CLEO 2013 - Technology Transfer

May 23, 2013
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About This Webinar
This free webinar, sponsored by the Technology Transfer program of CLEO: Market Focus and Photonics Media, complements the live event, which will be held on Thursday, June 13, in the CLEO:2013 Exhibit Hall Session Area from 9:30 a.m. to 12:30 p.m.

Additional Question & Answer from the Webinar (below)

Don Golini
SANICA Ventures, LLC

Some Thoughts About Licensing University IP

Don will explore various aspects of licensing university-based technology to startups. Issues to be addressed include: licensing to startups vs. established companies, royalties vs. equity, upfront license (and other) fees, patent control and expenses, and future inventions/improvements.

Don Golini founded QED Technologies in 1996 based on intellectual property licensed from the University of Rochester. QED was sold in 2006 to Cabot Microelectronics Corporation, and Don exited the business in 2010. Since then he has taught a course at the Simon School of Business in technical entrepreneurship, become chairman of the Rochester Angel Network, and is currently managing a $3.5M venture fund for the Rochester Institute of Technology.

Additional Question & Answer from the Webinar

Q: You quote some suggested percentages in return for IP (e.g. 1-2% for provisional patent, etc). Is that percentage dilutable? e.g. Consider the following case. There are two co-founders who take 50% and 48%, and give 2% to the university in exchange for a provisional patent. But there are unallocated shares too, which the company reserves at time of incorporation, so they can give them to future investors in exchange for equity. The founders then give ""x"" shares to an investor in exchange for $y. So now the founders have diluted themselves. Does the university's 2% also get diluted?

A: It is reasonable for the University to request anti dilution protection up to some valuation, for example $2M. This would be a negotiated amount, above which, all parties would be diluted pro rata.

Mark Gallagher, PhD
Partner, Registered Patent Attorney
Knobbe Martens IP law firm

Successful Technology Transfer From Universities:  Ten Important Considerations

Many successful companies have been built on technology transferred from universities. Likewise, for small start-ups and large businesses alike, effective transfer of intellectual property (IP) can be critical. This talk reviews 10 important considerations for successful IP transfer from universities. Subjects covered include:

• Do’s and don’ts” for IP transfer from universities,
• Facets of the agreement between the university and the business,
• Strategies to enhance relationships between the university and the business, and
• How the new first-to-file patent law affects technology transfer from universities.

Dr. Gallagher specializes in patent prosecution in the areas of lasers and optics and currently represents clients in a variety of optics technologies, including telecommunications, medical optics, photolithography, optical instrumentation, and ophthalmic applications. Prior to joining Knobbe Martens, he performed patent prosecution in semiconductor technology and optics for Benman, Collins and Sawyer.
technology transferBusinessResearch & TechnologyCLEO
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