1. COLUMBIA UNIVERSITY Technology Transfer- An Overview Dr
COLUMBIA UNIVERSITY Technology Transfer- An Overview Dr. Michael Cleare Executive Director Science and Technology Ventures

2. Historical Development
Founded as King’s College under British Royal Charter, 5th college in American Colonies
- Medical Faculty established, 1st in colonies
Re-chartered as Columbia College
School of Mines established, predecessor to School of Engineering and Applied Sciences
School of Architecture established, 4th in U.S.
Schools of Nursing, Architecture and Social Work, 1st in U.S.; Barnard College and Teachers College become affiliates; College of Physicians and Surgeons established
Re-named Columbia University
School of Journalism, 1st in U.S.
Columbia-Presbyterian Medical Center created, 1st integrated medical research, education and clinical care facility in U.S.
Lamont Geological Observatory established, now Lamont-Doherty Earth Observatory
Columbia Earth Institute established

3. University Leadership
Board of
Trustees
President
Provost
Academic VPs and Deans
Executive VP for Research
Senior Executive Vice President
University-wide Strategic Initiatives
Innovation and Knowledge Transfer-
(Science and Technology Ventures)
Administration
School and Departmental Initiatives
Research Institutes and Centers
Tenure Process
Pedagogy and Curriculum
Multidisciplinary Program Development
Research Institutes and Centers
Sponsored Research

4. Key Mechanisms for Transferring Academic Knowledge to Industry
Faculty contacts and consulting
Published papers, talks at meetings, patents and applications
Columbia graduates
STV industry contacts
Deals- Licensing/Spin Outs
STV web site (

5. Before Bayh- Dole
“Science - The Endless Frontier” (1945)
Expansion of federally funded research
investments since 1950s
Recognition of unrealized public benefit and
commercial potential from research results from
federally funded research (28,000 patents, <
5% licensed)

6. Bayh-Dole Act (Patent and Trademark Act of 1980)
Non-profits can obtain title to inventions made with federal funding (e.g. National Institute of Health grants)
Bayh-Dole places obligations on non-profits, including:
Disclose the existence of inventions
Seek patent protection for inventions
Diligent commercialization
Annual reports on commercialization efforts
Exclusive licensee must manufacture substantially in U.S.
Preference for small businesses as licensee
Share revenue with inventors
Net revenue used for educational and research mission

7. Bayh- Dole Provisions encourage collaboration with industry to
promote the utilization of inventions;
universities must file patents on
inventions they elect to own;
government retains non- exclusive
license and march- in rights.

8. Bayh-Dole Act - Key ProgramRequirements
Disclosure to Agency
Election of Title
Within 2 years of disclosure
File Application
Designate U.S. Funding Source
Occasional Reporting
Inventor Shares

9. SCIENCE & TECHNOLOGY VENTURES MISSION STATEMENT
- Transfer inventions and innovative knowledge to outside organizations for the benefit of society on a local and global basis
- Whenever appropriate this is to be carried out at going commercial rates so discretionary funds are brought into the university to improve educational and research activities and capabilities

10. Science and Technology Ventures Principal Activities
Work with faculty members to identify and patent new inventions
Facilitate research collaborations between faculty members and industry
License inventions and technology developed in University laboratories
Established Companies
Start-ups
Provide support to licensees and start-ups
Incubator
Compliance with government regulations, reporting.

12. (“Pushing back the Frontiers”)
UNIVERSITIES - A MODIFIED CORE MISSION
THE NEW INTERFACE
UNIVERSITY
Academic Research
(“Pushing back the Frontiers”)
Teaching Scholarship
(“Human Capital”)
Interdisciplinary Initiatives
Translational Res./Tech Transfer
Economic Dev.(local, natl.,
global)
Spin offs/jobs/GDP
Focused short courses.
Corporate/Government Rels
Agencies, Alternative Funding
Interactions with
Society
(“Reducing to Practice”)

13. Columbia Intellectual Capital
Over $600 million in research support annually
23,000 students (7,000 u/grads); Graduate Researchers
3,000 faculty, plus 4,000 researchers, clinicians, part-time
74 Nobel Prizes awarded ( )
World-class medical center
500 patents
250 Invention Reports reviewed annually
Many Inter-Institutional Relationships

14. R&D expenditures at U.S. universities FY 1992-02
$31.7Bn
AUTM Licensing Survey: FY 2002

15. Industry-sponsored R&D expenditures U. S
Industry-sponsored R&D expenditures U.S. universities and colleges, FY92-02

16. TECHNOLOGY TRANSFER FLOW CHART
FEDERAL
FUNDS
$400 M
TECHNOLOGY TRANSFER FLOW CHART
EXTERNAL
MARKETING
INPUT
GOVERNMENT
AGENCIES
INVENTION
REVIEWS
COMMERCIALIZATION IP
MINING
IDENTI-
FICATION
PRIORITIZATION
STRATEGY, TACTICS
LICENSE V START UP .
TECHNICO/MARKETING
INVENTION
BRIEFS (2-3 WEEKS)
REPORTS
STV OUTSIDE
COUNSEL/CONSULTANTS
MORE DATA
MORE DATA
SHELVE
SPECIALIST
TECHNICAL
INPUT
STATE/
INDUSTRIAL
OTHERS
$210 M
IP PORTFOLIO
PATENTS
COPY RIGHT
STV
LICENSE/
SPINOUT
OTHER/
PARTNERSHIPS
ADANDON
REPORT
GOVERNMENT
AGENCIES. ETC.
DEALS
FOREIGNS
CIPS $$
SUCCESS
% BACK TO CU

17. STV Discovery and Commercialization in FY04
Research Expenditure- Federal, State, Industry, and University
$610MM in Research Expenditure
Faculty Member or Graduate
Student Has a New Invention
240 Inventions Reported
STV Decides to File
A Patent
130 New US Patents Filed
$10 MM/yr Investment (legal costs)
License to
Existing Companies
License to
Start-ups
60 Licenses Executed
9 Start-up/Small Companies Formed
Market
$109 MM of Income Generated
6 Start-ups Funded

18. US University Technology Transfer Productivity
$2.4M/per disclosure
123,230
Disclosures
$267 B
Research
42%
57,641 Patent Applications
Assessment
21%
48%
61% FY 01
26,000 Issued Patents
22%
26,000 Active
Agreements
products
Commercialization
3.5%
17%
4,320Start-Ups
platforms
AUTM Licensing Surveys FY91- FY02

19. Organizational Structure & Outputs
Executive Director, S&T Ventures
New Ventures
Strategic
Partnerships
Economic Development
Patent Management
250 inventions annually
150 active license agreements
100 active research agreements
Health Sciences
Arts & Sciences / Engineering
Go through chart:
-Int. and ED new activities
-Importance of research agreements
60+ startups created
Patent pools, research:
Karolinska
ITRI
-Imperial etc.
Regional TBED strategies, state/local sponsors
500+
patents
under management

21. Advantages of Working with Universities
Major source of new technologies
Basic and pioneering research
Leverage many existing academic - industry ties
Ongoing relationship allows easy monitoring of opportunities
Technology Transfer offices offer one stop shopping
Research agreements, License Agreement, Research/License options
Flexible deal making plus competitive research costs
We strive to make integration easier across the board
- Many T.T. directors with industry experience

22. Columbia Inventions Submitted to STV
248
236
207
208
189
182
151
155

23. Life Sciences Invention Reports by Department
120

24. STV Completed Agreements
149
148
148 84
113 90 93

25. Patent Applications Filed
YEAR
TOTAL US
TOTAL FOREIGN
TOTAL APPLICATIONS
FY 1996
108 48
156
FY 1997
111 85
196
FY 1998
104 81
185
FY 1999
109
102
211
FY 2000
118 60
178
FY 2001
173
131
304
FY 2002
190
270
460
FY 2003
232
443
FY 2004
121
252

26. Patent Applications Filed
STV Patent Applications and Agreements Sustained Strong Levels Over Time
Patent Applications Filed
375 patents applications were filed in FY04
Slight decline in recent years reflects effort to control patent costs
Agreements Completed
Significant growth since reflects increased outreach to faculty and the market

27. The Virtuous Cycle UNIVERSITY NEW KNOWLEDGE TRANSFERRED BASIC RESEARCH
OUT OF
UNIVERSITY
FOR BENEFIT
OF SOCIETY
PRIME ACTIVITY-
BASIC RESEARCH
STATE $
UNIVERSITY
TECHNOLOGY
TRANSLATIONAL
FEDERAL
FUNDING $
(RETURN ON FEDERAL
INVESTMENT)
IP/KNOW HOW
INDUSTRIAL $
LICENSE
INCOME/
RESEARCH
AGREEMENTS
CORPORATE
RELATIONSHIPS
COMMERCIALIZATION
LICENSED OUT AT
GOING RATE TO
ESTABLISHED
COMPANIES & START UPS
DISCRETIONARY
FUNDS FOR
EDUCATIONAL/
RESEARCH
INITIATIVES
INCOME TO
UNIVERSITY $$
GRADUATES
PRODUCTS/PROCESSES
PROFITS-TAXES GDP ETC.
JOBS
EXPORTS
RETURN ON FEDERAL INVESTMENT

28. Selected Products Benefiting from Columbia Inventions
SIPquest* *
Chalfie’s GFP* *
Arrow Catheter (Modak)
CHO cell line (Chasin),
not patented (1980 PNAS)
Blackberry 7100 T (Im)*

29. Successful Licenses
Co-Transformation (Axel et al.)- Process of inserting a gene into a eukaryotic cell (usually CHO cell line developed by Dr. Larry Chasin) to cause the cell to reliably produce large amounts of a therapeutic protein
licensed to 20 companies
Xalatan (Bito)- Prostaglandin-based drug for treating Glaucoma
licensed to Pharmacia (now Pfizer)
Antibody Technology (Joint with Stanford - Morrison et al)
licensed to Centocor (Johnson & Johnson)
Digital Compression Technology (Anastassiou)
Founding member of MPEG LA, Patent Licensing Pool Partnership

30. Products from Columbia Technology
TPA Degrading blood clots
EPO Stimulate red blood cell production
Herceptin Breast cancer
Factor VIII/IX Clotting factors for hemophiliacs
Pulmozyme Cystic fibrosis
DVD’s Digital compression (MPEG 2)
LCD Screens Sequential Lateral Solidification
LED’s White/blue light emitting diodes

31. Commercialization of Academic Research Plays a Major Role in the Economy
Funding for university research exceeded $30 billion in 2000
Gross license income in 2000 totaled $1.26 billion from over 9,059 licenses
Estimated $40bn of US economic activity attributed to results of academic licensing, supporting 270,000 jobs
Since 1980, 3,400 new companies were formed based on licenses from academic institutions
Sales of products-417 in raised $5bn in taxes
NIH report estimates 15x return on funding (2000)
NSF 1998, AUTM 1999,2000.
($mm)
Bayh-Dole Act 1980

32. US University Technology Transfer Trends*
License income of $1.25 billion to US universities (CU share >10%) Median income for the twenty largest research universities was $7MM (Avg=$17MM).
New Licenses: 3,739 new licenses executed (up 15%),
32% of licenses with large companies (>500 FTEs), 450 new companies launched
Active licenses: 26,000 licenses active (up 14%), 22% with product sales
*Data from AUTM 2002 survey

33. University Policy- Distribution of License Revenues
GROSS INCOME 1-$125, > $ 125,000
STV EXPENSES/ DEVELOPMENT FUND % %
NET INCOME Up to $100, >$100,000
INVENTOR % %
INVENTOR’S RESEARCH % * 20.0% *
UNIVERSITY % %
DEPARTMENT % *
SCHOOL % *
* CAP APPLIES

