Bound for Market?
| So you’re a faculty member with a great idea, and you want to go to market?
The folks at the USC Stevens Institute for Innovation have some advice. First of all, be realistic. Like Stanford and many other research universities, USC only files for patents on about half of its faculty inventions, says Joe Koepnick, senior director of innovation advancement and business development for the institute. Filing for patents is expensive and time-consuming, Koepnick says, so the institute first makes a preliminary judgment about an invention’s commercial feasibility. If turned down, the inventor can always decide to file individually. And if you’re accepted, don’t panic. Many of the institute’s licensing experts have been on the other side of the table. Koepnick, who was for many years a senior licensing associate in Stanford’s Office of Licensing and Technology, later headed his own successful startup. He found himself negotiating with his old office. As a direct result, USC’s contracts omit some conditions that Koepnick found onerous back then. For decades, USC has helped campus innovators. Before the USC Stevens Institute was established in the Office of the Provost, there was a separate Office of Technology Licensing. But the institute, which incorporates the activities of that former office, has opened the door much wider to include the entire campus community. It has ramped up innovator support programs including office hours, a planned mentoring community and a dedicated institute staffer who helps with the logistical issues such as accounting and payroll questions that often plague startups. The university wants to make the innovation process clearer and better-defined than it has been in the past, according to institute leader Krisztina Holly. “It’s important to be transparent,” she says. “I think a lot of universities have a problem with this. It’s this black box and it’s really intimidating.” Now about royalties. Holly and Koepnick follow established industry norms. Faculty who start successful companies will see revenues from both sides, since part of USC’s gains go back to the inventor under the university’s intellectual property policy. “We really try to be fair,” says Holly. “If you were to do a deal with industry, it would take as long and it would end up not necessarily even being so generous. “Our goal is to get it out as quickly as possible with some fair consideration for the university. And we’re here to also protect the inventors.” Peter Beerel is one such inventor. An electrical engineer on faculty at the USC Viterbi School of Engineering, he found himself in an extraordinary position to effect a paradigm change in the semiconductor industry. Beerel and his students had created software that enables chip designers to easily produce “asynchronous” circuits – circuits not governed by a global clock signal. These circuits instead wait for local signals to indicate completion of instructions and operations. The technology could have sweeping impact in the semiconductor industry – from higher-performance networking chips for next-generation data centers to lower-power chip sets in cell phones and laptops that will sharply increase battery life. This spring, he decided to take a year’s leave of absence from USC Viterbi to launch his own company, TimeLess Design Automation. Despite all the potential benefits and the clear market opportunity, taking the plunge proved daunting to Beerel. “I oscillated between being extremely terrified and extremely excited,” he recalls. “I was involved in startups before – as a consultant and then as a vice president – but I could never have anticipated the sheer volume of persistence, courage and attention-to-detail I would have to muster [as the principal]. This has been an eye-opening experience.” The journey from professor to entrepreneur began two years ago, with a disclosure to the USC Stevens Institute for Innovation. The new technology is derived from Beerel’s research at USC Viterbi with doctoral student Georgios Dimou MS ’00, performed in collaboration with Fulcrum Microsystems, a semiconductor company based in Calabasas, Calif. When TimeLess Design Automation launched in May 2008, Fulcrum became its first customer. “If I had one piece of advice for another innovator – student or faculty – who is thinking about starting a company, I’d say, ‘Do it!’” says Beerel. “USC has a tremendous network of people who want to help you succeed. As an entrepreneur just starting, you will hear a lot of ‘no’ – but the team at the USC Stevens Institute will help you find the people who say ‘yes.’” – Carl Marziali and Elisa Wiefel
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