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“Inventor” files for patent on method of commercializing academic research

Citing a gap in the models currently used to bring academic research to the marketplace, an “inventor” has applied for a U.S. patent (USPTO Application #: 20080201193) for what is claimed as a novel method for commercializing university-developed technologies. The novelty, says applicant Jan Buck, is in creating an independent operating company whose business is to generate cash and profits on its own account “from the full panoply of commercialization vehicles as needed to achieve the business plan rather than the happenstance needs of the target technologies,” the application abstract reads. It also states that the patented business method would “enhance shareholder value in the company itself independent and apart from the projects and ventures it develops in its business.”

In making the case for novelty, the applicant lists the other “known models for general technology commercialization” including VCs, TTOs, university-affiliated commercialization entities, incubators, management companies, and public commercialization companies. Each one falls short of a profit-focused operating company envisioned by the patent, Buck claims. VCs intend to turn a relatively short-term profit on investor funding, TTOs are administrative offices that do not generally profit on their activities and return their license fees to the university, and affiliated commercialization entities such as Arch Capital — co-owned by Argonne Labs and the University of Chicago — are designed “to generate cash for their affiliated organizations and not operate solely for their own account.” The closest kin to the application’s method are the public commercialization companies (PCCs) that have recently appeared primarily in the UK and gone public, notably Imperial Innovations Plc and IP Group Plc, spun out of London’s Imperial College and Kings College, respectively. “While a PCC is intended to be a business, which a public listing would require, its technology base is limited; the PCC largely focuses on licensing, and it does not appear to have a plan for profitably conducting a going concern. It does not appear that either of the specified PCCs provides significant incubation help or development activity,” the application states, concluding that “no mechanism has yet been devised to make commercialization itself a sustainable and productive engine for monetizing academic research to support a profitable and growing going concern.”

The business method patent, according to its application, offers a model “distinct from other known technology commercialization models” in its organization as an operating company with a solitary focus on generating profits in accordance with a business plan. “This is in contrast to the traditional one-off model in which a single technology or related group of technologies is commercialized into a business in and of itself. In accordance with the present inventive methods, such a technology commercialized in the traditional one-off model would form only one component (such as a project and/or venture) … of the independent operating entity contemplated herein,” the application continues. The entity would include a venture fund vehicle to help commercialize early stage research and would also generate fee income from industry customers. Those fees would be used as additional investment capital for new projects and ventures, as would funds generated by “liquidity events” of individual projects.

We will be anxiously awaiting the USPTO’s decision on the application, as well as challenges from other commercialization entities. Go to: FreshPatents

Posted September 3rd, 2008 under Tech Transfer


Read the Comments

Pingback from Novelty of business method patent on tech commercialization in doubt | Technology Transfer Tactics October 29, 2008, 11:50 am

[...] a Sept. 3rd post, we noted a recent business method patent application filed by Jan Buck, describing a [...]

Comment from Prof. Jim Wolfe October 11, 2008, 3:54 pm

I’ve asked our patent gurus if I really need to spend the time writing silly letters about this even sillier notion. But, it will serve as great grist for the classroom about what is NOT patentable. We’ve been doing exactly what the presumed patent author claims is novel for the past half dozen years or more.

But, gee, I wonder if I start a new business to deal with the current sub-prime and Wall Street mess – since we have never had exactly THIS particular mess before – if I can get a patent on the process, and be the only one hired to do the clean up… Now, that’s a novel idea.

Prof Wolfe

Comment from Jeremy Horn September 5, 2008, 5:37 pm

Simply amazing! (and absolutely ridiculous) I’m recommending this article to my readers for their Weekend Reading…

http://tpgblog.com/2008/09/05/the-product-guys-weekend-reading-september-5-2008/

Jeremy Horn
The Product Guy
http://tpgblog.com

Comment from Dr. Mark Fisher September 5, 2008, 4:03 pm

Dear Editor

It is certainly true that a number of UK initiatives in recent years have evolved the models of commercialising university-based research and, unfortunately for Jan Buck, this also includes the model proposed in the patent application USPTO Application #: 20080201193.

Whilst much of this trend has been associated with pipeline deals between Universities and companies such as IP Group, the diversity of research that can potentially be commercialised from the university sector requires specialist knowledge to understand truly the intricacies of the markets into which one can sell these assets. For this reason, Exomedica Ltd, (www.exomedica.com) started trading in 2005, specialising the MedTech sector, negating the need for large commercialisation teams across broad a broad technology landscape. The company brings together a number of entrepreneurs from the fund management sector, business sector and the scientific sector, with collectively +70 years experience in early stage business and start-up, private sector and public sector commercialisation and funding.

Exomedica works across the UK university sector, having contact with over 45 Higher Education Institutes through their TTOs, the National Health Service (NHS), having preferred partnership status with 33% of the NHS Innovations network and also works with Research Institutes throughout the UK.

Having reviewed the patent application submitted by Jan Buck, this describes very well what we do. Exomedica does not run a fund, nor does it recommend investments to other potential investors and pitch for businesses. Exomedica is a medical technology developer, each of its technologies being housed in special purpose vehicles (SPVs) to which it provides finance and a development team comprising its senior management. The model is one that is intended to create a sustainable business from a portfolio of MedTech development programs; bringing new technologies into the portfolio each year and exiting opportunities as they mature.

In this way the value of each project can be realised in a number of ways. Predominantly, value will be created from licensing activity and occasionally, a golden egg may realise an IPO opportunity in its own right. Value may also be generated by acquisition or asset sale. The model adopted enables Exomedica to work towards the best exit opportunity for each technology, unencumbered by the restrictions that surround investment funds and enterprise funds secured from governments. Employing this model also enables each SPV to secure funding for other sources, and Exomedica works with Business Angel Networks and regional funding initiatives, leveraging grants and other non-recourse finance en route to maximise the value of its investment.

Since commencing business in 2005, Exomedica has 13 technology programs underway, in SPVs, with two CE marked products, two products entering clinical trials and one device generating early sales. Exomedica presents to investors the opportunity to diversify their MedTech investment, avoiding the risk of a single product business, with the additional possibility of that blockbuster product.

Much of the work of the SPVs is subcontracted to specialists in the sector to expedite development programs and avoids reinventing the wheel. In this way each SPV can be accelerated or decelerated with the mood of the markets and the availability of funds, or indeed the ‘in vogueness’ of each technology at a particular time, without compromising any individual’s livelihood. Independent management of an SPV is only created once the technology has been de-risked and a product enters trials and the latter stages of the regulatory processes i.e. when there is truly something to advertise. The current portfolio includes;

Zilico Ltd – a cervical cancer diagnostic

Fertlity Focus Ltd – an ovulation predictor technology and a laparoscopic infertility diagnostic product (fertiloscopy)

Oncomorph Analysis Ltd – a prostate cancer staging technology for MRI

Suturox Ltd – an absorbable orthopaedic silk suture

Diamatrix Ltd – a platform technology for lateral flow devices

Heartvalve Ltd – a minimised housing design for aortic valves

Although Exomedica is UK-based, it is not UK-centric, and considers the global needs and markets in its processes. Exit opportunities will therefore be realised across the developed MedTech world taking advantage of territorial dominance and regional needs in its commercialisation strategies.

Sorry Jan. Nice try.

Kind regards

Dr Mark Fisher

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