34. Criteria for Licensing to Start-ups
Higher potential ROI than licensing opportunity
Broad basis for multiple products
Ideally a disruptive technology likely to be adopted in near term
Development work and proof of principle required to attract licensees
Best (often only) route to exploitation
Faculty member must have requisite contacts, drive and abilities
Must meet current investor criteria
Business model, quality management interest, alignment of interests, large market size
Low risk of negative public relations relating to technology and stakeholders

35. STV Approach to Spinouts
Low up front money, patent costs reimbursed
License fee phased in line with milestones and/or funding rounds
Case by case balance of equity & royalties, strategic decision based on business and the IP’s likely productization
STV support before and after first round of Funding
Columbia portfolio company status

36. Best Practices for Adding and Retaining Value in Spinouts
Help on business plan-staff experience/business school
Make introductions to potential mgmt (VC Network)
Introduce faculty members to each other, eg. molecular biologists to chemists
Introduction to venture community-extensive networks
Lower up front fees in exchange for equity
Bundle IP with complementary inventions at other universities, both domestic and international
Add experts to SAB, take a board observer seat, lend world class expertise- “the halo effect”
Pay patent costs, stretch dates of reimbursement
Facilitate turnarounds
Why focus on University IP for spinouts?

37. New Ventures Revenues*
66 Companies to Date Current Companies 9 Companies Formed in FY Public**
15 Portco Licenses Producing Royalties & Fees
5 Investing in Research
MPEG as percentage of total income declined 33% over last two years, showing increased breadth
NV portfolio now accounts for 10% of STV income
Need significant growth in portco royalties in ‘05 and ’06 to continue overall upward trend
$12.5MM
$7.1M
$10.6M
$10.7M
Nephros, Co-Therix, Memy, Sentigen, Corixa, Pharmacopeia/Accelrys, Progenics, Aton, Call Street, Genpath, Nexell went under
* MPEG Revenues decreased from 78% in ’02, to 67% in ’03, to 45% in ‘04
** 7 still trade, 4 acquired, 1 went under

38. Summary on University Startups
Universities help to launch startups when they are realistic businesses
Startups should provide fair value for the technology and reward risks by university
Equity is only part of the deal value, not the driver
Companies need to recognize the complexity in university policies
Both sides need to be creative and flexible, and have fun throughout the negotiation
Outstanding management at the earliest stages makes all the difference
Even failed startups can benefit Columbia

39. Value of STV’s Portfolio of New Ventures has Increased Over Time
Since its inception, STV has been involved in 66 start-ups, in many cases taking an equity stake
50 companies still active
15 currently produce income through royalties, equity payments and milestone fees
5 are investing in sponsored research at Columbia University
2004 was an extremely positive year for creating shareholder exits
7 companies acquired, went public or announced exit events, for a total of $8 million (estimate) in income to Columbia over FY04 and FY05
Compared to 5 such events over past 19 years
Latest valuation for STV’s private equity is $40 million

40. STV Portfolio Companies Public Transactions in 2004
Seven portfolio companies
went public or announced
their acquisition by a
publicly traded company in
2004
12 out of STV’s 50
companies created exits for
Shareholders
Columbia income from
these transactions will be
~$8MM *
Skinetics
Biosciences
Sirna Therapeutics
(Nasdaq: RNAI)
acquired Skinetics
$2MM+milestones
Topical hair removal
December 2004 *
announced acquisition Smarts $260MM
Storage management
December 2004
acquired Aton $150MM+
milestones
Treatment of cancer
March 2004
FactSet Research
Systems(NYSE-FDS)
acquired
Call Street Inc.
$7MM
Wall street notes on
conference calls
May 2004
Cotherix Inc
$30MM (NASDAQ:CTRX)
Treatments for
Pulmonary disease
November 2004
Memory Pharmaceuticals
$35MM
(NASDAQ:CTRX)
Treatments for CNS disease
April 2004
Nephros Inc
$12.6MM (AMEX:NEP)
Treatments for end stage renal disease
September2004

