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It’s Commercialization, not patenting The New UM Tech Transfer Jim O’Connell Director OTT.

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Presentation on theme: "It’s Commercialization, not patenting The New UM Tech Transfer Jim O’Connell Director OTT."— Presentation transcript:

1 It’s Commercialization, not patenting The New UM Tech Transfer Jim O’Connell Director OTT




5 > $3M Spent

6 Old OTT

7 New OTT

8 Me Aero Engineer RPI, MS Eng Mgt, U of Maryland USAF Helicopter Pilot – Rescue, Spec Ops Stryker – Biz and Product Development – 30 project launches 2 Startups – Med Device 2 Patents Umich Tech Transfer

9 16 years of experience in tech commercialization UF OTL U of Saskatchewan ILO PhD in molecular biology Member of the NY Bar Structured hundreds of licensing/strategic alliance deals Bin Yan

10 Mike Davis M.S. Science & Technology Entrepreneurship Worked with inventors at all stages of the invention- development continuum, i.e. concept to commercialization Performed both, buy-side & sell-side due diligence Primary focus – Medical Devices

11 Daniel J. Catron EDUCATION VENTURES EXPERIENCE Novelios Pharmaceuticals Basic and applied science background with emphasis on immunology, ophthalmology, virology, bioinformatics, and cancer biology Co-founded two startups Executive, management, and consulting experience

12 How OTT is commercializing Business experienced licensing people Patenting less Better law firms = better patents EIRs Earlier Engagement Idea Portal/ Web Invention Disclosure Working on funds for early stage companies





17 Deals Done Omnis Pharma Sublicense to Medimmune– Glen Barber Trisaq Sublicense to Miltenyi – Jochen Reiser Seattle Genetics Adcetris – Eckhard Podack Millipore – Multiple Malek, Barber, Podack

18 How do I get to a deal?

19 Web-based Idea & Invention Portal



22 Need a collaborator? We can connect you!

23 What OTT will do for you Engage Earlier Educate Edit papers/abstracts for IP Get industry feedback on research Find potential SRA partners Provide EIR Map out your path to a product If it makes sense, help you start a company

24 Advice We’ll help with IP Ownership and Inventorship Coordinate with ORA and COI Equity – what’s market FDA path Reimbursement Copyright Company Funding Changes to patent law Finding a CEO

25 Patenting and Publish or Perish Old: “I have novel idea, I must patent it before I publish.” New: “I have a novel idea with data that supports a practical, publically beneficial application that has reasonable potential to create a revenue stream that will at least justify the patenting expense. Let’s plan a patenting and business strategy.”

26 New Paradigm for Faculty Less patenting Patent enablement = proof that it works Need to see viable commercial path Need business plan to go with that path Need commitment from faculty, what are your expectations? Idea portal

27 Advanced Topics…. SBIR/STTR - More $ Annually than VCs NIH Phase 0 - NIH Coulter Program NIH Reach Grants – Collaboration Ecosystem NIH iCorps – Biz bootcamp for faculty Rokk3r Labs – Local Software Biz Dev Subsidized Lab Space at LSTP POC Funds – Prototyping Equity Funds – Seed funds

28 C2C Seven things every academic should know about patents February 26, 2015 Building commercial software: It has to work 100% of the time March 24, 2015 Ten steps to forming a startup company to commercialize your novel results April 28, 2015 Funding your start-ups: perspectives from angel investors and VCs May 26, 2015 Evolving patenting strategies for genes, biomarkers and products of nature June 30, 2015

29 Inventorship vs Authorship vs Ownership July 28, 2015 Technology marketing: beating the bushes August 25, 2015 Academic startups: entrepreneur perspectives September 29, 2015 University policies relating to technology transfer and commercialization October 27, 2015 Protecting and commercializing novel software November 17, 2015 Don’t overlook “small items”: commercializing research reagents December 7, 2015

30 AIA, we lost 12 months and more First to file, sort of As important, provisionally filed claims need to be definitive Publish or perish, publish without making IP public And, I’m sorry, every idea you come up with is not novel………

31 Patent Costs Provisional - $500.00 - $8,000.00 US Utility - $10,000 - $15,000 Canada - $8,000 - $12,000 Europe Only - $20,000 - $30,000 Japan Only - $20,000 - $30,000 World Wide Nationalization Per Patent Pursued- >$100,000


33 Process 510(k)

34 Process IND

35 The real timelines

36 The real process

37 The real timelines


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