FAQ

QUESTION

Q: What is Ethical Licensing?

ANSWER:

 Only engage in licensing, if and only if:

  • The patents are rightfully owned by the university or spinout
  • The patents are of high quality
  • Evidence of use(EoU) suggests a fair royalty is owed to the patent owner
  • No frivolous licensing or lawsuits!
QUESTION

Q: Why University Patents?

ANSWER:

  • Selecting highest quality research universities, academic centers, and hospitals with underutilized patent portfolios;
  • Selecting the target technology segments that are most sought after by industry;
  • Creating strategic relationships with high potential patent portfolios for monetization.
QUESTION

Q: Why is Patent Monetization Critical for Universities?

ANSWER:

63.5%* of the patents from universities are never licensed and eventually abandoned

  • Most patents held by corporations are also not licensed
  • Patents are often created at corporations as a defensive strategy to protect products; universities do not generally have products to defend
  • It makes more sense for universities to monetize patents which are never commercialized because there is not risk that patents will be asserted against them

 

* AUTM Survey 2008-2018 using (patent expense reimbursed/ total patent expenses )



QUESTION

Q: What Percentage of Corporate Patents are Licensed?

ANSWER:

On an average of 40% value of technology is never monetized which are applicable to other divisions and other industries. 

QUESTION

Q: What percentage of University Patents are Licensed?

ANSWER:

Derived from AUTM Survey Data (2008-2018). Legal expenses and legal expense reimbursement was taken as a proxy for licensing of patents.  

QUESTION

Q: Why are University Patents Ripe for Monetization?

ANSWER:

This study by PwC shows Universities enjoy better success in asserting a patent than an individual or a company.

QUESTION

Q: Are there any Successes in Monetizing University Patents?

ANSWER:

Carnegie Mellon ($750M against Marvell Technologies)

Caltech ($1.1 B against Apple and Broadcom) Major win against Apple and Broadcom in a $1.1 billion judgment

Rensselaer Polytechnic Institute ($24.9M)

 

A Monetization Success Story – Carnegie Mellon

  • “A key part of Carnegie Mellon’s mission is making discoveries that have global impact. We are pleased to honor the work of José and Alek, two inventors who provided a major step forward in computing technology, at a time when computing was transforming our world.”  – CMU President Subra Suresh

University as Plaintiff

Defendant

Award

Date Award Was Granted

University of Florida Board of Trustees

Hartmann’s Plant Company

$1 million

21-Jul-17

University of Chicago

10X Genomics

$34.4 million

28-Aug-19

Carnegie Mellon University

Marvell Technology Group

$750 million

17-Feb-16

Wisconsin Alumni Research Foundation (University of Wisconsin-Madison)

Intel

$110 million

5-Oct-09

RPI

Apple

$24.9 million

19-Apr-16

Caltech

Apple; Broadcom

$1.1 billion

29-Jan-20

Cornell University

HP

$184 million (verdict); unknown

May 30, 2008; June 9, 2010

University of Missouri

Par Phamarceutical Inc.

$100 million

22-Sep-14

University of Pittsburgh

Varian Medical Systems Inc.

$35 million

10-Apr-14

University of Texas

Nippon Telegraph and Telephone Corp.

$30 million

6-Oct-08

Regents of University of California

ev3; Boston Scientific Corp., et al.

$11.7 million

31-Oct-07

QUESTION

Q: What is Patent Monetization?

ANSWER:

Most patents (>90%) will never generate any revenue or even recoup the cost of filing the patent. Most patents created by corporations are for defensive reasons. For universities and research foundations which are not in the business of making a product, there is no defensive strategy. Universities have to license, sell or assert the patents to derive value from those assets. Patent monetization is the realization of value that one receives from an entity that is already using the patent without paying a fair royalty. Afterall, a patent is a negative right.

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