PCIV not Services

A startup is a new business entity formed to commercialize inventions through the development and eventual sale of products or services. Forming a startup company is a type of commercialization strategy; other commercialization strategies include licensing intellectual property or creating a contractual relationship with an established business. A few key factors to consider, when deciding whether to form and launch a startup company or develop a business relationship with an existing company,are:

• the stage of the technology and the level of current product or service development risk;
• the amount it will cost to develop a product to market versus the potential investment return;
• the potential for multiple products or services from the same technology;
• whether or not there is a sufficiently large competitive advantage and target market;
• the amount of room for new entrants in the market;
• potential revenues or funding sources sufficient to sustain and grow a company; and
• alignment with potential collaborators and/or acquirers.

In partnership with Penn inventors and entrepreneurs, PCI can help to evaluate these and other factors.

The choice to establish a new company for commercializing Penn-owned intellectual property 

is typically a mutual decision made by PCI and the inventors of the technology in question. PCI provides a variety of new venture products and services to faculty and staff through its PCI Ventures group. A faculty or staff member at Penn can establish a business without the assistance of Penn as long as the faculty member and the business otherwise are compliant with Penn’s policies. A business created in partnership with Penn, or through independent means, must still take a license to any Penn-owned IP it intends to use.

The PCI Ventures team within the Penn Center for Innovation provides alternative paths for faculty, staff, and students who have an interest in being entrepreneurial, but do not have the time or resources to pursue that interest on their own. PCI Ventures has built two separate programs, UPstart and UPadvisors, designed to meet the varying needs of different projects with different levels of service available from their team. PCIV’s suite of services and hands-on support promote entrepreneurship activities and help to incubate early-stage technology-based businesses as they make their way towards commercial success.

When a business is created by working with the PCI Ventures team, Penn enters (through PCI) into a company formation agreement with the founder(s) and may provide:

• Company formation services to establish a legal private entity;
• Management team recruitment;
• Template legal agreements;
• Business development (e.g. market research, marketing, IP strategy);
• Capital acquisition (including UPtheOdds, a full support grant submissions program);
• Third party service providers on a deferred fee basis (payroll, bookkeeping, insurance, etc.);
• Development of a funding strategy, introductions to potential investors, and access to  investor showcases; and 
• Business operations services

In addition to the extensive resources of PCI Ventures, PCI also administers the Penn I-Corps Site, an accelerator program funded by the NSF, where teams interested in starting a business can explore the feasibility of their idea before launching a company. 

Faculty founders generally may not take on fiduciary roles for the companies that they help to create (e.g. board seats, officer positions, full-time employment arrangements, etc.), but faculty founders do typically serve as advisors or consultants for the company, often chairing or participating in the Scientific Advisory Board of the company, while also maintaining their position at Penn. In very rare instances, a faculty member may choose to leave Penn and join the startup in a full time capacity. 

In many cases, the faculty advisory role is shaped with the startup investors and management team based on the founder’s expertise and interests. As the company matures, additional investment is required, and the founder’s role may change. It is important to recognize that a faculty member’s ownership interest in or other relationships with a startup may create a conflict of interest that may affect the faculty member’s participation in research and other activities at Penn.

Faculty involvement in a startup that constitutes a significant financial interest as defined in the University of Pennsylvania Policy on Conflicts of Interest Related to Research must be disclosed as specified in the policy. The University of Pennsylvania Conflict of Interest Standing Committee (CISC) reviews potential conflict of interest in any of the faculty member’s research that is related to the financial interest. Student founders and postdoctoral fellows may choose to join the startup upon graduation or departure from Penn, but often do not have the experience or business skills to serve as the company’s sole manager.

Starting a company generally requires a considerable amount of time and effort. Until the startup team is identified and engaged, the faculty or staff member will need to be deeply involved in the company formation process. After the management team is in place, effort is reduced, but still required during fundraising (e.g. grant writing, partner or investor pitches and discussions), in transferring technology from the University to the business, and in University processes such as conflict of interest disclosure and reviews.

Penn can accept equity for its efforts to help establish the company and/or as part of the financial terms of a license for any early-stage business requiring a license from Penn to practice Penn-owned intellectual property rights. Equity may be substituted for other types 

of license consideration, such as up-front licensing payments, that are often difficult for startups to bear. It is also a way for Penn to share some of the risk, and hopefully the upside, associated with the startups. A decision to take equity must make sense for both Penn and the company. In businesses created with the help of PCI Ventures, the University owns founders’ equity in the entity.

Penn covers virtually all of the startup costs for entities created through the UPstart program managed by PCI Ventures. The only direct financial cost to the founder is a $100 reimbursable deposit into the business bank account PCI Ventures helps to open.

Legal assistance may be needed to register the new business and to establish its operating papers, which define the ownership and governance of the business. Corporate counsel may also be needed to negotiate agreements such as employment contracts, license agreements, non-disclosure agreements, etc. 

In addition to corporate counsel, the startup may have its own intellectual property counsel to assist with corporate patent strategy, especially if the company will be involved in an area of crowded IP. The startup’s counsel must be separate from Penn counsel, though it is advisable and recommended that the corporate counsel and Penn patent counsel work together to coordinate their respective activities.

Companies formed through PCI Ventures have facilitated access to a variety of start-up service providers, including attorneys, who will often work on a deferred fee basis. In addition, the companies have full access to the legal document library that contains more than 40 documents available for use.

In cases where intellectual property is owned by Penn, a small business must obtain a license from Penn in order to practice the intellectual property rights regardless of whether or not the business was created with the assistance of PCI or PCI Ventures. Utilizing Penn’s help in launching a business does not constitute an automatic license to practice University-owned intellectual property.

Companies are private entities independent of the University, even in cases when PCI Ventures is involved in launching the company. Penn may be a shareholder in the business but it does not control or own the business. Conversely, the small business does not have automatic access to the Penn research enterprise or administrative support simply because Penn is an equity holder in the business. All relationships, such as sponsored research, must be documented in a separately negotiated agreement.