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.

From Your Site Articles
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 energy transition tech SPAC goes public through IPO

BLANK CHECK

Houston-based CO2 Energy Transition Corp. — a “blank check” company initially targeting the carbon capture, utilization, and storage (CCUS) sector — closed November 22 on its IPO, selling 6 million units at $10 apiece.

“Blank check” companies are formally known as special purpose acquisition companies (SPACs). A SPAC aims to complete a merger, acquisition, share exchange, share purchase, reorganization or similar business combination in certain business sectors. CO2 Energy Transition will target companies valued at $150 million to $250 million.

Each CO2 Energy Transition unit consists of one share of common stock, one warrant to purchase one share of common stock at a per-share price of $11.50, and the right to receive one-eighth of a share of common stock based on certain business conditions being met.

The IPO also included the full exercise of the underwriter’s option to buy 900,000 units to cover over-allotments. Kingswood Capital Partners LLC was the sole underwriter.

Gross proceeds from the IPO totaled $69 million. The money will enable the company to pursue CCUS opportunities.

“Recent bipartisan support for carbon capture legislation heavily emphasized the government’s willingness to advance and support technologies for carbon capture, utilization, storage, and other purposes as efforts to reduce greenhouse gas emissions [continue],” Co2 Energy Transition says in an October 2024 filing with the U.S. Securities and Exchange Commission (SEC).

Brady Rogers is president and CEO of CO2 Energy Transition. He also is CEO of Carbon Capture Development Co., a Los Angeles-based developer of direct air capture (DAC) technology, and president of Houston-based Antelope Energy Partners LLC, a provider of oil and gas services.

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This article originally ran on EnergyCapital.

Mastering control room management for smoother critical infrastructure operations

Up to Date

Control room management (CRM) systems play an integral role in ensuring the safe and efficient remote operations of automated processes for the world's most critical infrastructures (CI). If anything goes wrong with these CIs, the risks are major: loss of life or catastrophic environmental disasters. For this reason, rigorous regulatory requirements are crucial.

CRM systems give operators the ability to automate and take control of CI processes, giving operators situational awareness and real-time visibility of remote assets. This minimizes the need for manual work and inspection, and scales a company's ability to safely manage many assets over a large geographical area from one control room.

Most CI have to handle hazardous material in some, if not all, of their operational areas. Though different by industry, regulations and oversight are extremely necessary.

ICS (Industrial Control Systems) and CRM tools are key components of real-time monitoring for advanced warning and emergency alarming. The combination of a “green, amber, red” alert on the screen of an operator's control console will prompt them to respond, and potentially lead to following emergency shut-down response procedures. Training and testing of the control systems and their related standards, procedures, and activities are all recorded in a system of record in compliance with regulatory requirements.

Current challenges
One of the biggest challenges is the ability to easily aggregate the data from the many different systems and integrate them with the operator's daily activity and responses to the many notifications they receive. This makes it difficult for handover, when a new control room operator comes in fresh to take over from the operator coming off duty. Ensuring a clean and clear handover that encompasses all the pertinent information, so that the new operator can take over the console with ease and clarity, is much more difficult than some would imagine.

Another issue is the sheer volume of data. When you have thousands of sensors streaming data, it is not unrealistic for a console to receive a few thousand data points per second. Performance and continuity are priorities on a CI control room console(s). So there is no room for error — meaning there is no room for big (quite literally) data.

All of this means that real-time data must be pushed off the operational and process control network and moved into an area where there are no controls, but big data can be stored to produce big-data analytic capabilities, enabling AI, machine learning, and other data science.

Controller/operator fatigue is also an issue. Manual tracking, documenting, and record-keeping increases fatigue, leading to more mistakes and omissions.

Opportunities for improvement
The Houston-based Tory Technologies, Inc.is a corporation specializing in advanced software applications, creating and integrating various innovative technologies, and providing solutions for control room management and electronic flow measurement data management.

Tory Technologies, Inc. can help with the auto population of forms, inclusion of historical alarms and responses, and easy handover of control with active/open issues highlighted, making for an easier transition from one operator to the next.

