This document summarizes the commercialization of CRC-Predict, a radio propagation modeling software developed by Communications Research Centre Canada (CRC). CRC initially licensed CRC-Predict to Northwood Technologies under a non-exclusive agreement. Northwood later requested an exclusive license to gain a competitive advantage. After intensive negotiations around assignment rights, CRC granted Northwood an exclusive field-of-use license. This allowed CRC to continue exploiting CRC-Predict in broadcasting while Northwood used it for telecom. The license agreement generated over $1 million in royalties for CRC over 10 years as ownership of Northwood transferred between three foreign companies, all of which maintained R&D operations in Canada, creating approximately 50 jobs.
This document summarizes the commercialization of CRC-Predict, a radio propagation modeling software developed by Communications Research Centre Canada (CRC). CRC initially licensed CRC-Predict to Northwood Technologies under a non-exclusive agreement. Northwood later requested an exclusive license to gain a competitive advantage. After intensive negotiations around assignment rights, CRC granted Northwood an exclusive field-of-use license. This allowed CRC to continue exploiting CRC-Predict in broadcasting while Northwood used it for telecom. The license agreement generated over $1 million in royalties for CRC over 10 years as ownership of Northwood transferred between three foreign companies, all of which maintained R&D operations in Canada, creating approximately 50 jobs.
This document summarizes the commercialization of CRC-Predict, a radio propagation modeling software developed by Communications Research Centre Canada (CRC). CRC initially licensed CRC-Predict to Northwood Technologies under a non-exclusive agreement. Northwood later requested an exclusive license to gain a competitive advantage. After intensive negotiations around assignment rights, CRC granted Northwood an exclusive field-of-use license. This allowed CRC to continue exploiting CRC-Predict in broadcasting while Northwood used it for telecom. The license agreement generated over $1 million in royalties for CRC over 10 years as ownership of Northwood transferred between three foreign companies, all of which maintained R&D operations in Canada, creating approximately 50 jobs.
This document summarizes the commercialization of CRC-Predict, a radio propagation modeling software developed by Communications Research Centre Canada (CRC). CRC initially licensed CRC-Predict to Northwood Technologies under a non-exclusive agreement. Northwood later requested an exclusive license to gain a competitive advantage. After intensive negotiations around assignment rights, CRC granted Northwood an exclusive field-of-use license. This allowed CRC to continue exploiting CRC-Predict in broadcasting while Northwood used it for telecom. The license agreement generated over $1 million in royalties for CRC over 10 years as ownership of Northwood transferred between three foreign companies, all of which maintained R&D operations in Canada, creating approximately 50 jobs.
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CRC-Predict
A Case Study in Managing Multiple Objectives
In a federal laboratory license to Industry
Presentation to the Federal Partners in Technology Transfer Ottawa, Ontario June 2, 2008
Kevin Shackell Manager, CRC Technology Commercialization Communications Research Centre Canada www.crc.ca A Brief CRC Overview Primary federal government laboratory for advanced communications R&D, with approximately 240 research staff
Technical advice to Industry Canada to assist in development of telecom standards, regulations and policy
Government R&D clients include National Defence, Canadian Space Agency, Public Safety and Emergency Preparedness Canada
CRC collaborates with industry, universities and research centres nationally and internationally
CRC Innovation Centre helps small high tech start ups to develop their commercial potential through on-site incubation www.crc.ca CRC Mission To be the federal governments centre of excellence for communications R&D, ensuring an independent source of advice for public policy purposes
To help identify and close the innovations gaps in Canadas communications sector by: engaging in industry partnerships through collaborative R&D; building technical intelligence; and supporting small and medium-sized high technology enterprises through technology transfer. www.crc.ca CRC Campus www.crc.ca Research Branches Terrestrial Wireless
Broadcast Technology (radio and television)
Satellite Communications and Radio Propagation
Optical and Broadband Network Technologies www.crc.ca CRC Technology Transfer 2007/08 Active Agreements: License Agreements 335 Collaborative Agreements 50 MOUs, MOAs, NDAs 119 Total active agreements 504
Typical Agreement Volume Over a Year: Licenses 45 Collaborative R&D 40 MOU, MOA 10 NDAs 20 CRC Innovation Centre Agreements 5 Total new agreements 120
www.crc.ca CRC A History of Radio Science Research
Radio Propagation Research an original core competency of CRC dating back to the early 1950s
Development of manual calculation techniques to predict signal strength and fading of radio waves
Growth in new radio, TV, and mobile radio services in the 1970s www.crc.ca Computer-based Modeling & Calculations New and more accurate computer-based prediction methodologies required
CRC took the lead and initiated research in the field of propagation measurement in the 1970s
algorithms developed by CRC to more accurately model underlying physical phenomena such as diffraction, topographic scatter and terrain irregularities
