technology transfer best practices - georgia tech

TECHNOLOGY TRANSFER BEST PRACTICES-

GEORGIA TECH

Patrick E. ReedDirector, Office of Technology ManagementLSU Health Sciences Center – New Orleans

• Ranked 8th in ‘09 on The University Patent Scorecard™ 

• Ranked 3rd in “Pure” software patents and 8th in software patents overall in the Duke Law School Science, Technology, and Innovation Research Paper Series

• Ranked 11th overall for tech transfer and commercialization in the Milken Institute report Mind to Market, 9/20/06

• Inc. Magazine named Georgia Tech among its list of the five U.S. universities known for turning campus-based innovations into start-ups

MENTIONS

FY2011

•16 FTEs (5 in licensing positions)

•$714M in Research Expenditures

($45M from industry)

•384Technology Disclosures

•246 Patents Filed

•79 Patents Issued

•78 Licenses/Options Executed

•5 Startups, over 100 since 2000

•$3.8M Licensing Revenue

THE NUMBERS

• Flexibility

• Accountability

• Transparency

• Efficiency

• Cater to Industry

BEST PRACTICES

• Georgia Tech Research

Corporation

– Separate 501(c)(3)

• Performs financial, contracting,

and some personnel functions for

Tech

• Patent holder for Tech inventions

• Faster/more flexible negotiations

FLEXIBLE

• Georgia Tech is bound by state

law, but GTRC is not a state

institution

HOWEVER…

• GTRC must stand ready to

assign all of its obligations to

Tech if it was dissolved

–Can argue both ways in

negotiations

–Assessment of risk

FLEXIBLE

• Choice of IP counsel

– ~$450 for partners and

~$300 for associates

– A wide range of technical

expertise and experience

– Prompt service with the

possibility of 11th hour filings

– Able to accommodate

inventor requests for specific

counsel

• Could not delay GTRC actions

FLEXIBLE

• Licensing Associates responsible for

a portfolio of cases from cradle-to-

grave:

– Evaluate and determine patent

filing strategy

• Work with outside legal

counsel

– Market

– Negotiate licenses

– Execute licenses

– Post-licensing compliance

ACCOUNTABLE

• Signature authority

• No outside review of agreements

– No formal internal review

• Education is important

– University Policy and Procedure,

Export control, IRS regulations,

basic IP law, federal research

guidelines, negotiating skills, etc.

• Associates given special topic areas

in which to become the Office

Experts

ACCOUNTABLE

• Avoid the Invention Disclosure

Black Hole…..

– Keep inventors up-to-date

– Explain the logic behind the

decisions you make and

take pains to have them

agree

– If the decision is made NOT

to pursue an invention,

make it as quickly as

possible

TRANSPARENT

Commercialization Roadmap

•Scorecard used to review an invention

– Allows for a more objective

review

– Used as a conversation starter

•Serves as the document to lay bare the

decision making process

•Ultimately allows for better filing

decisions

– This then leads to increased

patent expenditures

reimbursement

TRANSPARENT

• GT:IPS™- Georgia Tech Integrated

Program for Startups

– Core class requirements plus

electives

– Successful on-time graduation

of the program granted access

to a no-negotiation license

agreement

• The recently approved ELFS-

Exclusive License for Startups-

contains many of the GT:IPS™

license provisions

TRANSPARENT

• Timely triage of inventions

precludes unwise use of resources

• Make no blind filings

• No foreign filings on technologies

that are not yet encumbered or

without a very high probability of

being so

• Extensive use of Knowledge

Sharing Systems TechTracs (KSS)-

IP and Agreements database

– Used on LSU’s campuses

EFFICIENT

• If our goal is to create relationships with companies…BE INDUSTRY FRIENDLY!

• Office of Industry Engagement:– Office of Technology Licensing

(now called Innovation Commercialization and Translational Research)

– Office of Industry Contracts (now called Industry Collaborations and Affiliated Licenses)

– International Contracts and Technology Transfer (new group)

• A one-stop-shop serving as the “front door” for industry

CATER TO INDUSTRY

• Complete redesign of website

– Licensing

– Sponsored Research Opportunities

– Access to Equipment and Facilities

– Corporate Giving

– Recruit Students

– Executive Education

• Made sure not to lose sight of our main

constituents- the faculty and students

http://industry.gatech.edu

CATER TO INDUSTRY

Make it easy for industry to find what they need!

• Each of the three offices have

permanent staff, but are cross-

trained

– Consistency of message

– Plug-and-Play

– TRUE cradle-to-grave

• No downtime on an agreement or

other issue if someone is out of the

office

– KSS heavily relied upon in order

to maintain this seamlessness

CATER TO INDUSTRY

• Primary focus was maximizing

industry sponsored research dollars

– The majority of license

agreements only bring in

~$10,000 over the life of the

agreement

• TTOs talk to companies all the time

– LEVERAGE THIS FOR OTHER

OPPORTUNITIES

• Licensing is not neglected, it simply

isn’t relied upon as a money maker

CATER TO INDUSTRY

FY2011

•16 FTEs (5 in licensing positions)

•$714M in Research Expenditures

($45M from industry)

•384Technology Disclosures

•246 Patents Filed

•79 Patents Issued

•78 Licenses/Options Executed

•5 Startups, over 100 since 2000

•$3.8M Licensing Revenue ($1.3M was

a one-time bump from cashed in

equity)

THE NUMBERS

• Updated Technology Disclosure Form– Transparent/Efficient

• Website Redesign– Cater to Industry/Transparent

• Created an Inventor’s Guide– Transparent

• Developing a strong marketing presence– Cater to industry

• Invention inventory review and triage– