About this episode
In the first of two discussions with Dr Victor Pantano from ANU, Founder and former CEO of Digitalcore and current Director of Liquid Instruments, we hear about the first phase of transitioning research into a commercial spin-out including the importance of due diligence and building a comprehensive understanding of IP assets and their role in value creation.
Building upon our last podcast with Julian Turecek, our conversations with Victor really highlighted the importance of people and balancing risk in tech transfer and new venture success. What was also apparent was that the resources and time required to do so cannot be underestimated. We also hear about the complexity of the relationships and funding that enabled the research from which the technology was developed and the role of market analysis in catalysing the decision to spin out.
CB: Hello everyone, and welcome to Tech Transfer Talk. My name is Cameron Begley, managing director of Spiegare, and joining me today is Victor Pantano. Victor will be joining us for this episode and indeed our next episode. Today we’ll be talking about the importance of due diligence. And then in the second part of our conversation with Victor, we’ll be talking more about the journey of Digital Core and his experiences with that startup that he was heavily involved in. But today I’d like to welcome Victor Pantano. Hello, Victor.
VP: Hi, Cameron. Thanks for having me here today.
CB: A pleasure. Thanks very much for joining. And Victor, our relationship started at UC, but you’ve got a long and varied history in this tech transfer space long before you stumbled into the University of Canberra. And I’m keen to hear that story.
VP: Cool. Yes. No, I’m happy to I’m happy to take you through that. That story has been long and varied, and I’ve actually, when I reflect back, I’ve actually done a lot of stuff. So, it would be good to you today?
CB: Yes, I guess. I’m really keen to start Victor on a PhD, but not in a technical field as I have it. What was your PhD in?
VP: Yeah, so my PhD was actually in tech transfer.
CB: Wow. A man ahead of his time.
VP: Yeah, that’s right. I didn’t actually know what tech transfer was when I agreed to do it, but it was nontechnical. So that was one of my stipulations for doing a PhD. I said to my supervisor, and I was fortunate enough to win a scholarship to do my PhD with Ford Motor Company. And I said, well, I want to do something nontechnical. And having done sort of engineering and science, I did chemistry. And when I did my engineering, we did our honors projects, and they were all very technical materials testing. I just couldn’t imagine myself spending sort of three and a half, four years working on a material and publishing lots of papers. And I didn’t want to be an academic, Cameron so I wanted the opportunity to do a PhD, but I didn’t want to be a researcher, an academic in the end. And so, I actually spent three or four months deciding whether I should do one or not to a whole heap of people about if you do a PhD, you know, do you have to become a researcher and academic? And at those times in Australia, sort of the, you know, the thinking was if you did a PhD, you were going to be an academic. But I took the plunge based on this. You can do something in tech transfer. And I thought, okay, well, I’ll do that.
CB: Yeah. So, in fact, you actually reached the thermodynamic limit personally, you couldn’t handle anymore.
VP: That’s right. So, when I finished my PhD, Cameron, it was funny in doing the PhD, I was one of these early people and we were quite rare back then, as you will know. I became really excited about tech transfer and commercialization because I realized that it was a really good way of creating economic impact. We could actually take research and create companies and these companies bring technology to society, create jobs. And I thought, well, this is definitely the way of the future, it’s definitely going to grow. And I was looking around the world at the US and the UK as part of my PhD and I realized that they were much more advanced than we were and I thought, well, it’s only going to happen in Australia then and I’ll be at the forefront. So, I became really excited.
CB: Yeah, okay, fantastic. What’s the timestamp on that, Victor? Just to bring our lenders along, what year are we in when you land back at ANU’s door and say this tech transfers things looks good to do.
VP: So I finished my PhD in around 2004 and then I went off to England and I lived in England for a couple of years and I worked for Jaguar and Land Rover and did some work there again in tech transfer, but more around supply chain and working with the UK government. And then ANU sort of called me up and said, hey Victor, would you like to come back? And do some work for us in a couple of areas. My supervisor rang me up. My PhD supervisor said, hey, we’ve joined the CRC and we’d love you to come back and lead our engagement in it. And then the DVC frame rang me up and said, hey, would you like to come back and work in commercialization, because we really need people. And so, I took them both up on that offer, and I came back and half each. And that was about 2006.
CB: At ANU, you started to uncover an opportunity, and I think that’s the journey I’m really keen to explore with you is how did you uncover this and actually pull it into something of commercial meaning?
VP: When I came back to ANU Cameron, there was actually only two of us working in commercialization at ANU, and I was looking after the physical sciences, and the other person was looking after the biological sort of life sciences area. And so, I was managing I can’t remember how many projects, but it was a ridiculous number of projects. I was spending like two minutes a month on each project. And I then became sort of the only person for a while and ended up becoming the director of commercialization at ANU quite quickly. And I was fortunate at that time because ANU had also started a venture capital fund with MTAA called ANU Connect, and I was doing investment work there as well. So, I was on both sides of the fence. I was in the ANU looking for technologies, licensing them, protecting them with patent, licensing them. Starting companies, although we didn’t really start that many companies back then. And then I was in ANU Connect ventures on the other side, investing in them. But we were also looking at opportunities from around Canberra, Sydney, and Melbourne. So, I was looking at business plans every 5 seconds, learning about due diligence, you know, taking things to the investment committee, so learning that whole process as well. And we started many companies in ANU Connect and invested in many opportunities. So, I was really fortunate. I had this playground and there was one particular opportunity which sort of caught my eye and it caught my eye Cameron, not because so much of the technology, it was actually the people. And I had a strong connection with some of the key researchers and it was that strong connection that drew me to them. And I had sort of thought to myself, hey, Victor, you’re finding all these technologies in university and you’re commercializing them and doing deals. And I was doing deals with US companies and companies all over the world and then I was investing in them on the other side, and I thought, well, I want to go and do it. I don’t want to be this person who sort of recommends or says that you should do something because theoretically it’s the right thing to do. I’ve read it in a book or whatever. I actually want to go on that journey. And so that connection with the researchers felt good. And as I was going through the journey with them and it took a long time to get this thing going, the relationship that I formed with them sort of I was all in boots and all and I, at the right time, approached the university and said, hey, I want to leave and go and do this.
CB: So, it was the people. Almost in front of the technology without necessarily talking about the market just yet, although maybe the market was the other thing, sitting along the people, alongside the people that sort of pulled you over the line.
VP: Yeah, as you know, you’ve always got those three things, you’ve got the people, the technology in the market and different people will tell you that one of those is more important than the other or but I actually always put the people first, the other two are important. And the market was there. I was excited about the market, I was excited about the technology and what we had done at the ANU, the DVC, he was quite convinced by the technology as well. And so, we got a consultant in looking at different opportunities in this particular school where the technology came from. And he had ranked this one as the highest. And then we had paid him to come and produce a business plan. So, there was a business plan there, and the university was ready, and so that had happened as well. And so, things started to align on that side. Clearly there’s a market, so the people were important for me. Yes, the market and technology are important as well. But we had a consultant come in who did some work in the school where this technology was and sort of prioritized this one as being the preeminent commercial opportunity that was in that school. And then we actually paid that person to do a business plan. And so, we understood what the market was, we understood sort of where the technology was, et cetera. So, all those things had aligned. And then because of the relationship I developed with the researchers, I eventually decided, and the university was really good about it, actually. They let me go and jump into it. But it was a long road to get there.
CB: How do you manage that due diligence process?
VP: Yeah, so it’s this one, this one was particularly complex. You know, it’s probably, I would say, in the, in the top three of the most complex commercialization arrangements I’ve ever had to put in place, so and it was complicated, Cameron, because the research had been going on for 15 years before we sort of said, hey, there’s an opportunity. It was actually the industry partners that came and said, we want you to commercialize it, but it had been being researched for 15 years and it was predominantly funded by industry. And I’m not talking about one industry partner, I’m talking about 30 plus industry partners and I’m talking about the biggest companies in the world and they were, And they still are the biggest companies in the world, and they had paid to develop this research. And it was it was quite phenomenal. It was probably only the one, one of the only research industry research consortiums in Australia. And we had 20 to 25 companies at any one time that contributed funding to be part of this consortium to develop this technology. And so, you know, the university didn’t know ten years, years before that it was going to commercialize it. So, the university had gone and put arrangements in place with each of these industry partners, but they weren’t thinking that in ten- or 15-years’ time they’re going to commercialize it. Of course, we had over 100 different industry arrangements, research arrangements, whatever, and they were all different.
CB: Yeah, I had that suspicion building that you had 100 arrangements with 100 counterparties with 100 sets of arrangements.
VP: Absolutely. And even worse, Cameron, there were scores of researchers that were involved, and students and contractors and visitors. So, they had all contributed to generating the IP. And so not only did we have the industry partners that had funded it, and they all had their own arrangements, we then had all the people that had actually contributed to the IP. And the IP was complex. It wasn’t just a patent. In fact, we only had one patent, and we lodged that quite late. It was code. There was a lot of code, and we’re talking like hundreds of thousands to millions of lines of code.
CB: Lines of code.
VP: So, it took maybe it took 18 months to actually go through.
VP: And it took three quarters of a million dollar’s worth of due diligence, and it took several lawyers. And we went through all the agreements, and we took we looked at everyone who was involved and we compiled this, you know, bible of a due diligence report. And we ranked everything in terms of, you know, how risky was it, and there were the things that were red and there were the things that were orange, and there were the things that were green, and, you know, some days were pretty tough. And I walked away thinking, gee, we’re never going to commercialize this. It’s you know, they’ve gone and given that bit away to that partner, we’re never going to be able to commercialize it. And so, we had to work through that and sit back and say, well, no, actually, I think we can still make a go of it because we haven’t given them everything or they’re never going to commercialize it, so we’re going to run the risk. Or I went and chased down that researcher who was now in Germany and got them to us on their IP through that. And of course, as you cited in the process, we’re trying to put together a term sheet for the deal. And the researchers back then weren’t very trusting of the university, and so they wanted control of the company, and the university like, well, we’re not sure you should have control. And then no one understood what control was.
CB: Control of what?
VP: Control of what yeah. And people think they have the most number of people on the board. They have control. And so, I had to work through that with the researchers as well. And so, we try and structure this term sheet, but I was on multiple sides, so I was trying to do the best deal for the university, but then the company who is the company, or the company was me too. So, I’m in the company trying to do the best deal for the company as well, and then the researchers there trying to represent their interests. And the researchers were this was the first time, Cameron, that I did a deal where the researchers put their own money in.
CB: Wow. So, they had cash in the game.
VP: They had cash. Some of them have gone and extended their mortgage. I was like, oh, my.
VP: You know, I and I had an incredible sense of responsibility. I thought, wow, these guys have, you know, young families, they’ve gone and extended mortgage to invest in this in this startup that we’re putting together. So, after 18 months, we’d spent $750,000, and the universities and UNSW and a and you who are the principal universities and the researchers, there was 13 of them. And so, this was the first time I ever had that many researchers. And we bundled them up and formed one entity called the Key Research Team. And so, we had these three parties and they decided to invest, I think it was around two and a half, two and a half million to kick the company off, which was good change those days early.
CB: Yeah, that’s good coin. And of that two and a half million, you’ve already run three quarters of a million off just getting the DD and the lawyers and the shareholders agreement, all in good order to actually then be able to run a company.
VP: Absolutely. We blew the three quarters of a million, and I stood up at a KCA conference and said that to everyone in the audience. I still remember lots of roundtables and everyone’s there looking at me going, are you crazy? You’re never going to get that money back. I was quite determined to prove them wrong.
CB: Yeah, indeed. But it raises an interesting side conversation, though, Victor, about that 750 and the need for due diligence and the need for these preparations around shareholder agreements, that does need money, and to some extent, that gets internalized in large organizations. What you’ve just described, if I’ve heard it right there, is you’ve externalized it into the company and you’ve run the first three quarters of a million out of the bank balance, whereas. That probably gets internalized a lot and occasionally you subcontracted out to lawyers for specific issues. So, it would be an interesting not that we can solve that here, but it’s an interesting challenge to the listeners say, well, are we actually every time we create a new venture and they’re a popular thing to do, right now creating new ventures. But they’re all going to need this sort of due diligence. Maybe not 750,000, but they’re all going to need a degree of due diligence. The technology, the people, shareholders need to be brought on board. Not all shareholders agree to the same agreement, so there’s the inevitable haggling. I wonder, whilst the KCA audience may have been a bit surprised by that number, I wonder if we all reflect on that, whether that’s that unreasonable.
