1. Stretch Your TTO’s Budget Michael Rondelli, J.D., M.B.A Director, Technology Transfer Office San Diego State University Research Foundation

2. Agenda Why do you have a TTO on campus? –What does it do? What value does it create? Who are the stakeholders? How do you create a reputation and leverage it?

3. Why do you have a TTO on Campus? What does it do? Generate royalty? Legal requirements? Recruit faculty? Other? –Grants for TT –Econ Development

4. TTO Activities Identify proprietary intellectual property Protect IP with confidential disclosure agreements (CDAs) and material transfer agreements (MTAs) Manage the patents, copyright and trademark process Negotiate and manage IP licenses and royalty agreements Manage IP in Sponsored Research and contractual agreements Educate faculty and students about IP matters Help manage conflicts of interest and commitment issues Help faculty spin-off new companies Incubate new companies Represent the university in local, national and international organizations Work with community and economic development organizations

5. Types of deals CDAs Licenses MTAs Corporate grants Corporate job-shopping Development of plays/works of art

6. Royalties Up-front Back-end Equity Sponsored research –Faculty desired? Anything else?

7. Legal Requirements Federal law –Bayh-Dole Act State law Unjust enrichment Use of space Use of resources Use of students University policy/charter

8. Bayh-Dole Objectives 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

9. Compliance Some tasks are more appropriate for TTO some are more appropriate for SRA Successful reporting requires intentional institutional systems Violation risks forfeiture of invention title Violations of reporting requirements are widespread (U.S. General Accounting Office)

10. Recruit/Retain faculty Larger royalty share to faculty Larger support to faculty labs Personal attention to faculty: people matter; treat them well and they treat you well What is important? Royalties or Grants? Other –SBIR –Campus companies –Campus venture contacts/funds

11. Value creation Royalties Faculty Grants Students Publications Economic development Relations with city/state/federal Demonstrate expertise in an area Reputation

12. Stakeholders Faculty Deans Alumni City State Local industry –Need students with skills –Need new companies –Need more science HR – recruit/retain Facilities Support industries Local angels/vc/banks/insurance/accounting

13. Create a reputation Who do you want to be? Stay on point; if one deal is off message, do not waiver from your stance Tell it to everyone Show up Don’t be afraid to pick a fight Find a niche, actually, grab a few, they are small

14. Leverage - example SDSU is much smaller and no where near as experienced as other local TTOs We’re smaller, so more nimble, greater attention to serving our stakeholders Never fall into calling names; stay on point… we do it this way because that is who we are and what we are able to do

15. Anatomy of a Deal What is being Transferred? Exclusive/Non-Exclusive Term Laws Milestones Payment Timing/Formation Compensation Pullback IP Costs Confidentiality Relationship to Other/On-Going Research Indemnification Language Future IP Right to Publish/Practice Non-Commercially Relationship to Faculty

16. Deal Terms Pick a few that matter to you, fight those battles Give up the other ones

17. How does this tie in? TTO impacts sponsored research/grants –Should they pay for part of the overhead of the TTO? –Do they know to include IP terms? TTO impacts Marketing/Communications Charitable gifts –TTO has the faculty and alumni capable of BIG gifts; or use TTO science to entice a donor to endow research that will impact a desired outcome

18. Thanks! Any questions? Michael Rondelli, J.D., M.B.A Director, Technology Transfer Office San Diego State University Research Foundation mrondelli@foundation.sdsu.edu 619-594-3336