How to Commercialize University-Enterprise LED Achievements? Analysis of Patent Transfer Models and Bottlenecks
The biggest problem encountered in the transfer of scientific research achievements is the recognition of value between both cooperating parties. How do the two parties meet, negotiate, and ultimately establish a cooperative relationship? Can all scientific research achievements be successfully transferred?
A reporter learned from the Intellectual Property Office of the Nanjing Municipal Science and Technology Commission that as of November this year, Nanjing has filed 39000 invention patent applications, a year-on-year increase of 63.7%; invention patent applications amounted to over 14800, a year-on-year increase of 48.3%. What Nanjing lacks is the ability to "monetize" technology. The most prominent problem is insufficient transformation of scientific and educational talent resources, and the level of transformation of scientific and technological achievements is too low.
At the 2012 China (Nanjing) Patent Fair recently held, Southeast University and Nanjing Siyou Optoelectronics Technology Co., Ltd. (hereinafter referred to as "Siyou Optoelectronics") signed an agreement to jointly develop LED lamp automatic assembly technology and production lines, with an R&D amount of 1.2 million yuan. A supercritical nanocomposite aerogel particle technology from Nanjing Tech University was transferred to Nanjing Tianyin Technology Co., Ltd. (hereinafter referred to as "Tianyin Technology") for a transfer fee of 5 million yuan.
What stories lie behind these university technology transfer deals? How do they distribute the interests involved? A reporter conducted in-depth interviews.
Establish a new company, with the enterprise as the major shareholder
Enterprises eager for transformation and upgrading, universities hoping for the commercialization of research results—this "perfect match" is the biggest motivation for them to become good cooperation partners.
The "Supercritical Nano-Composite Aerogel Particle Technology" has been a research project at the University's School of Materials for many years. In August and September 2011, the School of Materials made contact with Tianyin Technology, and the enterprise also learned about this project through research, market analysis, and development prospects," said the relevant person in charge at the School of Materials Science and Engineering of Nanjing Tech University.
"For enterprises actively seeking transformation, this is an emerging industry. At the same time, this industry was included for the first time last year in the national key high-tech development fields. And when the school chooses partner enterprises, it has its own considerations. We require the enterprise to have a certain scale, the strength to undertake this project, and we also look at whether the enterprise's philosophy is consistent with that of the school," said the person in charge.
After both the school and the enterprise had the idea of cooperation, they began to discuss how to cooperate. However, since the university's R&D results were still in the experimental stage and the final results had not yet been scaled up, "how to cooperate and how to scale up remained a question."
Coinciding with Nanjing's proposal of the "1+8" policy, which includes the "321" science and technology entrepreneurship talent project, Dean Shen of the college took the lead, and the school and enterprise jointly applied for the leading talent under "321."
"We wanted to industrialize the project, with the enterprise providing the investment, and the two parties joining forces. This involved handling of equity, among other things. Compared with other schools, Nanjing Tech University has always been quite open-minded. We used the form of technology transfer to transfer to the enterprise; the enterprise paid the corresponding transfer fee to the university, and the university then took a portion of the transfer fee as technology shares for equity participation. Using this method of equity participation, we jointly established the new company Nanjing Tianyin New Materials Technology Co., Ltd."
It is understood that Nanjing Tianyin New Materials Technology Co., Ltd. is one of the subsidiaries under Nanjing Tianyin Technology Group. The "supercritical nano-composite aerogel particle technology" is mainly used in the fields of thermal insulation and adsorption, such as external insulation of kilns and oil pipelines. Based on the evaluation by the patent evaluation company and through communication and negotiation between the two parties, the transfer fee was determined to be 5 million.
After the new enterprise was established, the original company provided the venue and factory internally, while the school mainly provided technical support. After the results were industrialized and brought to market, the profits generated would be distributed according to the shareholding ratio through normal procedures. The school's total share was approximately 25%, while the original enterprise held 75%; subsequent capital increases would be made in proportion to the shares.
The principle of pricing: no one is at a disadvantage
"The circle of electric light source equipment is not large; everyone knows and understands each other. Siyou Optoelectronics knew that the Electric Light Source Research Center of Southeast University is the strongest in equipment research in this industry, so we chose to cooperate with Southeast University," said Lü Jiadong, Director of the Electric Light Source Research Center at Southeast University.
