by legitimate means.

A trade secret management program must be in place! Especially in companies or when collaborating with companies

Why licensing?...

• Institution reputation and return on innovation investment• The researcher earns reputation, recognition and a part of

the return of the investment• It gives the possibility of the customer/end-user to have

access to the technology since companies are much better that academia in putting manufactured technologies on the market

Licensing Agreements• Legal contract that allows a company to make,use and/or

sell an university’s invention; it could a established company or a start-up;

• The company agrees to pay for the use of the IP (e.g patent); it could be a lump-sum, royalties or other forms(e.g. equity);

• License can be exclusive or non-exclusive (Patent is usually exclusive while know-how is non-exclusive);

• TTO handles the licensing agreements legal terms and negotiations but inventor has a “say” in the whole decision process;

• Option agreement ( for start-ups) : rights granted to be first to negotiate a license(6-12 duration)

Licensing Unpatented IP

• Know-How: non-exclusive license of techniques, experimental systems, special knowledge;

• Copyrighted work: formulas, algoritms, source code for software

Methods to Determine Technology and Patents Value

• Cost Approach - - look backward to the costs on developing the technology

• Market Approach - - look around to comparable market transactions in evaluating similar assets

• Income Approach - - look forward to the amount of income that the new technology will generate

Methods to Determine Technology and Patents Value

Technology readiness level (TRL)..also useful for patent valuation

PATENT usually has a TRL 1-4 ; Industrial companies prefer working with TRL 5 and beyond…

Technology Transfer Models With Industry

• Linear: technology push, market pull

• Non-Linear: Coupling Model (The coupling of knowledge within all three functions: R&D, manufacturing and marketing)

• Non-Linear:Interactive Model (combination of push and pull models, integration within the company or between University labs and company)

Technology Transfer Models – Non-Linear Model (University+ industrial

partners )

Early-stage intervention of companies in the IP Strategy and in the technology development process is also a drive for this model

Partnership and Collaborative Agreements

-Consortium projects with industrial partners (SMEs, start-ups, technologic centers);

-Funded national projects with industrial partners as co-promotors;

-Sponsored contracts funded directly by industry

-Consultation agreements

Partnership Agreements (examples)

• Consortium Agreement – several partners join a project with several work packages towards a common problem; the contract regulates the rights and obligations among the Participants of an EU Project but also concerning confidentiality, liability and Intellectual Property Rights (IPR).

• Licensing Agreement - The transfer of certain rights from the Developer of a technology, process or know-how to the Recipient, in return for a fee or share of royalties


• Technical Cooperation – Adapt/develop a technology, a product or a process for a new application or sector and/or new market (example: co-development of a new product using the expertise of the Developer and the production facilities of the Recipient).

Technology Readiness Level assessment is very important in the negotiation process for IP rights

• Joint venture - strategic alliance between two or more Parties to undertake an economic activity together. The Parties agree to create a new entity together, by both contributing equally, and then share the revenues, expenses, and control of the enterprise (example CoLaB; Fraunhofer Institute)

• Commercial agreement with technical assistance The provision of a number of services in support or essential to a transfer of technology (examples: assistance with starting up an installation, advice on the use of a new process, quality control, technical, consultancy,maintenance and machine repair)


• Manufacturing Agreement (Subcontracting & Co-Contracting)

-Subcontracting Capacity-Subcontracting Specialties-New way to use an existing production line-Change in the currently used technology -Absolutely novel process that requires a partner to fulfill

certain development tasks-Consultation


Partnership Agreements - Recommendations

• IP Rights Safeguard ;• Agreements ; Disclosures and Communications• Relationships and Collaborations (strategic partnership is better)• Academic rights• Long-term relations with built-in flexibility• Shared vision and cross-fertilization of ideas• Not too much focused on “results” oriented approach• Multidisciplinary environment

Non-Disclosure Agreements (to make the relation more fruitful between Academia

and Industry )

• Non-Disclosure Agreements (NDAs): often used to protect the confidentiality of an invention during evaluation by potential licensees but very important also when building a collaboration with industry and/or a partnership agreement

• NDAs also protect proprietary information of third parties that researchers need to review in order to conduct research or evaluate research opportunities.

• Sometimes they are used while or before filing a patent application during Market Assessment Outlook, in order to establish an Option Agreement with a company (not the general rule!) or to negotiate a future assignment or licensing

Non-Disclosure Agreements

Non-Disclosure Agreements – Rules of Thumb

• Assess the methods to record information• Restrict the object of the agreement to specific

purposes• Impose confidentiality to other company

members• Define if it is “Mutual” or “One-way”• Time for obligation of confidentiality• Public authorithy and institution involvement

Direct Sponsorship and Consultation Partnerships

• The work developed by a researcher might interest some industrial companies

• So… how can technology transfer be done between labs and companies beyond IP transfer ?

