Understanding Technology Transfer Katharine Ku March 2, 2006.

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Presentation transcript:

Understanding Technology Transfer Katharine Ku March 2, 2006

Bayh-Dole Law Title to the university, then gov’t Share royalties with inventors Royalty free license to the gov’t Preference for small business Substantial manufacture in the US

Patents Term –20 years from filing What is patentable? –New –Useful –Nonobvious Process, Composition of Matter, Machine, Article of Manufacture

Patent Policy At Stanford –Patentable inventions made by faculty, staff or students...in the course of their University responsibilities or with more than incidental use of University resources...shall be assigned to the University. At other universities

Royalty Sharing Policy Gross Royalties –Minus 15% administrative fee –Minus expenses Equals Net Royalties –1/3 to Inventor(s) –1/3 to Department –1/3 to School

It Starts with an Invention Conception or reduction to practice –Inventor(s) –Sponsorship Disclose to OTL (early!) –Public disclosure –notebooks Evaluation –Can it be licensed?

Finding a Licensee Licensing Strategy –Is it worth cost of Filing? Patentability Don’t always need to file –Finding a licensee (not easy!) –Marketing Feedback COI ALL OF THIS TAKE A LONG TIME!

Licensing Exclusive v. nonexclusive Term of the exclusivity/agreement Field of use Financial terms –Upfront –Annual payments –Earned royalties Diligence/Milestones Non-financial issues –Liability –Holy clause

A word about MTA’S Outgoing Materials –Short version –UBMTA –Long version –When to use Incoming Materials –Why it takes so long

Inventorship Issues Inventors/Creators –Faculty v. faculty –Faculty v. students/postdocs –Research scientists –Importance of notebooks First to invent

Start-ups and Conflicts of Interest Management/prohibition Stanford Process/Concerns –Separation of activities –Students –Pipelining

Notable Stanford Inventions 1970 – OTL Established FM Sound Synthesis ($22.9M) 1974 – Recombinant DNA ($255M) 1981 – Phycobiliproteins ($38.9M), Fiber Optic Amplifier ($26.5M), MINOS ($3.2M) 1982 – Amplification of Genes ($18.5M) 1984 – Functional Antibodies ($61M) 1986 – CHEF Electrophoresis ($2M) – DSL ($17.9M) 1996 – Improved Hypertext Searching (Google TM ) 2006 – the next big thing ???

Sobering Statistics 3/6000 is a BIG WINNER 16 cases generated $5M or more 53 cases generated $1M or more in cumulative royalties The University cannot and does not count on royalties for university operating expenses

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