Siyou Optoelectronics was established in 2008, a small joint-stock company with a registered capital of about one million yuan. The company produces production equipment for electric light sources, while the university focuses on the development and research of electric light source equipment.
Prior to this collaboration, Siyou Optoelectronics and Southeast University had cooperated on other projects, mainly in the production equipment for gas discharge lamps. The company commissioned the university to develop equipment or production lines, with the company providing R&D funding, participating in some commissioning, and providing commissioning sites, while the university provided personnel for design, manufacturing, and commissioning work—essentially outsourced R&D. According to the contract, the company first paid 40% of the obligated funds for the R&D project, then paid a second installment during the R&D-to-manufacturing stage, paid 90% when the equipment arrived on site for commissioning, and settled the balance after the project was completed. The time from design to manufacturing for a project is approximately three to six months, and over a year for an entire production line.
It is understood that the contract value for this collaborative transfer project is 1.2 million yuan, which includes design fees, labor costs, manufacturing fees, and equipment commissioning fees.
"Because we are engaged in R&D, the specific price cannot be evaluated in detail. It can only be agreed upon in advance by both parties, based on a position where no one suffers a loss," said Lyu Jiadong.
According to relevant personnel of the Nanjing Municipal Science and Technology Commission, last year Nanjing's intellectual property transaction volume exceeded 12 billion yuan, ranking third among the country's 15 sub-provincial cities. Currently, only some accounting firms can perform intellectual property asset evaluation, but the evaluated value is not the final transaction price. Transferors and buyers still need to communicate and negotiate to reach their respective ideal prices.
Industry insiders said that a newly developed technology only reflects its value when implemented in production. Technology has strong timeliness, and both transfer and implementation involve very complex processes. Therefore, pricing in patent technology transfer differs from that of general commodities. The generally recognized principle for determining a technology transfer fee is that the transferor and transferee share the additional profits obtained from using the technology. Since the transferee bears operational, market, and other risks when implementing the technology, the transferee should take the majority share in the profit distribution; as for the specific proportion, it is determined through negotiation between the two parties. Additionally, calculating additional profits involves many difficulties. Therefore, in technology trade, the actual basis for calculating the technology transfer fee is the sales revenue of the product produced using the technology.
Reporter's Note: Not all research achievements are sought after
Currently, under the traditional research management system, many universities' research work suffers from practical issues such as poor relevance of most patent technologies, weak self-transformation ability, and difficulty in external transformation. These are bottlenecks restricting the transformation of university patent technologies and research results. Not all research achievements have the conditions to be transformed into real products. In universities, many teachers and students have brilliant ideas, but transforming these ideas and practical results into real products depends on the market. Research achievements need to closely match market demand and possess outstanding competitive advantages to attract investment and be transformed. However, many university research achievements often fail to fully meet market requirements in these aspects, making it difficult to attract the attention of investors.#p#Page Title#e#
It is understood that there are currently two main models for universities and enterprises to cooperate in the commercialization of scientific and technological achievements: universities license the patent rights of their research results to enterprises, i.e., result transfer; and universities use their scientific and technological achievements as equity investment. The current mature models for the commercialization of research results are mainly the following three: First, license the patent rights of research results to enterprises, with universities收取 technical transfer fees. Second, the inventors of university research results, that is, some teachers, use their own inventions to raise funds and start companies. Third, the most successful model for realizing the commercialization of research results today is the combination of university research results with social venture capital funds.
The Nanjing Joint Property (Science and Technology) Exchange, officially established last July, mainly provides equity circulation and financing services for non-listed enterprises. It is understood that the Joint Exchange has also opened OTC trading for technology enterprises, allowing them to conduct research result transfer or mortgage transactions here.
Nanjing's "12th Five-Year Plan" for financial development has already incorporated the OTC trading of technology enterprises of the Nanjing Joint Exchange into its content. In addition to equity circulation, the Joint Exchange will also open new platforms, allowing technology enterprises to publicly transfer or mortgage their research results for financing. This measure will accelerate technology-based enterprises in rapidly transforming their results into productivity and accelerate their development. In addition, at the beginning of this year, Nanjing launched the major "Nine Policies on Science and Technology," encouraging university teachers and scientific researchers to leave their positions to start businesses.