41. Executed Agreements with New Portfolio Companies10 9 9 7 5 5 4
Quality not quantity

42. Columbia Contributes to Success of Startup
GROWTH
STV
ACTIVITIES
License IP - balance
equity and royalties
Add experts to SAB,
grad students
STV board observer
IP bundling with other
institutions
Ongoing basic research
Business plan
Seed funding-
proof of principle
Introductions to
investors, mgmt.
SBIR proposals
STV-led turnarounds
Invest in patent,
evaluate commercial
opportunities
Collaborate with
other faculty/industry
Inventor makes
Discovery
SOURCE OF FUNDS:
USE OF
FUNDS:
Government
grants
Basic research
Government,
company sponsors
Applied research
SBIR, angels,
seed VC
Prototypes, models
“proof of concept”
Early stage VC
Product development

43. Lessons Learned from Startups
Carefully evaluated balance of royalties, fees and equity maximizes return
In some cases Columbia should agree to equity split with scientific founder before company’s inception.
Launch startup when there is a realistic business plan
Startups should provide fair value and reward risks undertaken by university
Outstanding management at the earliest stages is vital

44. Startup Policies
No sponsored research allowed from company if faculty member holds equity
No management role for faculty, most act as Chief Scientific Advisor one day per week
Sell equity as soon as possible post-IPO
STV takes board observer seats in exceptional cases

45. COMMON UNIVERSITY TECHNOLOGY TRANSFER ISSUES
Effect on traditional university role.
Return on federal investment: Scientific, cash, equity, societal
Conflicts of interest situations - rules & management
General availability of technologies - e.g. research tools/targets.
Deal structure - Going commercial rate?
- Back v front loading
- Start ups; equity, royalties, license fees, research
- Small v large companies.
Timeliness/Responsiveness: internal & external
Global Issues
- Provisions for poor countries
- Patent status/enforceability

46. What is Next in Technology Transfer?
Technology gap funding increasingly common as Universities seek to maximize returns
Industry university partnerships
Humanitarian considerations
Increasing number of high quality startups
Proof of concept gap funding enabling more and better opportunities
Young tenured faculty more interested in startups

47. Innovation Gap Funding
Private Funding
VALUE
Proof of Concept Funding Gap
Public
R&D Funding
Product Development and Marketing
Technology Value
Captured
Validation
Basic
Research/
Discovery
Feasibility
Technology
Development
Funding
Sources
Gov’t and
Company Grants
SBIR, angels,
seed VC
Columbia
Gap Fund
STV Pre-Seed Fund
Early stage VC
TIME
STV Licenses Technology

48. Models to Bridge the Proof of Concept Gap at Universities
Government funded seed funds - University Challenge Seed Fund - UK, STTR program - US
Philanthropy funded interdisciplinary drug discovery centers - Broad Institute - MIT /Harvard
Venture-backed specialty investment companies
/incubators- Synecor - Duke, Frazier Health Care, Guidant, GE Medical, Delphi and Deutsche Bank
University Seed Funds- There are over 60 universities with some kind of seed funding available, ranging from granting small amounts of money to advance research projects, to venture capital funds, with endowment capital, that invest exclusively in university spinouts.

49. Effective University Technology Transfer Needs:
Summary
Effective University Technology Transfer Needs:
Clear Title (e.g. Bayh Dole)
University’s Commitment
Office with Critical Mass, Appropriate Experience
Supply of Excellent Research
This can provide:
Value to Society and Economy
Discretionary Funds to University
Retention/Recruitment Incentive

50. Academic Partnerships – STV Partnerships
Develop collaboration with other academic research centers around the world - joint research, licensing and start-ups
Many new inventions are complex and research is multi-center- genomics, proteomics and new digital technologies
Collaboration brings together more knowledge and skills to make major new developments, allowing for more rapid development and greater success
Encourages earlier collaboration of commercial partners
University collaborators include: Stanford, Cold Spring Harbor, Oxford, Pasteur, McGill, Karolinska, ITRI

