1. Technology Transfer at UIC © 2009 by the Board of Trustees of the University of Illinois Presentation to the Software Commercialization Symposium April 6th, 2009 Nancy Sullivan, Director Mark Krivchenia, Technology Mgr. Office of Technology Management

2. The Office of Technology Management © 2009 by the Board of Trustees of the University of Illinois Main Office: COM 446, MC 682 1853 West Polk Street Chicago, IL 60612 www.otm.uic.edu Satellite Office: SEO 801 (East Campus) 851 S. Morgan St., MC 682 Chicago, IL 60612

3. The Office of Technology Management © 2009 by the Board of Trustees of the University of Illinois Our Mission: The Office of Technology Management (OTM) Support faculty members and researchers in the commercialization of their discoveries Bring research discoveries to the public through commercialization Support economic development in the State of Illinois (State Policy Statement, 2000) Generate income for the University

4. Key Drivers of Academic Technology Transfer © 2009 by the Board of Trustees of the University of Illinois 1. Bayh-Dole (1980): Allows Universities to retain ownership of inventions created with federal funding. In exchange, Universities must use its resources to develop these inventions and share proceeds with inventors 2.Research Funding Dollars at Major Research Institutions: UI: 808 Million FY 2006 UIC: 332 Million FY 2006 UIUC: 476 Million FY 2006

5. University Policy www.vpaa.uillinois.edu/policies/patents.asp © 2009 by the Board of Trustees of the University of Illinois 1. Intellectual Property (IP) is owned by UIC if: discovery is a result of employee’s duties discovery is made through use of university resources 2.Sharing of revenues from UIC IP: 40% divided among inventors 40% to University 20% to College 3.University Rights in Creator-Owned Works (1) Traditional academic copyrightable works owned by the creators. Such works need not be licensed to the University. (2) Traditional academic copyrightable works created with use of university resources over and above those usually and customarily provided shall be owned by the creators but licensed to the University.

6. The Office of Technology Management © 2009 by the Board of Trustees of the University of Illinois How we achieve our goals work with faculty members and researchers to assess the patentability and commercial potential of their discoveries provide intellectual property educationintellectual property support and encourage UIC inventors to explore the commercial potential of their discoveries

7. The Office of Technology Management © 2009 by the Board of Trustees of the University of Illinois How we achieve our goals continued protect university IP with patents, copyright, and trademarks market and license technologies and monitor licensees’ performance distribute income according to University policy : patent reimbursement, royalty distribution (40-40-20%)University policy

8. The Disclosure Process © 2009 by the Board of Trustees of the University of Illinois 1.Inventor makes a discovery. 2.Inventor completes a “Report of Research Discovery” form and submits to OTM 3.OTM does a screening analysis to assess: Preliminary View of Patentability Commercialization potential Completed 4-6 weeks from initial disclosure 4.OTM communicates recommendations to faculty Files for patent or other IP protection (copyright, etc.) 5.Markets technology (licensee or start-up company) Request further data or research Close down the technology

9. © 2009 by the Board of Trustees of the University of Illinois Assessment timing

10. OTM Activities © 2009 by the Board of Trustees of the University of Illinois

11. OTM Activities © 2009 by the Board of Trustees of the University of Illinois

12. Commercialization © 2009 by the Board of Trustees of the University of Illinois Marketing Active – reach out to companies Passive – website Interest Non-Disclosure Agreement with interested companies – scientific discussions with inventors Option Agreement – evaluation and license negotiations License Agreement – product development and sales Compliance Royalty distribution - 40%-40%-20% Monitoring license compliance

13. License Agreement © 2009 by the Board of Trustees of the University of Illinois Regular technology license agreement  Upfront fee  Royalty payments  Milestone events  Milestone payments  Sublicensing rights Noncommercial, research-use only license agreement Equity and non-equity license agreements

14. How OTM fits into larger UI Commercialization Complex © 2009 by the Board of Trustees of the University of Illinois Office of Technology Management (OTM) Invention disclosure triage Intellectual property protection Marketing and Licensing IllinoisVentures, LLC Start-up company due diligence Company formation, consultation, guidance Developmental funding, pre-seed funding Seed funding, co-investments, follow-on investments Research Parks Company incubation Company expansion Linkages to campus facilities, research, people University-wide leadership and coordination provided by Vice President for Technology and Economic Development in cooperation with campus Vice Chancellors for Research.

15. My Contact Information © 2009 by the Board of Trustees of the University of Illinois Mark Krivchenia Technology Manager Office of Technology Management SEO 801 (East Campus) 446 COMW, MC-682 (West Campus) 1853 West Polk Ave. Chicago, IL 60612 (312)996-6626 (Office Phone) E-mail: krivchen@uic.edukrivchen@uic.edu