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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 l.jpg

Spinning Off in the U.S.

Dr. Gary W. Matkin

Associate Dean

University Extension

University of California, Berkeley


University technology transfer activities l.jpg
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


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Taking Equity Model

Research Institution

License

For Profit Company

Equity

License

For Profit Company

Equity

For Profit Company

License

Equity


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Taking Equity Model

Advantages

  • Replication after established policy

  • Diversification

  • Equity build up

  • No up-front investment

  • Not dependent for return on one technology


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Taking Equity Model

Disadvantages

  • Little control

  • Equity dilution

  • Portfolio management overhead cost

  • Case-by-case negotiations

  • Messy (relations with inventors)


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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


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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


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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


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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


For profit alternative one l.jpg

Equity

License

For Profit

Spin-off

For Profit Alternative One

Research Institution

For Profit Subsidiary

Creates

&

Owns


For profit alternative two l.jpg

License

Equity

For Profit

Spin-off

For Profit Alternative Two

For Profit Subsidiary

Research Institution

Investor(s)

Majority

Owner

Minority

Owner


For profit alternative three l.jpg

License

Equity

For Profit

Spin-off

For Profit Alternative Three

For Profit Subsidiary

Research Institution

Investor(s)

Minority

Owner

Majority

Owner


For profit alternative four l.jpg

License

Equity

For Profit

Spin-off

For Profit Alternative Four

Research Institution

For Profit Partner

New For Profit Venture

Investor(s)

Investor(s)


For profit alternative five l.jpg

License

Equity

For Profit

Spin-off

For Profit Alternative Five

Research Institution A

Research Institution B

New For Profit Venture

Investor(s)

Investor(s)


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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


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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

$


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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”


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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


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Gary W. Matkin

Associate Dean/Director Technology Initiatives

UC Berkeley Extension

gwm@unx.berkeley.edu