Sponsored Research Agreements Funded by Industry

• A company funds a university lab research and a new kind of agreement is defined

• Guidelines:

-Project Control(should be the PI lab)-Technical Representatives(both parties in the

relationship)-Reporting methods(requirements)-Publishing rights -Invention rights (who owns the invention?)-Licensing rights (limited time to exclusive license rights)-Discussion and collaboration

Sponsored Research Agreements Best Practices

-exchange of ideas, not just conduct research on the behalf of the company;

-managing expectations is also important (very different perspectives between academia and industry)

-no use of the consultant/university in company promotional materials;

-limited and reasonable time commitment;

Sponsored Research Agreements Best Practices

-provision for contract termination by each party; reserved information disclosure;

-invention assigment when it is not developed in the university labs; conflict of interest and IP; noncompetition clause interference with University lab R & D;

-IP rights between academia and industry must be defined (Patent Sharing Rights Agreement or Trade Secret Plan);

-Remember: industry is interested in science to increase sales and profits and to have a competitive advantage (see Partnership Agreements slides)

Material Transfer Agreements(MTAs)

• Materials transfer between labs that cooperate for an integrated purpose or in a collaboration effort

• Incoming and expending of materials requires TTO support and institutional approval terms

• Could be quite complex especially for biological or other types of materials, cell lines, hazardous products


• Between Academic Labs (use for noncommercial purposes, acknowledge all parties in publications,no sending for 3rd parties,responsability in damages during use,non-use in human subjects)

• From Academia to Industry (usually for non-commercial purposes, share manuscripts and proper acknowledgement, damages responsability, fee payment, no third parties)

• From Industry to Academia (Ownership of derivatives and modifications or of potential IP, publication review and confidentiality agreement, reporting and data sharing)


• Conflicts and Potential Issues

-Confidentiality-Delay of Publication-Loss of control of IP-Definition of material-Conflicts with existing agreements-Compliance and ethical problems

Types of Industry-University Relationships a comprehensive list

• Sponsorship of Research• Donations and Gift Funding• Interdisciplinary Centers & Collaborations• Industrial Affiliate Programs• Licensing of University Intellectual Property• Classes for Company Employees(e.g. Executive

Masters or Doctoral Program courses)• Visiting Scholars from Industry and Company

Employees teaching at University• University-managed Science Parks/Incubators• Faculty Consulting

Technology Transfer - Current Trends in the Industry

• Away from Basic Research and to Product-Connected Research

• Downsizing of R&D Depts; PhD Graduates going to Small Companies and Start-Ups instead of Academia

• Start-up Acquisition as a Sourcing for New Products

• Growing Acceptance of Licensing• Commercial agreements with Technical Support

between SMEs and Large Companies (B2B)

Adapted from J.Sandelin 2014

Technology Transfer - Current Trends in the Universities

• Industry-Influenced Research is rising– Affiliates/Super-Affiliates Programs (CoLabs)– Inter (or Cross) Disciplinary Research Centers– H2020 projects with Multi-Company and Multi-Universities

Research Collaborations– Direct Sponsorship by SMEs by the needs of knowledge

and technical support or under FEDER funding (Portugal 2020, INTERREGs,et al.)

• PhD Graduates to SME’s and Start-Ups• Value creation based on technology developed

within (still small)


Trends in the Technology Transfer methods and activities between University and

Academia• New Forms of License Agreements : (Ready-to-Sign License

Agreements; Hybrid Agreements with integrated Patent/Copyright/Trademark; “Package” Deals with Research/License/Consulting; Equity only License Agreements)

• More Option Agreements to Mitigate Risks• More Licensing of Tangible Research Products • Use of “Plain Language” in Writing Agreements• Most of the Time Spent on Conflict of Interest/Commitment

Issues• Licensing of Spin-Out/Start-Up Companies(“Qualifying”

Inventions for Start-Up; Network Development of Angel Investors)

• Invention Enhancement Funds (in Portugal still very low)


How to bring technologies to the market? How to make use of your invention?