VP: Yeah, I think for the complexity of what we had here, it wasn’t unreasonable and nor for the market we were going after. I mean, the business plan that we had justified the investment and I had a really good forward looking DVC and he believed in it and he funded it and he put the money on the table and we got lawyers to represent the company, we got lawyers to help us inside of the university. We had another lawyer drafting the license agreement, because the license agreement, given that we’ve done all this due diligence, we had to be really careful about what are we licensing here, and can it be exclusive? And so, we had lawyers left, right and center because we wanted to do the right thing. And I think the lessons, as you say, Cameron, and, you know, I always talk to people in universities and say. You’re going to go put a research agreement in place, you should think about where this is actually going to end because, okay, we want to get the money in the door and the researchers are always very keen to get the money in the door.
CB: Yes indeed.
VP: They want to do the research but if we don’t set it up right from the start, then there’s a lot of pain, a lot of pain later and sometimes you can’t get what you need at the other end, having an awareness of where you’re going and doing things right at the get go. And I think this is where we see sort of trends, where the commercialization side is working more with the research side in universities, and I think that’s a good thing. They need to come closer together to review contracts and that kind of thing. So, I think those trends are really, really good. But we need to go into these things when we’re putting research agreements in place, eyes wide open. And I always talk to the researcher about it because it’s, hey Joe, this is what we’re about to put in place. This is what it’s going to mean for you if we sign this and we give this to this industry partner. Are you comfortable with that? Think about your research and think about where it’s going and are you happy to hive off this part of your research and give it to this industry partner? Because once we’ve given it to them, it’s gone. So really pointing those things out up front. So going in with eyes wide open.
CB: Yeah. The issue of intellectual property hygiene, I think it’s getting more ventilation, but I think that ventilation, if I can call it that, is coming through a shift in behavior that I’m observing. Where parties want to own IP outright. The days of joint project IP seem to be drifting a bit into the rear vision mirror. The challenge becomes then if two parties are looking to agree and both are looking to own, then we run into a point of contest. So, people are thinking about the hygiene but maybe not thinking necessarily about how to deploy further down the track. They’re thinking more prophylactically than proactively if that makes sense.
VP: That’s a good way of putting it in Cameron and I’m not a big fan of, I have to admit I’m not a big fan of joint IP. Joint IP is a good way of saying now let’s just agree we’ll be friends so that we don’t have to sort out the hard stuff now and we’ll get on with it. So okay, we’ll own it jointly but as you said, joint IP doesn’t mean anything because no one can do anything with it. So, then you’re going to have to have that discussion later and when it’s actually worth something, believe me, it’s much harder to have the conversation.
CB: Yeah, absolutely it is Kicking the can down the road and basically saying we agreed to agree at some future point in time. Yeah. It’s easy to submerge that risk and the joy of getting the money and getting on with the project. Yet that risk that risk does come back pretty hard, the more value that gets created as you just alluded to Victor. Yeah, it’s very interesting. You’ve assembled 15 years of research through a due diligence program, 100 partners with us, hundred different arrangements. You’ve assembled all of the intellectual property you require. You’ve now got a shareholder’s agreement in place. You’ve got $1.75 million in the bank. And now what happens? You got to go and flog some stuff.
VP: That’s right. And don’t forget, we have this due diligence Bible, and that will come back later because we have…
VP: Because our Bible said it’s not perfect. So, we made some decisions that we would go ahead with those imperfections because we made some calculated risks. Yes. We gave this particular industry partner this that shouldn’t have happened. We’re not going to get it back. Let’s go anyway, because we don’t think they have the capability to do anything. So, we made some calculated risks, and we went ahead. We had $1.75 million in the bank. We were in the bottom of this university physics building, and it was me, and it was the key researcher, or the lead researcher, Professor Mark Knackstedt, who came on the journey with me. We had our first employee, who was one of the researchers, and it was the three of us, and very literally, Cameron, we looked at each other that and we said, we actually have to go and get some business now.
CB: Yes. Got to go flog some gear.
