How patents can provide additional revenue streams for Houston innovators

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A patent is an asset — says this Texas-based intellectual property expert. Photo via Getty Images

Seeking patent protection can offer a substantial competitive advantage to startups looking to raise capital, especially during a venture capital downturn. Besides the protection patents can provide against intellectual property theft, they are also assets that can translate into expansion opportunities and additional revenue streams. These factors are important to institutions and individuals that invest in startups, as they may reduce downside risks to their investments and help outline a growth trajectory.

As Kathi Vidal, under secretary of commerce for intellectual property and director of the U.S. Patent and Trademark Office, said during a speech last year, “having a [patent] pending application helps secure funding, and it keeps potential competitors out of your space.”

The experience of Austin-based VoChill, a startup that created a new line of personal wine chillers, offers a case study of how filing for patent protection as early as possible can set up any startup for success, not only when seeking to raise capital, but also when working to expand its commercial relationships and distribution channels.

Filing for patents quickly gave VoChill’s founders a competitive advantage when approaching potential investors, as it demonstrated the management team’s high level of preparedness and business acumen. For investors who eventually committed capital to the startup, the filings signaled a safer bet on investing in VoChill.

There is plenty of evidence indicating that patents help attract capital and generate growth opportunities. A study conducted by professors from Harvard Business School and New York University’s Stern School of Business found that patent protection increased startups’ odds of receiving venture capital funding by 59 percent.

PitchBook data shows that startups seeking patents raise more capital than their non-patent-seeking peers. About 58 percent of venture capital went to startups with patents or with patent applications from 2011 to 2020, the research firm notes.

Patents can also help drive a startup’s expansion and grow sales. According to the National Bureau of Economic Research, or NBER, the approval of a startup’s first patent application increases its employee growth by 36 percent over the following five years. After five years, a new company with a patent increases its sales by a cumulative 80 percent more than companies that do not have a patent.

Patents can also increase a startup’s chances of obtaining distribution deals or, in the case of consumer products, partnerships with retailers. In VoChill’s experience, patent protection is a recurring theme in conversations not only with investors but also distributors and retailers.

Patents offer startups the possibility to pursue a licensing model as well. Licensing or selling the rights to a patent so that others may produce products or processes based on that patent can bring in ongoing revenue streams.

Down the line, having patent protection can lead to better exit opportunities, be it by going public or via a private divestiture.

According to the NBER, having patents more than doubles the probability that a startup is eventually listed on a stock exchange.

PitchBook data, meanwhile, shows that patent-seeking companies go public at a rate more than five times higher than non-patent-seeking companies (23.2 percent versus 4 percent).

In the case of exits via a sale of the startup, the median exit value for patent-holding companies is 154.9 percent higher than it is for companies without patents per year on average, according to PitchBook.

While the business case for seeking patent protection is clear, startups should keep a few considerations in mind when seeking to do so. Understanding time bars is crucial; for example, the United States generally allows only one year to file a patent application after an invention is publicly written about, shown, used, or otherwise disclosed, and overseas often no one-year “grace period exists.”

Still, other important predicates are finding out whether the innovation is truly new, identifying the most crucial components of a product or system, and thinking about what aspects competitors are likely to discover and copy.

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Chris Palermo is partner at Baker Botts where he specializes in intellectual property development. Lisa Pawlik is CEO of VoChill, a company that creates individual wine glass chillers.

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A patent is an asset — one with a price associated with it when it comes to procuring a loan for your business. Photo via Getty Images

Rice research: What innovations can be used to borrow against?

Houston voices

For companies and leaders, patents represent important assets. They’re a marker of innovation and tech development. But patents do so much more than protect intellectual property. Firms increasingly deploy them as collateral to secure loans. Between 1995 and 2013, the number of patents pledged as loan collateral increased from about 10,000 to nearly 50,000. Forty percent of U.S. patenting firms have used patents as collateral.

However, patents are intangible assets, and their liquidity and liquidation value are difficult to assess. To evaluate an individual patent, lenders must consider the invention space to which the patent belongs. A patent’s linkage to prior inventions can provide important information for lenders, as the linkage affects the extent to which the patent under consideration may be redeployed and potentially purchased by other firms in the case of loan default.

Rice Business professor Yan Anthea Zhang examined more closely how this market operates and how both lenders and borrowers can make more informed decisions on which patents make appealing collateral. In their paper, “Which patents to use as loan collateral? The role of newness of patents' external technology linkage,” Zhang, who specializes in strategic management, and her co-authors studied the data on 107,180 U.S. semiconductor patents owned by 436 U.S. firms. The team focused on semiconductor patents because the semiconductor industry involves intensive innovation, which leads to many patent applications and grants. The market for semiconductor patents is an active and well-functioning market, given specialization in different stages of the innovation process and the growing technological market. Information on whether a patent was used as loan collateral came from the USPTO Patent Assignments Database.

