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 health tech innovator collaborates on promising medical device funded by DOD

team work

The United States Department of Defense has awarded a grant that will allow the Texas Heart Institute and Rice University 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 and are a long-term option in end-stage heart failure.

The grant is part of the DOD’s Congressionally Directed Medical Research Programs (CDMRP). It was awarded to Georgia Institute of Technology, one of four collaborators on the project that will be designed and evaluated by the co-investigator Yaxin Wang. Wang is part of O.H. “Bud” Frazier’s team at Texas Heart Institute, where she is director of Innovative Device & Engineering Applications Lab. The other institution working on the new LVAD is North Carolina State University.

The project is funded by a four-year, $7.8 million grant. THI will use about $2.94 million of that to fund its part of the research. As Wang explained to us last year, an LVAD is a minimally invasive device that mechanically pumps a person’s own heart. Frazier claims to have performed more than 900 LVAD implantations, but the devices are far from perfect.

The team working on this new research seeks to minimize near-eventualities like blood clot formation, blood damage, and driveline complications such as infection and limitations in mobility. The four institutions will try to innovate with a device featuring new engineering designs, antithrombotic slippery hydrophilic coatings (SLIC), wireless power transfer systems, and magnetically levitated driving systems.

Wang and her team believe that the non-contact-bearing technology will help to decrease the risk of blood clotting and damage when implanting an LVAD. The IDEA Lab will test the efficacy and safety of the SLIC LVAD developed by the multi-institutional team with a lab-bench-based blood flow loop, but also in preclinical models.

“The Texas Heart Institute continues to be a leading center for innovation in mechanical circulatory support systems,” said Joseph G. Rogers, MD, the president and CEO of THI, in a press release.

“This award will further the development and testing of the SLIC LVAD, a device intended to provide an option for a vulnerable patient population and another tool in the armamentarium of the heart failure teams worldwide.”

If it works as hypothesized, the SLIC LVAD will improve upon current LVAD technology, which will boost quality of life for countless heart patients. But the innovation won’t stop there. Technologies that IDEA Lab is testing include wireless power transfer for medical devices and coatings to reduce blood clotting could find applications in many other technologies that could help patients live longer, healthier lives.

Houston investor on SaaS investing and cracking product-market fit

Houston innovators podcast episode 230

Aziz Gilani's career in tech dates back to when he'd ride his bike from Clear Lake High School to a local tech organization that was digitizing manuals from mission control. After years working on every side of the equation of software technology, he's in the driver's seat at a local venture capital firm deploying funding into innovative software businesses.

As managing director at Mercury, the firm he's been at since 2008, Gilani looks for promising startups within the software-as-a-service space — everything from cloud computing and data science and beyond.

"Once a year at Mercury, we sit down with our partners and talk about the next investment cycle and the focuses we have for what makes companies stand out," Gilani says on the Houston Innovators Podcast. "The current software investment cycle is very focused on companies that have truly achieved product-market fit and are showing large customer adoption."



An example of this type of company is Houston-based RepeatMD, which raised a $50 million series A round last November. Mercury's Fund V, which closed at an oversubscribed $160 million, contributed to RepeatMD's round.

"While looking at that investment, it really made me re-calibrate a lot of my thoughts in terms what product-market fit meant," Gilani says. "At RepeatMD, we had customers that were so eager for the service that they were literally buying into products while we were still making them."

Gilani says he's focused on finding more of these high-growth companies to add to Mercury's portfolio amidst what, admittedly, has been a tough time for venture capital. But 2024 has been looking better for those fundraising.

"We've some potential for improvement," Gilani says. "But overall, the environment is constrained, interest rates haven't budged, and we've seen some potential for IPO activity."

Gilani shares more insight into his investment thesis, what areas of tech he's been focused on recently, and how Houston has developed as an ecosystem on the podcast.

Houston startup scores $12M grant to support clinical evaluation of cancer-fighting drug

fresh funding

Allterum Therapeutics, a Houston biopharmaceutical company, has been awarded a $12 million product development grant from the Cancer Prevention and Research Institute of Texas (CPRIT).

The funds will support the clinical evaluation of a therapeutic antibody that targets acute lymphoblastic leukemia (ALL), one of the most common childhood cancers.

However, CEO and President Atul Varadhachary, who's also the managing director of Fannin Innovation, tells InnovationMap, “Our mission has grown much beyond ALL.”

The antibody, called 4A10, was invented by Scott Durum PhD and his team at the National Cancer Institute (NCI). Licensed exclusively by Allterum, a company launched by Fannin, 4A10 is a novel immunotherapy that utilizes a patient’s own immune system to locate and kill cancer cells.

Varadhachary explained that while about 80 percent of patients afflicted with ALL have the B-cell version, the other 20 percent suffer from T-cell ALL.

“Because the TLL population is so small, there are really no approved, effective drugs for it. The last drug that was approved was 18 or 19 years ago,” the CEO-scientist said. 4A10 addresses this unmet need, but also goes beyond it.

Because 4A10 targets CD127, also known as the interleukin-7 receptor, it could be useful in the treatment of myriad cancers. In fact, the receptor is expressed not just in hematological cancers like ALL, but also solid tumors like breast, lung, and colorectal cancers. There’s also “robust data,” according to Varadhachary for the antibody’s success against B-cell ALL, as well as many other cancers.

“Now what we're doing in parallel with doing the development for ALL is that we're continuing to do additional preclinical work in these other indications, and then at some point, we will raise a series A financing that will allow us to expand markets into things which are much more commercially attractive,” Varadhachary explains.

Why did they go for the less commercially viable application first? As Varadhachary put it, “The Fannin model is to allow us to go after areas which are major unmet medical needs, even if they are not necessarily as attractive on a commercial basis.”

But betting on a less common malady could have a bigger payoff than the Allterum team originally expected.

Before the new CPRIT grant, Allterum’s funding included a previous seed grant from CPRIT of $3 million. Other funds included an SBIR grant from NCI, as well as another NCI program called NExT, which deals specifically with experimental therapies.

“To get an antibody from research into clinical testing takes about $10 million,” Varadhachary says. “It's an expensive proposition.”

With this, and other nontraditional financing, the company was able to take what Varadhachary called “a huge unmet medical need but a really tiny commercial market” and potentially help combat a raft of other childhood cancers.

“That's our vision. It's not economically hugely attractive, but we think it's important,” says Varadhachary.

Atul Varadhachary is the managing director of Fannin Innovation. Photo via LinkedIn

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