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

2. KU Innovation and Collaboration Who we are What we do

3. KU Innovation & Collaboration

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

5. In the beginning

6. Inventions & discoveries

7. 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?

8. 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

9. Now some definitions…
Pantent
Tech Transfer
Commercializable Inventions
What
How

10. 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

11. 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

12. 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

13. 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

14. 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

15. 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
Submit to KUIC
Never too early!
Confidential - KU internal document
No IP protection until patent filed
KUIC - Copyright 2017

16. 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

17. 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

18. 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

19. 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

20. 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

21. 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

22. 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?

23. 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

24. 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

25. 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

26. 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

27. 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

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