Zhang and her colleagues argue that lenders prefer patents linked to prior inventions that are relatively new because these patents are riding on recent technology waves and are less likely to become obsolete. As a result, such patents are likely to remain deployable to other firms in the future. However, patents that are based upon too new prior inventions might not prove to be commercially viable and carry higher risk for lenders.

As a result of this research, Zhang and her colleagues found an inverted U-shape relationship to demonstrate the likelihood that a patent will be used as loan collateral. On one end, patents based upon the newest prior inventions, on the other, patents based upon mature prior inventions. The curve of the U-shape represents the sweet spot for patent collateral—the patents’ technological base is new enough to be relevant and competitive with other firms in its invention space, but not so new that it has yet to prove market success.

Zhang’s team also found that the impact of external linkage also varies depending on borrower attributes, especially the borrowers’ expertise in the invention space. If a borrower is a technological leader in the invention space, the market tends to give the borrower credit, and as a result, even if its patents are based upon very new prior inventions, its patents are still likely to be accepted as collateral.

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This article originally ran on Rice Business Wisdom and was based on research from Yan Anthea Zhang, the Fayez Sarofim Vanguard Professor of Management at Rice Business.

Doris Taylor from the Texas Heart Institute has been named to the National Academy of Inventors.

Houston inventor receives national recognition for leading innovation

Leading lady

A Houston inventor is being recognized for her leadership within cardiovascular regenerative medicine. Doris A. Taylor from the Texas Heart Institute has been named among the National Academy of Inventors' 54 academic inventors to the spring 2019 class of NAI Senior Members.

Taylor's work involves finding alternatives for the current practices for organ transplants, including the whole organ decellularization/recellularization technologies she developed in 2008.

"Dr. Taylor's work has revolutionized the field by making it possible to bioengineer scaffolds that effectively mimic natural organs," says Dr. Darren Woodside, Texas Heart Institute's vice president for research, in a news release. "The three U.S. patents she currently holds have spun off 28 international patents, stimulating the worldwide tissue engineering industry. Her current research team is refining these technologies and developing others, potentially revolutionizing the transplantation industry and eliminating wait lists for life-saving transplantable organs."

NAI selects its honorees by identifying their impact on the welfare of society, the release reads, and have proven success with their patents, licensing, and commercialization.

NAI Senior Members are active faculty, scientists and administrators from its Member Institutions who have demonstrated remarkable innovation producing technologies that have brought, or aspire to bring, real impact on the welfare of society. They also have proven success in patents, licensing and commercialization.

An individual's nomination for the NAI Senior Member class by its supporting institution is a distinct honor and a significant way for the organization to publicly recognize its innovators on a national level.At their host institutions, Senior Members foster a spirit of innovation, while educating and mentoring the next generation of inventors.

The new class of NAI Senior Members includes representatives from 32 institutions. Texas A&M University has two researchers in the class — Robert Balog, an associate professor in the Department of Electrical and Computer Engineering, and Balakrishna Haridas, a professor of practice in the Department of Biomedical Engineering and executive director for technology commercialization and entrepreneurship for the Texas A&M Engineering Experiment Station.

This latest class of NAI Senior Members represents 32 research universities and government and non-profit research institutes. They are named inventors on over 860 issued U.S. patents. In February, two Houston inventors were named to the inaugural class of senior members.

"NAI Member Institutions support some of the most elite innovators on the horizon. With the NAI Senior Member award distinction, we are recognizing innovators that are rising stars in their fields," says Paul R. Sanberg, NAI president, in the release. "This new class is joining a prolific group of academic visionaries already defining tomorrow."

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Houston engineers develop breakthrough device to advance spinal cord treatment

future of health

A team of Rice University engineers has developed an implantable probe over a hundred times smaller than the width of a hair that aims to help develop better treatments for spinal cord disease and injury.

Detailed in a recent study published in Cell Reports, the probe or sensor, known as spinalNET, is used to explore how neurons in the spinal cord process sensation and control movement, according to a statement from Rice. The research was supported by the National Institutes of Health, Rice, the California-based Salk Institute for Biological Studies, and the philanthropic Mary K. Chapman Foundation based in Oklahoma.

The soft and flexible sensor was used to record neuronal activity in freely moving mice with high resolution for multiple days. Historically, tracking this level of activity has been difficult for researchers because the spinal cord and its neurons move so much during normal activity, according to the team.

“We developed a tiny sensor, spinalNET, that records the electrical activity of spinal neurons as the subject performs normal activity without any restraint,” Yu Wu, a research scientist at Rice and lead author of the study said in a statement. “Being able to extract such knowledge is a first but important step to develop cures for millions of people suffering from spinal cord diseases.”

The team says that before now the spinal cord has been considered a "black box." But the device has already helped the team uncover new findings about the body's rhythmic motor patterns, which drive walking, breathing and chewing.

Lan Luan (from left), Yu Wu, and Chong Xie are working on the breakthrough device. Photo by Jeff Fitlow/Rice University

"Some (spinal neurons) are strongly correlated with leg movement, but surprisingly, a lot of neurons have no obvious correlation with movement,” Wu said in the statement. “This indicates that the spinal circuit controlling rhythmic movement is more complicated than we thought.”

