Making a Difference: Track 4: The Undiscovered Country: Healing the Complex Wound Heal Ohio 2008October 2, 2008 Getting Your Bright Idea to the People Jeffrey P. Jones, Esq.Benesch, Friedlander, Coplan & Aronoff LLP200 Public SquareSuite 2300Cleveland, Ohio 44114-2378(216) email@example.com
Products for the People • Your invention can’t make a difference until it’s available to be used by the public • How do we get it out there? • Commerce!
Getting Your Product to Prime Time • Two Basic Pathways: • Outlicense/Partner with pre-existing company • Difficult without proven track record • Do it Yourself (the Entrepreneurial Pathway) • Higher Possible Financial Reward, much higher risk
Outlicensing • You become passive, with possible exception of scientific advisory role • Resources are readily available for product development, testing and approvals • Your return is lower but more likely to occur!
For the Do-it-Yourself’ers • Starting Your Own Company • Negotiate License from Patent Owner (University or Private employer) • Enormous time commitment • Much greater risk • Much greater financial return if successful
Three Requirements for Successful Start-up • Defensible Technology Platform • Cash • Management • This may be you for a short period of time, but almost certainly won’t be you in the long run • This is a threshhold requirement for most investors
Your New Responsibilities • No longer just about the technology • Fund Raising (will take enormous amounts of time) • Accounting • Taxes (Watch out for irreversible mistakes!) • Payroll • Etc.
Key Characteristics of Marketable Products • Substantial Unmet Need • Defensible Competitive Advantage • Commercially Attractive Cost, Price and Risk Profiles • Think through carefully before you invest your life in the start-up!
Defensible Competitive Advantages • Brand & Marketing Muscle • First Mover Advantage • Intellectual Property Protection (Patents)
What is a Patent? • Right to Prevent Others from using, making, marketing or selling a product using your invention • Does NOT give you the right to DO anything • i.e., it does not grant monopoly rights
Who Owns the Patent? • Initially, each inventor has ownership rights • Did you collaborate on the invention? • If you work for an academic institution or business, you have almost without exception assigned all of your ownership rights over to your employer (and the US gov’t may have rights, too)
What Makes a Good Patent? • Broad Claims that Anticipate the Sweep of Technology Innovation • Readily Differentiable From Claims of Other Patents • Complete Enablement
The Entrepreneur’s Goal • Advance the Product through Efficacy Trials • Will ultimately want to partner with established partner • Building your own business in devices, medical supplies or pharmaceuticals is nearly impossible
Final Points • Know what you don’t know: Seek the advice of experts in business management, accounting, and law along the way • Penny-wise, pound-foolish: There are lots of non-obvious ways to screw up that you can’t fix. Get help early!