Technology Transfer Commercial Opportunities in Research J. Heidjer Staecker Partner

What is Technology Transfer?  The process of transferring scientific findings from one organization to another for the purpose of further development and commercialization.  The process typically includes: Identifying new technologies Protecting technologies through patents and copyrights Forming development and commercialization strategies such as marketing and licensing to existing private sector companies or creating new startup companies based on the technology

Prior to law  Government held title to ~30,000 patents  Less than 5% were licensed and operating  All inventions and patents were available on a non-exclusive basis  Government rarely relinquished title after a lengthy, petition process  The public, as taxpayers, did not benefit from investment in research and its outcome Bayh-Dole Act

 P.L , Patent and Trademark Act Amendments of 1980  Established that Universities, not the gov't, own the rights to IP developed under federal research funding  Universities required to have written agreements with faculty/staff for disclosures and assignments  University must disclose to funding agency w/in 2 months of receiving disclosure  Decision to retain title to ownership must be made w/in 2 years of disclosure  Decision to patent must be made w/in 1 year of decision to retain title  Preference given to small companies for licenses  Must share royalties with inventors  Limited government march-in rights Bayh-Dole Act

 Promote utilization of federally-funded inventions  Encourage small business engagement in federally-funded R&D  Promote collaborations between universities and industry  Promote commercialization in the U.S. of U.S.- made federally-funded inventions  Protect the government’s rights to federally-funded inventions Bayh-Dole Objectives

 Publication prior to filing creates IP issues  Cannot assign IP  Cannot provide unjust enrichment to a sponsor  Data is not IP unless agreed in contract  Publication rights critical  IP allows research to impact communities Important Things to Remember

Technology Transfer Process Lifecycle Research Technology Disclosure Commercialization Evaluation Protection Marketing License/Sponsored Research Agreement

 Disclosure  Assignment  Patent Prosecution  Spin-out/license  Negotiate Transaction  Distribute royalties TTO – basic functions for faculty

 MTA  CDA/NDA  IIA  Assignment Agreements  Licenses Common Agreements

 Ownership of IP  IP Protection  Licensing  Compliance  Help with sponsored research  Start up formation TTO Activities

 Applied Research as a Goal  Funding Sources  Impact on Communities  Notoriety  Build on Past Work  Publications  Freedom to Operate Importance to Research

 Technologies are evaluated from a commercial perspective  This differs from a legal or scientific evaluation The scientific and creative side of inventions are generally top-notch Science alone does not create a market Similarly just because a technology can be patented does not mean there is a market need for the innovation  For successful commercialization efforts, it is important to match innovation value with market need Commercialization Evaluation - Purpose

 Commercial Application Relationship of the invention to a product-commercial application What problem does it solve?  Technical Technology Summary  Competitive Landscape and Commercial Benefits -What are the top competing technologies? -How does this new invention compare to competing technologies? More efficient Less expensive Better, Stronger, Faster, Cheaper, Greener Commercialization Evaluation – Content

 Market Size and Trend Define target industry/industry sectors Describe size and current trend of the target industries  Technical Development Direction Develop a recommended pathway to development Suggest additional applications or features for optimization Identify regulatory/commercialization hurdles and provide advice for ways to overcome them  Potential Partners Include Industry Partners Investors/VCs Community/Economic Development Groups Commercialization Evaluation – Content Continued

Marketing

Packaging The Technology – The Summary

 Exclusive right to disallow use by others  Provides the holder exclusive right to disallow use  20 years from date of filing  Public domain if public disclosure = not patentable  1 year grace in US  PCT = foreign patents  First to file in US as of March 2013 (AIA) Packaging The Technology – The Summary

 Potential partners will want to see additional, non-confidential information: Publications Abstracts Presentations Video Data  When marketing, this information is needed to fill in the gaps in the marketing summary  Also keep in mind additional applications Packaging The Technology – Additional information

 Passive – Putting out a technology/discovery/ offer and wait for people to find it i.e., Websites & publication  Semi-Passive (or semi-active) – Putting out a technology/discovery/offer to a specific group of people i.e., Social Media, conference presentations, etc.  Active – Active engagement of targeted, potential partners Phone calls, introductions, etc. Types of Marketing: Passive, Semi-Passive, Active

 Research contacts  Peer publications  Knowledge of the field  Social media (i.e., Linked In)  Proprietary Databases (i.e., OneSource, Salesforce, Hoovers etc.)  Office of Patents & Licensing  Internet Research Resources: How does one find companies & contacts?

 Personal interaction is most important way to establish first contact  Phone call is easiest way to do it  Meeting at a conference  Contact through a relation  and mail is too easily ignored, lost, or forgotten Pick up the Phone … and dial

 Non-confidential information first  After NDA, confidential information and discussions  Inventor availability and involvement very important  Remember research requirements  Be realistic about development Someone wants to talk

 How much money does you need to accomplish your (and the company’s) research goal?  Defined actions  Have you taken into account the university’s overhead?  Do not fudge the costs! Let’s talk about Cash

 Does not mean that it is bad science Market timing may be wrong Market may be too small Path to market may be difficult  Focus on research opportunities around technology  Think about alternative applications No one is interested

 Interaction with industry (and others) is based around a series of legal constructs (concepts), whose goal is to protect the owners (inventors, university, and industry) IP – intellectual property – patents, copyrights, trademarks, trade secrets, know how NDA/CDA – Non-disclosure agreement – keeps secrets MTA – Material Transfer Agreement – Keeps track of materials coming in and out of labs Sponsored Research Agreement – Contract that outlines a specific line of research that is paid for by one of the parties Option – Keeps a piece of intellectual property off the open market for a period of time License – A contractual transfer of rights between parties  Some or all of these may come into play IP, NDAs, MTAs, and other Nonsense

Questions?