The team said they hope to explore these findings further and aim to use the technology for additional medical purposes.

“In addition to scientific insight, we believe that as the technology evolves, it has great potential as a medical device for people with spinal cord neurological disorders and injury,” Lan Luan, an associate professor of electrical and computer engineering at Rice and a corresponding author on the study, added in the statement.

Rice researchers have developed several implantable, minimally invasive devices to address health and mental health issues.

In the spring, the university announced that the United States Department of Defense had awarded a four-year, $7.8 million grant to the Texas Heart Institute and a Rice team led by co-investigator Yaxin Wang to continue to break ground on a novel left ventricular assist device (LVAD) that could be an alternative to current devices that prevent heart transplantation.

That same month, the university shared news that Professor Jacob Robinson had published findings on minimally invasive bioelectronics for treating psychiatric conditions. The 9-millimeter device can deliver precise and programmable stimulation to the brain to help treat depression, obsessive-compulsive disorder and post-traumatic stress disorder.

Houston clean hydrogen startup to pilot tech with O&G co.

stay gold

Gold H2, a Houston-based producer of clean hydrogen, is teaming up with a major U.S.-based oil and gas company as the first step in launching a 12-month series of pilot projects.

The tentative agreement with the unnamed oil and gas company kicks off the availability of the startup’s Black 2 Gold microbial technology. The technology underpins the startup’s biotech process for converting crude oil into proprietary Gold Hydrogen.

The cleantech startup plans to sign up several oil and gas companies for the pilot program. Gold H2 says it’s been in discussions with companies in North America, Latin America, India, Eastern Europe and the Middle East.

The pilot program is aimed at demonstrating how Gold H2’s technology can transform old oil wells into hydrogen-generating assets. Gold H2, a spinout of Houston-based biotech company Cemvita, says the technology is capable of producing hydrogen that’s cheaper and cleaner than ever before.

“This business model will reshape the traditional oil and gas industry landscape by further accelerating the clean energy transition and creating new economic opportunities in areas that were previously dismissed as unviable,” Gold H2 says in a news release.

The start of the Black 2 Gold demonstrations follows the recent hiring of oil and gas industry veteran Prabhdeep Singh Sekhon as CEO.

“With the proliferation of AI, growth of data centers, and a national boom in industrial manufacturing underway, affordable … carbon-free energy is more paramount than ever,” says Rayyan Islam, co-founder and general partner at venture capital firm 8090 Industries, an investor in Gold H2. “We’re investing in Gold H2, as we know they’ll play a pivotal role in unleashing a new dawn for energy abundance in partnership with the oil industry.”

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This article originally ran on EnergyCapital.

3 Houston innovators to know this week

who's who

Editor's note: Every week, I introduce you to a handful of Houston innovators to know recently making headlines with news of innovative technology, investment activity, and more. This week's batch includes an e-commerce startup founder, an industrial biologist, and a cellular scientist.

Omair Tariq, co-founder and CEO of Cart.com

Omair Tariq of Cart.com joins the Houston Innovators Podcast to share his confidence in Houston as the right place to scale his unicorn. Photo via Cart.com

Houston-based Cart.com, which operates a multichannel commerce platform, has secured $105 million in debt refinancing from investment manager BlackRock.

The debt refinancing follows a recent $25 million series C extension round, bringing Cart.com’s series C total to $85 million. The scaleup’s valuation now stands at $1.2 billion, making it one of the few $1 billion-plus “unicorns” in the Houston area.

Cart.com was co-founded by CEO Omair Tariq in October 2020. Read more.

Nádia Skorupa Parachin, vice president of industrial biotechnology at Cemvita

Nádia Skorupa Parachin joined Cemvita as vice president of industrial biotechnology. Photo courtesy of Cemvita

Houston-based biotech company Cemvita recently tapped two executives to help commercialize its sustainable fuel made from carbon waste.

Nádia Skorupa Parachin came aboard as vice president of industrial biotechnology, and Phil Garcia was promoted to vice president of commercialization.

Parachin most recently oversaw several projects at Boston-based biotech company Ginkjo Bioworks. She previously co-founded Brazilian biotech startup Integra Bioprocessos. Read more.

Han Xiao, associate professor of chemistry at Rice University

The funds were awarded to Han Xiao, a chemist at Rice University.

A Rice University chemist has landed a $2 million grant from the National Institute of Health for his work that aims to reprogram the genetic code and explore the role certain cells play in causing diseases like cancer and neurological disorders.

The funds were awarded to Han Xiao, the Norman Hackerman-Welch Young Investigator, associate professor of chemistry, from the NIH's Maximizing Investigators’ Research Award (MIRA) program, which supports medically focused laboratories. Xiao will use the five-year grant to advance his work on noncanonical amino acids.

“This innovative approach could revolutionize how we understand and control cellular functions,” Xiao said in the statement. Read more.

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