CRC-Predict considerably more accurate and robust computer-based prediction program www.crc.ca CRC-Predict Features Wireless service planning tool for cellular, mobile wireless, and broadcasting Estimates radio signal strengths on terrestrial paths at VHF and UHF Works with topographic database Accurate prediction capability Internationally acclaimed as one of the most accurate models compared to other similar models www.crc.ca Technology Transfer Software originally developed to help Department of Communications with radio spectrum allocation across Canada
Fortran version was widely commercialized through mostly single-user license providing software in executive code form to radio engineers and broadcast network planners for radio and TV transmission planning
Over 100 licenses issued in early 1990s in Canada and abroad
www.crc.ca Commercialization Opportunity Growth of cellular services; limited spectrum availability and interference issues brought to the forefront
Ottawa-based Northwood Technologies recognized the robustness of CRC-Predict and entered into a collaborative agreement with CRC in 1997
Integration of CRC-Predict into Northwoods DeciBel Planner wireless network planning software
Non-exclusive license granted to Northwood
www.crc.ca Leading technology in its field By 2001 marketability of Northwoods cellular network planning tool greatly enhanced by addition of CRC-Predict
Northwood initiated negotiations for exclusive license to secure competitive advantage
sales of enhanced product with Government technology inside exceeded expectations
CRC regularly approached by competitors for CRC- Predict license www.crc.ca Securing a deal Intensive negotiation both internally at CRC and with Licensee for exclusive field of use license
Due diligence review of existing licenses to minimize competitive impact (a number of older Fortran source-code licenses were issued which were cause for concern)
Minimum annual royalty requirements to ensure revenue stream for CRC
Northwood wanted an exclusive license, while CRC only willing to give a sole license in a field of use specific to telecom applications
www.crc.ca Assignment Rights in Licensing Assignment rights became a deal breaking issue
Standard template response was no assignment without prior written consent of CRC
No de facto assignment through a reorganization, merger, consolidation, acquisition or other reorganization.
Northwood not prepared to sign a license agreement that did not offer rights of assignment to a third party
A Notwithstanding clause was demanded by licensee www.crc.ca Benefits to Canada Notwithstanding Notwithstanding a) above, consent to assignment of this Agreement shall not be unreasonably withheld where:
i) the assignee undertakes in writing to be bound by all of the obligations of this Agreement; and
ii) the assignee maintains an active business presence in Canada. www.crc.ca Benefits to Canadian Economy Inclusion of tight assignment provisions to ensure continued exploitation of the technology in Canada
In 2001 less than 3 months after the Northwood deal closed, tight assignment provisions proved beneficial when multinational Marconi PLC purchased Northwood for $42 Million in cash
Kanata was designated the new Marconi business unit for wireless network planning worldwide, pulling in former UK- operations for R&D in telecom network planning tools
In 2006 Ericsson Canada Inc. purchased Marconi Wireless, business unit moves to Gatineau to maximize R&D tax credits.
www.crc.ca Outcome of Technology Transfer June 2007 Another Changing of Guard French-based CTS purchases assets of Ericssons Canadian-based wireless network planning unit CTS creates a new Canadian entity -- Mentum Mentum affirms Gatineau as the world product development centre for its wireless network planning software 47 person years of employment at Gatineau office 4 licensee holders over 10 years technology remains exploited in Canada for the benefit of Canadians
www.crc.ca CRC Exploits Broadcast Market With CRC-COVLAB and COVLITE
CRC retention of sole provision proved beneficial
Licensed to more than 50 broadcasting planners in Canada, Australia, Taiwan, Korea, Japan, Portugal, Germany, Switzerland, and Mexico
Over $750,000 in licensing revenues from 2001 to 2008
CRC-COVLAB Designated as CBCs central broadcast planning tool
Field of use license allowed CRC to continue to exploit in its primary area of broadcasting interest while industry got telecom
www.crc.ca Lessons Learned Pressure to close a deal quickly indicates external third-party forces at play (Northwood acquisition by Marconi)
Field of Use licensing provides a range of options for licensor during negotiations
Internal hurdles in licensing can be just as formidable as external (identify opposition early and plan to deal with it)
Companies prepared to pay for technology if value proposition and sales potential can be demonstrated
Continuing R&D support critical to the tech transfer success
www.crc.ca Conclusion In Summary Innovative technology development took a decade before successful commercialization Originally developed to assist regulatory requirements Licensed to a Canadian company, with ownership transferring to three foreign companies CRC has received over $1 Million in royalties over 10 years and the companies have created and maintained approximately 50 Canadian jobs over the decade License fees and royalties helped further CRC R&D program Significant taxes collected by various levels of government based on the high tech job creation