.: Bringing an innovation, or invention, to the market

.: Commercial exploitation of scientific or technological

results achieved under university studies/research or in

R & D industry Adapted from D.Chaves 2011

Technology Transfer to Customers “New vs Old Technology”

• A new technology : -has to have considerable relative advantage and to provide significant value to the customer before it is embraced by the wider user community;

-can be more expensive than the older technology, but the value in terms of quality, flexibility, and responsiveness it provides motivates the user to take the necessary steps in adopting this technology;

The technology transfer strategy must take those above as a priority considering the customer phases of technology adoption (knowledge, persuasion, decision, implementation, confirmation)

Knowledge Persuasion

Decision

Implementation

Confirmation

Technology Adoption 5 Steps

Technology Transfer – The Organization Framework is Boundary Spanning

• Technology gatekeeper, a person who links the organization to the outside world of scientific and technical knowledge;

• Market gatekeeper also may exists in addition to offer the customer and end-user view (but more common in services’ providers);

• Communication network needs to go beyond the research community (scientists and engineers) to include the user community, the marketing people, and the manufacturing groups

Technology Transfer to Customers Understanding the market and the company organization• Has to integrate the perspectives and needs of

both the R&D personnel and users; • Creative collaboration among the various

groups(researchers,marketing,manufacturing and ultimate users) is very important to facilitate significant tech transfer;

• The focus in technology transfer needs to be on “marketing” the product rather than “selling” it, with user needs and preferences given proper consideration

Marketing intellectual property, products, technologies in order to optimize the technology transfer process

* Understand the market– Talk to potential partners and customers– Draw up confidentiality agreements where appropriate– More than 70% of licensed technologies are from

companies in areas of knowledge or R & D of the inventor

* Market your technology widely– Publications– Websites– Scientific Conferences and Workshops– Industry events– Digital marketing

* A prototype is very useful for explaining new technologies…proof of concept could be most of the time mandatory

Market: High Tech Uncertainty

Market Technology

What are the needs? Will it work?

How large is the market? Will it go obsolete?

How fast will it spread? Will there be side effects?

Will a standard be adopted? Will there be support?

How will needs change? Will delivery be on time?

Technology Development and Transfer “the ability to transfer a new technology

is limited by its utility”

Desirability

ViabilityFeasability

Technology Transfer Potential Evaluation Criteria

Relative Advantage. To what degree is the innovation more advantageous to existing technologies? Does it reduce cost, save time, or improve quality?

Compatibility. To what degree is the innovation compatible with existing

values, experiences, capabilities, felt needs, and organizational and cultural settings?

Complexity. To what degree is the innovation complex and difficult to adopt by the users? What degree of specialized training is required before the innovation can be adopted? What specialized equipment is needed?

Trialability. To what degree can the innovation be tried on a limited basis?

Observability. To what degree can the advantages of the innovation be easily communicated to decision-makers and users?

SCALES can be defined by internal measures Jain et al. 2010

Technology Transfer Potential Evaluation Criteria

Technical Understanding. To what degree does the research personnel fully understand the main technology?

Resource Requirement. What level of resources is required to implement the new technology? Is this resource requirement compatible with previous user experiences? Is the capital needed for the new technology available?

Advanced Development Concepts. Are the research activities going to continue to debug problems and further supplement the technology?

Growth Potential . Does the technology have a potential for growth and product applicability? Will the new technology overcome “stretching” of existing technology capabilities?

Advocate. Are there advocates at higher levels and at user level?

Market Pull. To what degree is there a market pull?

External Pressures. To what degree are there external pressures (such as regulations, competitor development, and so on)?

Conflicts of Commitment and Interest while PhD Students

• Is my time really my own? Am I dedicating enough time to the doctoral project?

• Should I publish or patent? Should I start a company or license ?• My research findings affect future licensing and sponsorship

funding?• Are my rights as a Graduate Student safeguarded?• My involvement in a sponsored research agreement conflicts with

my doctoral work and thesis work plan?• Do I have restrictions in presenting my research?• Should I be restricted by a confidentiality agreement? Should I sign

it?• Can I write/defend my thesis with confidential results ?• Should I get involved in a start-up company? Should I start a new

one based on my work?

Technology Transfer Homework assignment

1 - Suppose you have already filled a product patent and a industrial company wants a license to manufacture it and sell it. However, you may consider instead sellling the patent rights to the company (assign it). What are the advantages/disavantages of licensing your patent?

2- The TTO approaches you to integrate a collaborative project with an industrial partner that has contacted the TTO for that purpose. The collaboration will be done in a industrial center space with strong cross-fertilization of ideas between you and the industry engineers in order to solve a specific industrial production problem. Is this technology transfer process linear? Why?

3- Use the Technology Evaluation criteria (at least 5 criterions) to analyze if it is possible to transfer the potential technology related to the output of your PhD Thesis into the market

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José Silva Lopes,PhD Researcher at FCT Nova and … · 2020. 8. 2. · • CV • Jobs • New...

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Transcript of José Silva Lopes,PhD Researcher at FCT Nova and … · 2020. 8. 2. · • CV • Jobs • New...