Taking Discoveries from Lab to the Market Technology Transfer 101 Taking Discoveries from Lab to the Market Julie S. Nagel, PhD

KU Innovation and Collaboration Who we are What we do

KU Innovation & Collaboration

www.kuic.ku.edu KUIC Services Technology Transfer Commercialization Invention Assessment Intellectual Property Protection Commercialization Startup Company Formation Industry Sponsored Contract Negotiations www.kuic.ku.edu KUIC - Copyright 2017

In the beginning

Inventions & discoveries

Issues after discovery Is this invention patentable? Is there a market for the invention? Can we find a company interested in licensing, developing and commercializing this technology? Can we start a company?

Answering those questions KUIC – The Technology Transfer Office at KU Professionals who analyze marketplace and understand patent/licensing issues Attorneys to help with patent application process Liaison to KU-based entrepreneurship programs and incubators to help advance technology and boost startup companies Resource for connecting venture capitalists and/or companies looking for new technology inventions; helping faculty further develop the technology pipeline

Now some definitions… Pantent Tech Transfer Commercializable Inventions What How

What is tech transfer? Formal transfer of rights to use and commercialize research innovations Universities usually transfer technology through Patents Copyright Eventual licensing of new innovations Bayh-Dole Act – Encourages technology transfer Benefits: Leads to new products and services that improve quality of life Adds billions of $$ to the US economy Supports jobs

Why are Patents important? What is a Patent? A patent is a legally enforceable exclusive monopoly granted to an inventor for a twenty year period from the date of filing (in USA). Why are Patents important? To prevent important discoveries from dying and thus the technology being lost To exclude others from using it for commercial purposes Public good To reduce economic risk in bringing a novel discovery to market KUIC - Copyright 2017

What is Commercializable? Commercializing Research What is Commercializable? Product (drug/formulation/novel material) Medical Device Copyright (software, scale/measure) Method Design Research Tools: Antibodies Cell lines KUIC - Copyright 2017

How does KU Commercialize Technology? Ways to Transfer License to Existing Company License to a new company (“startup company”) Identify potential commercial partners Research Sponsors Faculty contacts Marketing Industry Events

Stages of tech transfer Research Funding Invention Disclosure of Invention to KUIC Patent Search and Assessment Market Assessment Provisional Patent Buys 1 year to do additional experiments Marketing Faculty IP Committee Patent Application Filed Licensing Monitoring Compliance

You Discover Something Novel Invention You Discover Something Novel Send description of findings to KUIC (draft manuscript) Initial meeting with KUIC Hold off on telling anyone about the findings (paper, abstract, talk) Official Documentation: Invention Disclosure Form http://www.kuic.ku.edu/faculty/forms Submit to KUIC Never too early! Confidential - KU internal document No IP protection until patent filed KUIC - Copyright 2017

Disclosure rates FY KUMC Lawrence Total 2013 26 57 83 2014 33 51 84 2015 2016 41 40 81 2017 23 52 75 149 257 406

All authors of a manuscript may or may not be inventors Inventorship Who is an Inventor? A researcher who contributes to the “Conception” of the invention One who does the experiments without contributing to the “Conception” is NOT an inventor All inventors of a patent can be authors of a manuscript BUT All authors of a manuscript may or may not be inventors KUIC - Copyright 2017

Patent Search & Assessment Invention Assessment Patent Search & Assessment Prior art (Patent & Literature) search Assessment of patentability IP Strategy Commercial Potential of Invention: Market Assessment What problem does the technology solve? How is the technology an improvement over the state of the art? Cost of commercialization vs economic benefit Economic vs social benefit Not all good science (or disclosure) has commercial potential (and that’s ok!) Market assessment reports provided to faculty inventors KUIC - Copyright 2017

Legal document filed in the USPTO Establishes an early filing date Provisional Patent Legal document filed in the USPTO Establishes an early filing date Does NOT mature into an issued patent unless regular non-provisional patent application filed within 1 year What does this mean? Place holder Provides IP protection while you do more experiments Additional experiments can lead to stronger claims

About 10 months after filing provisional: IP Comm Faculty IP committee About 10 months after filing provisional: IP Comm Makes final decisions on KU investment in filing patents 12 members from both campuses Inventor invited to present Consider patent search, marketing assessment report, ongoing marketing efforts, patent budget Recommend future action (covert patent or not) IP Committee Votes No Investment? Release of rights from KU to Inventors subject to approval from federal grant agency Execute Invention Release Agreement with KUIC

Marketing Material development Non-Confidential Summary (NCS) 1 pager Summary of invention Overview Applications How Technology Works Benefits Why Technology is Better Other Applications Inventor(s) Status (patent #; patent pending) Licensing Associate Contact Info http://kuic.ku.edu/licensing

Means of Marketing Information Provided Marketing Existing relationships Industry meetings Website Partnerships with Marketing Firms Tremonti IN-Part Information Provided Non-confidential vs Confidential Why do you need a CDA/NDA?

Forms of Technology transfer How are rights transferred? License of IP rights License of Know-How Spin Out Company Startup company still needs a license Swift Startup License Easy way for KU faculty to license out their technology into a startup company

What’s in a license agreement? Contract transferring IP rights to 3rd Party Important Sections: Grant: What is transferred Territory Royalties & Milestones Return of Rights Research Rights Publishing Rights Sponsored Research

KU Revenue Distribution Policy After Deducting Legal Costs Royalty 1/3rd to Inventor(s) Department or Center 1/3rd to KU Direct=Legal costs – not our time, CDAs, etc. IRA Not taxed / 1/3 to Inventor is taxed Money to KU goes into RGS or research Board of Regents set policy November, 1998 Minimum 25% of revenue to inventors, after direct costs recouped Examples: patents or equity position with liquidation event KUIC - Copyright 2017

KUIC GOAL: Maximizing an Invention! What’s our goal? KUIC GOAL: Maximizing an Invention! Under Bayh-Dole KU retains title to inventions made using federal research dollars Incentivizes transfer of technology to the market Job creation! Any $$ to KU go back into more research and to develop more IP

Positive economic impact University licensing increased U.S. gross industry output by $836 billion between 1996 and 2010 These technologies support an estimated 3 million jobs in the economy Tech transfer created 651 new companies in 2010 alone Direct correlation between federal $$ invested in research and the innovations that research creates

Thank You! www.kuic.ku.edu Lawrence Campus KU Medical Center 2029 Becker Drive Suite 142 Lawrence, KS 66045 Phone: (785) 864-2441 KU Medical Center 4330 Shawnee Mission Pkwy Suite 2000 Fairway, KS 66205 Phone: (785) 864-2441 www.kuic.ku.edu KUIC - Copyright 2017