Academic Industry Interactions - workshop

Motivations and Challenges Many research intensive universities have research budgets where <10% is from industry…….. 2 DriversUniversityIndustry FinancialNon-profitFor-profit ControlIndividual FacultyShareholders Management Time3 – 5 year horizonsAnnual Quarterly FocusExplore ideas Publish results Find solutions Keep in-house FailureTenured Another grant Job loss Out of business

Whats important to universities? 3 Nine Academic Points………University should: Reserve rights to practice licensed inventions and to allow other non-profit and governmental organizations to do so Exclusively license with terms to encourage technology development and use Minimize the licensing of future improvements Anticipate and help manage technology transfer related conflicts of interest Ensure broad access to research tools Carefully consider enforcement action Be aware of export regulations Be aware of patent aggregators Consider including provisions for unmet needs (neglected patient populations, geographies), and developing world applications Source: In the Public Interest: Nine Points to Consider in Licensing University Technology, March 2007

Whats important to industry? 4 Ten Industry Points……..Company should: E nsure that the license grant contains all the university rights needed to commercialize Consider broadening the license grant to include improvements Consider the scope of the universitys retained rights Obtain commercially useful sublicensing rights Seek reasonable royalty provisions for the proposed business model Closely review payment obligations Develop commercially reasonable performance milestones Manage patent prosecution and deal with regulatory agencies Ensure termination provisions work for the business Review all sections of the agreement, even if routine Source: Top Ten Issues in Licensing Technology from Universities, May 2007; ipFrontline.com TM

Case Studies 5

UIC: UIC: 6 Research OriginNIH funded collaboration, multi-year collaborative grant UIC chemist and NIH researchers Intellectual PropertyNIH and UIC researchers jointly disclosed discoveries, patents filed Licensing PartnerTibotec, a small biotech in U.S. in 2001 Special TermsSocially responsible licensing, allowing for enhanced access in developing world M&A of PartnerJohnson & Johnson acquired licensee FDA ApprovalApproved 2006 under Fast Track as a treatment option in HIV (human immunodeficiency virus) medicines known as protease inhibitors. Projected MarketFirst sales 2006, projected sales will peak in 2012 at $600m to $1.1b annually through 2019.

Simulation

What can go wrong? – simulation Situation description: Parties: University is a large, research and teaching institution in engineering, medicine, and interdisciplinary technologies. Company is a small, privately held, medical diagnostics company with one product in the pipeline. Company plans to look for a larger partner to buy technology rights and manufacturing capabilities. In the alternative, Company plans an IPO in less than 5 years. 8

Dr. Founder had developed a biochemistry process while being a professor at University. The University developed a sensor, which was made in University laboratory that is different than biochemistry lab. The sensor together with the biochemsitry process makes a patentable and marektable platform. Dr. Founder today is with Company. Company is interested in commercializing the platform. Sensor + Process = Platform 9 What can go wrong? – simulation

Part 1 Dr. Founder excited with his findings published his discovery in a local magazine and gained public recognition by giving talks at seminars and tech shows. After joining Company, Dr. Founder is using HIS biochemistry process and continues his research. Company excited by Dr. Founders achievements approached University with an offer to BUY the sensor necessary to build the platform the Company wants to commercialize. What went wrong??? 10 What can go wrong? – simulation

University Dr. Founder should contact OTT before public disclosure We will check all publications against enabling information The process is not Dr. Founders – developed while employed so its Universitys property We prefer to license vs sell What can go wrong? – simulation Company We monitor all scientific journals and look for technologies that can be implemented in their business We want to develop the platform further We will look for consulting on conflict of interest and will check when invention was conceived

Part 2 (assumption: Company and University agreed to license) University granted rights to all patents and future developments; all fields worldwide, with full access to materials, know-how, and lab notes. Company asked for only this one patent, limited to one field; doesnt care of exclusive or non-exclusive What went wrong? What can go wrong? – simulation

University We want to grant rights to only one patent, specific use Further improvements should be reserved for the University We want limited fields and license other uses We want to reserve a clause regarding markets in developing World We want to reserve rights for teaching purposes What can go wrong? – simulation Company We ask for a wide platform, with all exisiting and pending patents Worldwide, all fields Exclusive license We want automatic license to all improvements We want to control patent prosecution

Part 3 University signed a license agreement with no upfront fee and flat royalties based on sales once commercialized. No milestones set. Company paid all patent expenses accrued so far and agreed to pay all future ones. What went wrong? What can go wrong? – simulation

University We ask for upfront fee to secure companys commitment We want milestones reached before and during commercialization We want minimum royalties What can go wrong? – simulation Company We want lower upfront fee to lower the risk We want a discounted royalties to secure a smooth entry to market We want to control patent expenses We dont agree with minimum royalties

Open dialogue: - Who builds a prototype? - Sponsored research agreement? - Performance diligence? - Health institutions approvals, etc.? - … What can go wrong? – simulation