"CRM is essential for keeping operations safe and efficient in industries where mistakes can lead to serious problems," says Juan Torres, director of operations - MaCRoM at Tory Technologies, Inc. "While many control rooms have worked hard to meet compliance standards, challenges remain that can affect performance and safety. It's not enough to just meet the basic rules; we need to go further by using smarter tools and strategies that make CRM more than just compliant, but truly effective."

Shaun Six, president of UTSI International, notes that, "CRM solutions are scalable. A smart integration with relevant systems and related data will reduce 'white noise' and increase relevance of data being displayed at the right time, or recalled when most helpful."

The future state
Offering CRM as a service for non-regulated control rooms will give economies of scale to critical infrastructure operators, which will allow dispatching, troubleshooting, and network monitoring so operators can focus on more value-add activities.

It can also virtualize network monitoring, ensuring that field machines and edge computers are compliant with industry and company standards and are not exposed to external threats.

Even better: Much of this can be automated. Smart tools can look through each device and test that passwords are changed, configurations are secure, and firmware/software has been properly patched or safeguarded against known exploits.

The sheer volume of data from these exercises can be overwhelming to operators. But a trained professional can easily filter and curate this data, cutting through the noise and helping asset owners address high-risk/high-probability exploits and plan/manage them.

Ultimately, the goal is to make control rooms efficient, getting the right information to the right people at the right time, while also retaining and maintaining required documents and data, ensuring an operators “license to operator” is uninterrupted and easily accessible to external parties when requested or needed.

Integrating smart CRM systems, network monitoring tools, and testing/validating processes and procedures are all easily accessible with current technological capabilities and availability, letting operators focus on the task at hand with ease and peace of mind.

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 three innovators across academia and health care innovation.

Reginald DesRoches, president of Rice University

Rice University President Reginald DesRoches joins the Houston Innovators Podcast to discuss balancing tradition with growth, innovation, and global impact in education. Photo courtesy Tommy LaVergne/Rice University

How does a historic university maintain its legacy while still making room for growth and increased opportunities? That's what Rice University President Reginald DesRoches considers with every decision he makes.

"It's this idea of preserving what's special about the university, while also knowing we need to adapt to a new time, a new Rice, a new time in higher ed, and a new time in society," DesRoches says on the Houston Innovators Podcast.

"There's a healthy tension between preserving what Rice is known for — the culture of care, the close-knit community — while knowing that we need to grow, have a global impact, and position Rice on a global scale. It's something that's constantly in my mind to make sure we do both." Continue reading.

Tatiana Fofanova, CEO of Koda Health

Koda Health has a new service for the 37 million Americans living with Chronic Kidney Disease. Photo courtesy of Koda Health

Chronic Kidney Disease is expensive and common. In fact, 37 million Americans live with the condition. The winner of this year’s Houston Innovation Award for best female-founded business, Koda Health, recognized the need for help among CKD sufferers and has answered the call.

Last week, Koda Health announced the addition of Kidney Action Planning to its suite of services for patients with serious illnesses.

"Kidney Action Planning is designed to fill a significant void in CKD management," Tatiana Fofanova, CEO of Koda Health, says in a statement. "Some studies indicate greater than 70 percent of patients start dialysis in the ER suboptimally, potentially navigating a life-or-death scenario. This is both frightening and largely avoidable with an intervention like Kidney Action Planning, which helps patients better understand CKD.” Continue reading.

Arun Swaminathan, CEO of Coya Therapeutics

Coya Therapeutics appoints a new CEO to lead its innovative Alzheimer's treatment development efforts. Photo via LinkedIn

Coya Therapeutics has named a new CEO. As of Nov. 1, Arun Swaminathan replaced Co-founder Howard Berman in the role. Berman has assumed the title of executive chairman, in which he will still remain active with the company.

Swaminathan started with Coya two years ago as chief business officer. This transition was planned, says the PhD-holding scientist and businessman.

Coya Therapeutics is a publicly traded biotechnology company that is working on two novel treatments for Alzheimer's disease. Coya's therapeutics, which are currently in trials, use regulatory T cells (T regs) to target both systemic- and neuroinflammation in patients. Continue reading.

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