51. Rationale
Complexity of technology-no one Institution will have all the answers
Provides another option to exploit IP/technology
Affords leverage through access to partners’ marketing network- cross marketing
Unlocks new funding sources
Enables transfer of know how/best practices
Develops broader relationships Internationally

52. STV Partnerships’ Mission
To develop and manage external
collaborations with academic/technology
development organizations and to commercialize Columbia/partner IP for the benefit of society and Columbia

53. Strategy
Identify areas of Research strength at Columbia which are complemented at another institution
Increase value by combining existing technology/IP into a more valuable package for licensing
Facilitate joint research, increase funding, create more valuable joint IP, license technology to obtain better deals from industry

54. ITRI-Taiwan Research Foundry- industry/government funded
SLS Agreement executed- LCD/OLED flat panel displays – PDAs/cellphones//automotive
Framework agreement drafted for IP specific deals/ joint research collaborations/IP pooling
Major Agency/Research Agreement over next several years- SLS Help Desk for Taiwan industry, will license to major players- AU Optronics/Toppoly
License agreements in negotiation

55. Imperial/Exploit Alliance
Tripartite Alliance formed 2003 between Columbia, Imperial College London and Exploit, Singapore
Intent is to bundle technology/IP and form joint research collaborations for licensing
Bioinformatics (Functional Genomics) is first project, with Diabetes/obesity area under consideration
Cardiac Pacemaker (joint IP) strategy in development

56. Karolinska Institute, Stockholm
Stem cells, neurology, cancer identified as key areas for collaboration with Columbia
Joint gender specific research potential(cardiovascular/ osteoporosis/ CNS/ Diabetes)
Institutional connection through Dean’s Office, Health Sciences Division, Columbia

57. McGill University, Montreal
Areas for collaboration-nanotechnology, metals, sensors, cancer, parasitology, display/”smart” electric grid technology
Facilitated Faculty contact on Biosensors
Canadian Consulate/Consultant meetings -possible collaborations with Alberta, Toronto, Waterloo, Vancouver

58. Ireland Dublin-UCD/DCU/Trinity contacts-MOU signed with DCU
Investigated EE collaboration potential
Genomics and high throughput screening also pursued
Science Foundation Ireland relationship with Columbia established

59. Ben Gurion University, Israel
Two research areas identified-tissue necrosis/drug delivery
Potential collaboration on vaccine (smallpox) and antibodies research and funding (joint project-Homeland Security funding) with Columbia start-up company
Weizmann and Technion discussions initiated

60. Stanford University
Radioprotection (cellular level), microarrays, bomb detection and network security of interest
Columbia Radiation /Physiology/Cellular Biophysics Faculty reviewing information
Photonics area a possibility
Bioarrays for viral/infectious disease detection – Joint IP

61. China Visit in November’03 with CUMC personnel
Meetings with Ministry of Science and Technology, Academy of Sciences, Peking Union Medical College and Fudan University (Shanghai)
Public Health Initiatives- SARS- ongoing
Teachers’ College hosted NAEA delegation of top University administrators- STV Partnerships ran week long research management/Tech transfer seminar for group
Hosted Zhejiang IP delegation in December ‘03

62. Successful Deal- Lilly
Lilly/Columbia/British Diabetes Association/Pasteur Institute
Multi-year deal researching genetic basis of diabetes
$25 MM in corporate funding
Complexities of culture and legal frameworks overcome, all partners benefited

63. CSFs for International Collaborations
Focused, dedicated resources
Identification of true research synergy
Faculty relationships-identify/facilitate
Commercial/legal/licensing framework defined up front
Pragmatic approach to funding/resource challenges
Sense of urgency

64. Corporate Outreach Integrated Business Development strategy
Coordinate across Life Sciences/Physical Sciences
Contacts Database
Presentation to highlight platform capabilities at Columbia
Incent “Proof of Concept” funding approach for industry