Innovations at U of T the business of ideas

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Innovations at U of Tthe business of ideas

• Presentation to the Institute for Optical
  Sciences
• December 1st, 2006
• Dr. Cyril Gibbons
• Director, Commercialization
• Physical Sciences and Engineering

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Synopsis

• IUT and UofT
• IUT and IOS
• Ontario Research Commercialization Program (ORCP)
• Why Commercialise ?
• Licensing and Spin-outs
• Success Stories
• Summary

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IUT and U of T

• Innovations at U of T is the commercialization
  arm of the University of Toronto
• IUT comprises a staff of commercialization
  professionals concentrating their efforts in
  three areas
• life sciences
• IT/communications
• physical sciences/engineering

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IUT and U of T

• Now part of the Office of the Vice-President,
  Research and Associate Provost
• One-stop Shop directed by Executive
  Director/Assistant Vice-President of U of T
• IUT Commercialisation
• IP and Contracts Research Services
• IUT works ONLY with researchers at U of T and the
  affiliated hospitals.

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UofT Inventions Policy

• Inventions are initially co-owned by inventors
  and UofT
• You have the right to
• take personal ownership (with the other
  inventors) or
• offer (assign) ownership to the University
• Owners receive 75 of net revenues

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Partnering with IUT

• Most inventors take personal ownership, but many
  then partner with the IUT to help with patenting
  and commercialisation
• Revenue Sharing then changes to
• Inventors 60
• UofT/IUT 40

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What can IUT do for you?

• IUT can help you
• License technology
• Create spin-off companies
• Find funding for
• Spin-offs
• Proof of Concept / Commercialisation
• Facilitate relationships with industrial research
  sponsors

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Why work with IUT?

• We protect your intellectual property
• We pay the bills and handle the paperwork
• We manage a process that can take up to seven
  years
• We source industrial or financial partners
• We negotiate the deals
• You are free to concentrate on your research

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Why work with IUT?

• We have close relationships with investors of
  different scales (angels, venture capital firms)
• IUT Staff have experience
• Technical - industry and academia
• Commercial Finance, Business Development
• Legal IP deals, patent prosecution
• New location - MaRS Discovery District gtgt
  enhanced visibility and network of connections

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Why work with IUT?

• Key Staff
• Physical Sci/Engineering Group
• Mark Bennett (IOS contact) semiconductors,
  materials, photonics, nanotechnology
• Cyril Gibbons chemistry, energy environment,
  materials, engineering processes
• Sam Visaisouk engineering (mechanical, chemical)
  manufacturing, materials
• Fabio Almeida electronics, photonics, sensors
• IT Group software, telecoms, wireless
• Life Sciences Group pharma, biotech, medical

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Project Screening

• IUT does not take on every disclosure
• Key screening criteria
• Market potential
• Patentability
• Stage of development
• People
• MARKET POTENTIAL !

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IUT and IOS

• Collaborative Partnership wrt commercialisation
• Contacts
• Mark Bennett (IUT)
• Karen Grant (IOS)

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IUT and IOS

• IUT/IOS Technology Assistants
• Grad students trained in due diligence for
  commercial opportunities
• Collaboration on NSERC I2I applications
• Working structure to look at other
  opportunities in technology transfer and industry
  relations

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ORCP

• Tech Transfer Toronto Proof of Principle Fund
• 10-15 projects annually
• Stage 1 (15k - 25k)
• Stage 2 (up to 60k)
• Eligible activities
• Stage 1 technical feasibility and technology
  assessments, Business plan development,
  Competitive market intelligence / Market studies
• Stage 2 Prototyping / New product development
  (75 of the fund)

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ORCP

• Tech Transfer Toronto
• TTT Network includes
• UofT, Sunnybrook, Bloorview Kids Rehab, Toronto
  Rehab and York University
• OPIC and CNII
• Three Technology Transfer staff to manage program
  and support projects
• TTT POP fund is open to all members of the TTT
  Network if approved by the Tech Transfer Office
  or Business Development Officer

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Why commercialize?

• It brings recognition to you and to your
  institution
• It allows you to see your hard work being put to
  use
• Products created from your research could help
  create jobs and wealth, save lives or improve
  living standards
• It can be profitable

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Commercializing Inventions

• First step is to obtain ownership from the
  University
• Disclosure
• Assignments
• Decide if you want to do it on your own or work
  with a partner (e.g. IUT)
• Commercializing IP takes time, money and
  expertise. Most inventions never even recoup
  costs of patenting.

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Licensing

• Licensing is a contractual arrangement allowing
  someone to make, use or sell your patented
  technology without fear of litigation, usually
  for a share of profits (royalties)
• Advantage over selling IP because a license can
  be terminated ownership is forever!

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Licensing Arrangements

• Exclusive vs. non-exclusive
• Limited by
• field-of-use and/or
• territory
• Up-front fee, Annual fee, percentage of sales,
  per unit fee
• Royalty rate will depend on market-readiness,
  profit margins and value added or cost savings
• Never over-value your IP (1-5 is typical)
• Annual minimums, milestones
• Start-up companies may want ownership

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Start-Ups

• Very difficult to commercialize disruptive
  technologies by licensing
• Set up a company to develop, prove concept, prove
  market etc.
• A technology company is not likely to succeed on
  a single product idea
• need a platform technology/ies
• Most VCs will not be interested in companies with
  products whose target revenues are under 100
  million annually.

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Company Creation

• Technology ? Product
• There is always a competitive product
• People factors and management experience start to
  overtake technology in importance
• Time to market vs. burn rate is critical
  consideration

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Success Stories

• Opalux Inc.
• Photonics Crystals IP Geff Ozin
• IUT managed the IP portfolio
• IUT brought in
• Angel Investors
• CEO
• Funding (OCE/MMO)
• IUT negotiated the deals
• 3 patents licensed in return for equity and
  royalty
• Shareholders agreement
• Ongoing research contracts
• Investment in company

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Summary

• If you think something may have commercial value,
  take the time to get advice and consider
  patenting
• Do not disclose in a public forum unless you are
  certain you have no wish to patent
• Patent, Publish, Prosper!
• You are in the drivers seat, but there is lots
  of assistance available

ALWAYS DISCLOSE TO UofT
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Finally

• Any Questions?