VP: And so and some of the some of the industry partners who said you should commercialize it, they didn’t come to the party straight away. It wasn’t like, right, you’ve got you’re a company now. We’re going to write a check. That didn’t happen. And we had this beautiful plan that was produced for us by the consultant, and, okay, it’s just a piece of paper with some writing on it. I said to Mark, you’ve got to jump on a plane, and you’ve got to go. You’ve got to take your researcher hat off, and you got to put your CTO hat on. And Chief Marketing Officer, because he had all the connections, and he was in this particular technology area, and I’ll explain it in a sec. He was the god. He was recognized internationally so he could walk into any of these multinational energy companies and get the right audience. So, I sent Mark off overseas, and I said, you’ve got to go and get us. Some work, and you’ve got to get us some work as the company Digital Core, not ANU. So that’s how we started. And it was interesting. Mark had, you know, done a fantastic job bringing millions of dollars for research, and now we wanted him to transition into bringing millions of dollars
CB: For services.
VP: For the company. But it was one of the first times, Cameron, that we had an internationally recognized professor who was still professor in the university. So, he was still at ANU, and he was inside the company. And a lot of people today in universities have issues with people wearing multiple hats. And can you work in the university as a professor, and can you run your company? Of course, in the US, it happens all the time. I think in Australia, in some universities, we’re still getting used to this notion of you can be in both camps.
CB: The entrepreneurial scientist.
VP: That’s right. And I’ve seen it multiple times, and it can and does work extraordinarily well because it brings the cachet that you’ve got of coming from a university, of being an expert. It opens the doors, and now they’re inside the company and they’re in the early days of startups, those kinds of people are the ones that actually get in the doors and make business. So, Mark got in there, and it wasn’t long after his first couple of trips that we started to generate some business. We got our first orders.
CB: So, a few things you’ve dropped in there, Victor, that I’d like to circle back to. So, the notion of wearing multiple hats, I think, is entirely okay so long as one only has one face. The minute you are two-faced about your dealings in your multiple hats, that’s where the problems start to occur. So, I, and all of us, ultimately, are wearing multiple hats in the range of client base that we have and the experiences we have. We can’t always sit on multiple sides of things. We can only pick one side and represent it and acknowledge the hat we’re wearing. So, I’m with you on that one. I think that’s a cultural thing in Australia. That’s not anything more than that, I think. I’m interested, though, to go back just briefly to the report that you mentioned that the consultant prepared, and you made the comment, I think, looked nice, pages, et cetera, et cetera. Now that you have to operationalize the report that’s been handed to you, did it translate-
CB: -into the operational they didn’t. Okay. Yeah, because it’s interesting, because, Victor, you and I are in that business now of writing reports for clients, to some extent. And it’s interesting, I would hazard a guess, both of us are keen to write reports that are of utility to our clients. So, I was just interested to just grab that point that you made and just check in on it as to whether there was utility in the report that was given to you. And the answer is clearly no.
VP: The answer was no, but I have to qualify it a little bit.
CB: So, no, please do.
VP: What the consultant prepared was a report and a business plan. I think the report, in terms of the opportunity and the technology and everything, was accurate. The business plan, I think the business plan was not so accurate because we couldn’t enact it.
CB: Right, okay. That’s an important clarification.
VP: Cameron and this is, I have to be honest, I don’t like business plans. And I can tell you, in the journey, I spent an inordinate amount of time creating business plans and I had wonderful fancy spreadsheets that I worked days and days on, and I could create any figures for you-
CB: I’m sure you could.
VP: in my business plan. And two weeks in a startup, two weeks later, your business plan is junk because there are so many opportunities that come to you day in and day out, and you’re constantly making a decision about which ones you will prioritize and which ones you will go for. And it is impossible to plan. You can plan broadly but creating detailed business plans that you know are 100 pages long, don’t do it. It’s a waste of time.
CB: Well, I think so. Amen. I think the notion of a business plan, I think, fits where you’re in an established business that is focused on operational excellence and execution, not in high growth or ambiguity. There are many exceptionally well-established companies where those things are going to make a lot of sense because they are in an operational efficiency modality. And I can see business plans make sense, having written many of them for the time in the privacy, makes sense. But I completely agree with you in the environment you’re describing. Yeah, things change. I don’t know, a research plan that’s been the same as what we started with three months later, because there’s this horrible experience that seems to happen in my world, Victor, I suspect, where people learn stuff and it changes your mind.
