The University of Colorado is committed to entrepreneurial efforts as part of its mission to bring technology to market for the benefit of society. The CU Innovations Office engages in proactive facilitation of start-up companies based on CU technology.
20 Years of CU Startups! - Click the image at left for a printable poster highlighting CU's history of startup creation and sustainability over the past 20 years (1994-2014).
Roughly 5-10% of inventions meet the criteria necessary to become startup companies. At CU, this translates to 5-10 startups per year.1
There are several reasons why CU Innovations works to create startups from university inventions:
Startups translate academic inventions into commercial goods and services that benefit the public. This is consistent with the mission of universities
A track record of successful startups helps during discussions about recruitment and retention of high quality faculty.
Startups are an engine for local economic development and job creation, and success in this area demonstrates value of university research to the broader community.
Startups are sometimes the only alternative. In some cases, individual technologies cannot be licensed piecemeal. A great deal of work needs to be done to identify, package, and present a basket of technologies that cohesively offer a commercialization opportunity.
Startups make money -for the inventor, the university, and the business and investment community.
Equity is the currency most readily available to startup companies. Since startups usually begin as a concept, they need time to assemble the resources necessary to maximize chances for success. Often, CU Innovations and the faculty inventor wishing to create a startup, are in a kind of "chicken and egg" situation. The startup needs a secure commitment from the university that it has, or will soon obtain, full and exclusive rights to market a particular technology and the University seeks to grant licenses only to entities it believes have the capability of rapidly, and profitably, commercializing the technology.
To bridge this gap, CU Innovations works to create conditions that are ripe for investment in the startup. Financially, this means the university acts as a founder of the company, understanding that startups typically have little cash and no revenues. As a founder, the university typically accepts non-marketable stock in lieu of cash as compensation. Founders stock is viewed as a reasonable business solution to enhance the overall financial package for the technology acceptable to the company and its future investors, while providing an opportunity for the university to participate in the upside of the company.
No. Stock is not received in preference to cash, but as an adjunct to both up-front license fees and future royalty streams. One way to view the university's position is to look at startups from the perspective of opportunity cost.
The University of Colorado assumes right, title, and interest to inventions and related intellectual property created by university employees. As a result of this policy, and certain obligations under the federal Bayh-Dole Act, the university has created CU Innovations and tasked it with commercializing technologies created at the university. This is typically done in one of two ways: Licensing to an existing entity or creating a start-up.
In both cases, the interests of the inventor and the university are aligned: each party seeks to maximize their return on investment. However, when CU Innovations invests intellectual property into a startup, it is deferring compensation that might be received from licensing the technology to an established company. In some cases, this deferred income, otherwise known as opportunity cost, can amount to significant sums over the period of a license.
Therefore, to mitigate risk and provide the university with the opportunity to increase its potential return, licenses with equity generally do include cash payments:
- Up-front license fees (where applicable and imposing a low cash burden)
- Minimum annual and/or milestone payments
- Royalties on net sales
- Sublicense royalties
Two reasons. First, as discussed above, the university's contribution to a startup is usually in the form of an exclusive license to a portfolio of intellectual property assets. As a company grows, so does its need for follow-on financing. Because the university does not have the cash to participate in later-stage rounds of financing, all compensation must be negotiated in the original license with an understanding that whatever the university receives is the maximum it will ever receive. As such, the university seeks to negotiate economic terms that allow the institution to participate fairly in the upside of the company, without unduly hampering the company's ability to raise capital and execute its business plan.
Second, CU Innovations's mission is to determine the best and highest use of the technology, and then to structure an agreement that ensures the technology will be commercialized for the public benefit. Financial terms, such as Minimum Annual Payments and Sub-License Royalties, are mechanisms to discourage companies from either sitting on potentially valuable technologies (not actively marketing) or merely brokering technologies (acting as a middleman and providing little if any development and commercialization value). In most cases, CU Innovations will also include certain diligence provisions in a license agreement that further encourages the licensee to actively commercialize technology licensed from the university.
In most cases, startup companies seek exclusive licenses from the university to the intellectual property needed to form the core assets of the business. However, in nearly all cases, the work performed in the lab to generate the underlying IP continues well after the initial disclosure and subsequent patenting process. Additional discoveries are often more important to the commercialization of technology than the original invention. As a result, companies seek to secure rights to follow-on improvements via an Option to Future Improvements. Options grant a company a period of time in which to evaluate an improvement for inclusion in the company's IP asset portfolio. If the company elects to exercise the Option, this can be done for a small up-front fee and an agreement to incorporate the new technology into the company's License Agreement under the same terms and conditions as the original. If the company decides not to license the new technology, it is returned to the university for licensing elsewhere.6
CU Startup Process
Startup Assessment - The decision to consider a startup occurs after the initial technology assessment. The inventor(s) and the CU Innovations licensing manager for the technology work jointly to assess both the commercial and the technical value of the invention. In some cases, an engagement team may be formed, under the leadership of our office, to conduct a more detailed evaluation of the invention’s potential. The following factors are considered to evaluate the potential for a startup:
An inventor interested in influencing product development for commercial use
A third-party business champion/entrepreneur identified
A best deployment option in place for the technology (potential for different products/services derived from the technology base)
Potential for raising investment or other development funding and attracting additional management
An understanding of conflict of interest (COI) issues and a workable COI management plan
In addition, we examine patentability and assesses potential patent claim breadth, technical feasibility, and commercial interest to determine whether licensing to an existing company or creating a startup makes the most sense.
Guidance and Feasibility - Once a decision has been reached in favor of a startup, CU Innovations develops an intellectual property protection strategy. In addition, CU Innovations and the inventor will work to create an advisory group involving any combination of technology/market domain experts, business process experts, serial entrepreneurs and early-stage investors. During this initial period, the primary focus is to determine the feasibility of the company. Over time and as feasibility becomes more apparent, CU Innovations will work with the inventor and other proposed members of the technical team to determine the level of their participation in the new company.
Transferring the Technology - After the startup team with a relevant mix of business experience and technical knowledge has been established and the company formed, CU Innovations will typically negotiate with the lead business person, or "business driver," to secure intellectual property rights for the new company from CU. Our preferred initial approach for the company to secure the invention is to execute a time-limited option, giving the company the right to enter into a future exclusive license for the invention. The option agreement will include certain performance requirements for moving to a license, such as a defined and agreed-upon role for the inventor(s), a university-approved conflict-of-interest management plan, a viable business strategy (as evident in the business plan), an experienced outside CEO, and initial funding and solid prospects for accessing additional needed capital.
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