Aalborg Universitet

TECHNOLOGY TRANSFER

PETER RASMUSSEN

HEAD OF TECHNOLOGY TRANSFER AT AALBORG UNIVERSITY.

Protecting AAU inventions and bringing them to market!

Aalborg Universitet

How research is utilized at AAU

• Research at AAU shall be made available to as many people as possible, so research

can provide the highest possible value and benefit to society.

• Through

• Education of young minds, which intrinsically has knowledge about the

newest research, and which can form the basis for innovation in the companies

around us

• Research at AAU or in cooperation with industry, government, universities.

• Open Access – to all Publications from AAU via: http://vbn.aau.dk

• Dissemination through

• Media & Conferences

• Matchmaking (http://match.aau.dk),

• Network activities (http://match.aau.dk/Netværk), and

• Technology Transfer: Spinouts, sales & licensing of inventions from AAU

(http://www.patent.aau.dk).

Aalborg Universitet

Research & Technology Transfer

• AAU cooperates closely with companies, public authorities and other research

institutions, investing in

• Basic research,

• Applied research, and

• Commercialization of inventions at AAU,

• which secure that the research results in products,

• which are beneficial for society, and

• Become the foundation for new companies, and

• Create new jobs and financial development.

Aalborg Universitet

Law of inventions made at public research institutions (law 347, 1999)

• ”§1. Purpose – to secure that research results generated through public funding is

utilized for the good of society, through utilization in industry.”

• The law means that universities, sector research institutions and hospitals are

obligated to work with commercialization of patentable inventions from research.

• Who owns the rights to inventions are technically defined by the law.

• The law means that:

• Employees are obligated to report inventions and AAU can take over the

rights to the employees inventions, and enter into agreement with

private industry regarding spinout, sales and licensing

of patentable inventions.

• In return, the employees who made the inventions

shall have their share in the potential financial returns.

Aalborg Universitet

Technology Transfer Organisation

• The Danish Law on Inventions from Public Research Organizations', state that

• Rector has the decision power

• At AAU, the Faculty Director,

has been nominated by Rector, to

have the decision power on

Technology Transfer in practice.

• The Technology Transfer Office,

has been set up to handle

all inventions disclosed by

AAU employees, reporting to

the Faculty Director.

Aalborg Universitet

Typical forms of Technology Transfer

• Spin-out

• IPR Sales

• Licensing

Sales / Licensing are logically the most effective way to utilize research and

new technologies, as established companies already has the necessary assets

and expertise to turn inventions into real products on the market.

Spin-out often happens, when you have no other options, or the technology is

ground-breaking, is widely applicable (platform), etc.

Aalborg Universitet

AAU commercialization in numbers

• Active Invention Portfolio = 92 (Dec 2011)

• Number of invention disclosures pr. year 40-60

• 90% of inventions received are assigned to AAU

• 10-30 % of inventions are patented by AAU

• 20-35 AAU inventions are sold pr. year

• License agreements approx. 4 pr. year

• Spinouts 1-4 pr. Year,

• Spinout portfolio = 13 (Dec. 2011)

Acarix A/S AlpCon

IFXa A/S TKS A/S

Aalborg Universitet

Historically inventions at AAU have typically come from

Energy

Medical Technology

Chemistry & Biochemistry

ICT

Engineering

Aalborg Universitet

3. What we do…

The Commercialisation Process @ AAU

Aalborg Universitet

Invention Disclosure

First meeting with Inventor(s)

Novelty search (Patentability)

Commercial Potential

Evaluation and formulation of

the Commercialization Strategy Presentation &

Nomination

Receive AAU Rights Decision: - Assignment of rights.

- Return rights to inventors.

Aalborg Universitet

Invention

Inventor resources

• Is it Core Research?

• Can/will Inventors help

move the invention to

market together with

AAU?

• Is funding Available /

Necessary?

• Does inventors need to

publish?

Aalborg Universitet

Aalborg Universitet

PATENTING

- ONLY WHEN REQUIRED

Protecting inventions as a mean to commercialize

Aalborg Universitet

Patenting is costly AND accelerate over time

50-120 K ?? K 30-80 K ?? K ?? K ?? K 100-200 K per

country

Source: Graph: Ploughmann & Vingtoft, Costs AAU

Aalborg Universitet

Patenting - Protecting inventions as a mean to commercialize

• Facts:

• Patenting is only initiated on 10-30% of all Invention Disclosures received by AAU.

• At the present time, AAU owns issued patents on only 4 inventions.

• Patenting induces time pressure to commercialize!!!

• Deadline at 12 and 30 months after submission

• The patent application can be updated with in the first year (priority year), but

ONLY as long as novelty is maintained.

• Thus, progress is essential in the first year

• Novelty is destroyed by publication, making patenting impossible

• Patenting is thus not a goal for AAU, only a mean to commercialize!

Aalborg Universitet

Why does AAU patent inventions?

• The invention has high commercial potential,

• The invention can be

• Exploited by multiple companies through licenses,

• Used for spin-out

• And/or:

• Necessary to commercialize the invention, because

• Some companies only wish to evaluate IPR, which is patented

• The research team has an ultimate requirement to publish results, or

• Funding is necessary to move the invention closer to market

Aalborg Universitet

Why sell inventions before patenting?

• Inventions are often sold to companies w/o filing a patent, because the invention

• Have been generated in research collaboration, where the company is the natural

customer.

• Is incremental in relation to an existing product in the market

• Has a very narrow focus, which only makes it interesting for a specific company

• NDA’s are often used here to establish collaboration with an Industrial partner

• Find standard NDAs’ at www.kontraktenheden.aau.dk

• In some cases cost of patenting is too high compared to potential future financial gain.

• In addition, companies generally prefer to own, rather than license.

Or would like to be part of the patent process to optimize their market potential.

• And - AAU can free up resources to commercialize even more inventions!

Aalborg Universitet

NEW European Patent?

• Impact

• SMV’s

• Commercial use of IPR

• Challenges with Freedom to operate

• Danish companies file EP, US or PCT today

• Change in IPR culture

Aalborg Universitet

HOW HARD CAN IT BE?

Example - Patenting & Commercializing an invention at AAU

Aalborg Universitet

Aalborg Universitet

Braking system for deorbit of satellites in LEO orbit

• Aero-Dynamic Drag System – works up to 1.000 km above earth.

• Factor 10-100 area increase at deployment!

• Satellite Deorbit reached withing max 1 year

SatelliteSatellite

Frame in stowed position Fully-deployed

Satellite

Top-view with wind direction

speed

wind

Aalborg Universitet

ACOUSTIC DETECTION OF CORONARY ARTERY DISEASES

CORONARY ARTERY DISEASE

(CAD) IS A HEART DISEASE

WHERE A STENOSIS IN THE

CORONARY ARTERIES LIMITS

BLOOD FLOW TO THE

HEART MUSCLES.

Aalborg Universitet