VP: Absolutely, yes, that’s exactly right.
CB: And so, you know, if you had to go back and change the plan every you’d spend your whole life just in this loop of paperwork rather than actually getting anything done.
CB: So, Victor, I just want to go back to something you said earlier about the due diligence Bible. And within that Bible you had recognized that there was incumbent intellectual property. So, you are making decisions then I’m assuming that you are making decisions either, no, we’re not going to do that because it’s encumbered, or we will do that, and we understand there’s a risk in doing that. The risks being they’ll come after us because we’re doing it, but the positive risk is we’re going to do it because we don’t expect the owner of that IP to do anything with it. So, they’ll just let us do it because it’s no skin off their nose. Is that the sort of risk making you’re working through?
VP: Exactly right Cameron, all of those things. So, we ended up doing a license to the company that was exclusive but with some exclusions. So not really exclusive because some of the IP had been rights had been given to other parties, but we made a decision that those parties would never come for those rights and if they did come for those rights, they’d be entitled to a version of the technology that was significantly behind where we were.
VP: So, all those things came into play as the company. We were going to develop new technology, so we would have moved on. So we made that decision when I then went to raise the next lot of money. We had to talk through that with the investors because I said, but why isn’t the license exclusive here? Why isn’t it exclusive here? Why has this been carved out? And so, we went through that with them so that they have an understanding of what the risks were and by that time had moved on, so the technology had advanced even further and so the risk became less and less over time.
CB: So that’s really interesting in the sense that by continuing to advance the technology and leaving the alpha version behind, you created a competitive advantage for yourself and almost a defensive position for yourself. That if an owner of technology resolved upon taking their rights, you give them the alpha version and then outcompete them with whatever subsequent version you were up to. So that then became an interesting negotiation point with a particular owner of an encumbrance, if I can call it that. That’s a really fascinating strategy. Which brings me to something you said when we’ve caught up in preparation for our discussion tonight, victor, I’ve out the notion of the perfect not getting in the way of the good.
VP: Yes, that’s exactly right.
CB: And because where that scenario takes me with that due diligence Bible you’ve described, and the inevitable encumbrances is it’s a rhetorical question? In a way, victor it’s. So how much time do we spend in packaging up IP for commercialization where we obsess so much about the perfect that it does get in the way of a good, imperfect transaction with the sort of carve outs that you went through when you set up digital core. Are we so obsessed with the perfectly defensible pit of IP that we burn the clock, and we burn opportunity? It’s a bit rhetorical, but it’s a challenge for, I think, all of us in this business.
VP: No, you’re right. And there’s a balance there. I mean, in the end we couldn’t trace everyone back to who had written what code, et cetera, and then we made a decision. Look, we could rewrite bits of code if it was anybody ever popped up or if someone popped up, so you have to make some of those decisions, but you have to do enough due diligence to make that an informed decision. You are, at the end of the day, giving a license and if it becomes 100-million-dollar thing, someone’s going to come for you if there’s a problem. So, you need to make an informed decision, but you need to make a balance. You can’t chase everything down. No, like we did, it wasn’t perfect, but we had a rationale behind why it wasn’t perfect, and we knew that we could explain it to investors and we knew that investors would understand and the same calculated risk we did. So, yeah, you can’t do everything perfect, but you want to get to the point where you broadly understand what you have.
CB: Yeah. It’s a very conscious and thorough embracing of the imperfections of your technology and then saying, right, we’re going to move from here. Not lamenting the fact that it’s imperfect, just embracing it and getting on with it.
VP: Yeah. One of my favorite things to do, Cameron, is when I meet a researcher and they are ready to commercialize something is just having a chat with them and I ask them tons of questions. They don’t know what I’m doing, but I am doing the due diligence with them and I’m actually creating a relationship with them at the same time, building a relationship with them, rapport, trust. And I’m getting all the information and I’m finding out red Flag fine, we don’t have to worry about that. So, I’m doing that in the process. I love doing that. That’s a part of my job that I really enjoy.
CB: Victor, thanks so much for joining us today and sharing your experiences around due diligence and indeed, a lot of your own journey through tech transfer. We’re looking forward to you rejoining us in our next episode where we really get into the journey of Digital Core. We look forward to having you join us then next time.