2006 Fall Seminar Nice

THURSDAY 19 October
PLENARY: 09:00 - 10:30

OPENING & WELCOME

Jeff Skinner, President ASTP, Welcome, Opening Jean-Pierre Mascarelli, Local counsellor, President of the committee for economy, tourism, and clusters of local government, Team Côte D'Azur, Welcome Frederic Caillaud, Director Licensing and Business Development L'Oréal & President LES France, Trends in Licensing in the Industry: Evolution or revolution PARALLEL : 11:00 - 12:30 LICENSING: PREPARING FOR THE BIG DEAL Case Study I: Applications & Market NON-TRADITIONAL TECH TRANSFER Use your researcher more actively! KEY LEARNING POINTS IN REAL LIFE TT Inventors and ownership You receive a disclosure for a apparently promising invention - your task (in teams) is to identify and report back on the best application for the technology and to assess market potential. Søren Peter Olesen, Panum Institute, Copenhagen University, Denmark Thomas Baaken, Science-to-Business Marketing Research Centre, University of Applied Sciences, Munster, Germany Inventors are sometimes very effective at taking the lead in commercialising their own inventions. They can be highly effective. We learn from an academic who did so and explore the advantages and pitfalls of mobilising and supporting inventors who take on this role. Koen Verhoef, Technology Transfer Manager VU University and Medical Centre, the Netherlands Alain Roman, Contracts and Licenses Director , L'Oréal R&D, France Establishing inventorship may seem straightforward but it often isn’t – and TTO’s can meet with resistance when they try to establish who contributed to an invention and who may part-own it. Yet it is essential to find out prior to licensing. Here we draw on the experiences of a TT manager and understand the position of industry when they in-license IP. 12.30 - 14.00 LUNCH, PARALLEL: 14:00 - 15:15 LICENSING: PREPARING FOR THE BIG DEAL Case study II: Assessing technologies NON-TRADITIONAL TECH TRANSFER Licensing bits and pieces KEY LEARNING POINTS IN REAL LIFE TT Applications and markets What are the criteria by which you assess the commercial potential and set the strategy for an invention? In this session we explore issues of market potential, timing, investment need, applications, markets, end users and ‘monetisation’ – all necessary steps when commercializing new technologies. Steven Potter, Chair Executive Board of the R&D Society, United Kingdom Jens Tampe, Key Account Manager Ascenion GmbH, Germany Some inventions are too small to market by themselves - for example antibodies and software. How can we use external parties to bundle and consolidate such fragmented IP, thereby achieving economies of scale and commercializing technologies that may otherwise sub-critical? Is this ‘bundling’ best left to the private sector? Karen Laigaard, Head Technology Transfer, University of Copenhagen, Denmark Gavin Spencer, Licensing & Alliance Director, Nicox, France TTO’s receive more disclosures than they can possibly handle – on the basis of very little (and usually optimistic) information you have to assess – under pressure - which to pursue and which to reject. How are these decisions made in practice? Based on members concrete experience we show how to identify applications and make realistic market estimates. 15.15 - 15.45 BREAK, PARALLEL: 15:45 - 17:00 LICENSING: PREPARING FOR THE BIG DEAL Case Study III: Commercialisation strategy NON-TRADITIONAL TECH TRANSFER Collaboration-led licensing KEY LEARNING POINTS IN REAL LIFE TT Valuation & deal structure We resume the case study – working in teams to propose a commercial strategy for the invention and to develop an implementation plan. Eli Keshavarz-Moore, Senior Lecturer of Biochemical Engineering University College London, United Kingdom Andre Clerix, IP Manager IMEC, Belgium A major difficulty we have in TT is persuading potential licensees that a technology could be valuable to them. We tend to do this by providing ever more marketing and technical information. In this session we see an entirely different way of engaging with licensees – where applied research collaborations are used as a way of engaging with companies – who take licenses to the background, foreground (or both) once they recognize its value. Clotilde Turleque, Director Technology Transfer and Commercialisation CEA, France Jeff Skinner, Director for Enterprise Partnerships, Unversity College London, United Kingdom One of the perennial problems facing any TTO is the valuing technologies and devising a deal structure that provides the right incentives and fair return to the parties. Based on members concrete experience we illustrate how these issues are resolved in practice. FRIDAY 20 October PLENARY: 09:00 - 10:30 OPENING SESSION John Tyler,General Counsel, Ewing Marion Kaufmann Foundation USA, Universities you can do business with (and those you can’t) 10.30 - 11.00 BREAK, PARALLEL: 11:00 - 12:30 LICENSING: PREPARING FOR THE BIG DEAL Case Study IV: Negotiation Strategy NON-TRADITIONAL TECH TRANSFER Engaging in business oriented activities KEY LEARNING POINTS IN REAL LIFE TT Negotiations and closure Having made contact to potential buyers, how do you see your negotiation & deal strategy? How do you actually make first contact to customers and get their attention? Which deal strategy do you choose, and how do you successfully negotiate it? We discuss different strategies and find one for our case – in preparation for an actual negotiation. Carsten Skamris, CEO Blade Test Centre A/S, Denmark Gerardo Turcatti, Director Biomolecular Screening Facility, Ecole Polytechnique Federale Lausanne, Switzerland When thinking about commercialisation strategies we tend to think in terms of ‘licensing’ or ‘spin-outs’. Both suffer the structural disadvantage of being quite arm’s mechanisms that can inhibit transfer of know-how. Here we look at two more collaborative and effective ways of commercialisation – via joint ventures and high-technology platforms. Simon Youlton, Senior Manager Cancer Research Technology Ltd, United Kingdom Jörn Erselius, Managing Director Garching Innovations, Germany TTO’s often find it difficult to visualise the negotiation process and to move from the ‘selling’ phase to commitment, negotiation and close. In this session we follow two difficult (but ultimately successful) negotiations, identifying critical issues and understanding the TTO’s role in closing the deal 12.30 - 14.00 LUNCH, PARALLEL: 14:00 - 15:15 LICENSING: PREPARING FOR THE BIG DEAL Case study V: Negotiating & closing the deal NON-TRADITIONAL TECH TRANSFER Market / problem driven innovation KEY LEARNING POINTS IN REAL LIFE TT Post deal management A team of TTO people from university will be up against an experienced LES-negotiator from industry. Patrick Chaltin, IP Officer, KU Leuven, Belgium External Investor Universities face specific challenges when exploiting biomedical research and drug related inventions - technology transfer in this area has changed dramatically in the last few years. Together with an external investor, a centre for drug design and discovery is being created at the KU Leuven to pro-actively enhance technology transfer in this field. Chris De Jonghe, Licensing Manager VIB, Belgium Chris de Bruyne, Director Licensing & Business Development Galderma, France Based on members concrete experience we show that we cannot relax because a deal has been closed. There is a lot of work in the implementation – ensuring that the licensee is commercializing the technology and paying those royalties. What do you do when your licensee loses interest? 15.15 - 15.30 BREAK, PLENARY: 15.30 - 16:45 FINAL SESSION : FINAL PLENARY Teams involved in the first track – where they have taken a technology from disclosure to deal – describe which parts they found the most challenging and surprising. We discuss where TTO’s can work alone, when it is more effective to work in teams and where TTO’s need the most support and mentoring from their managers.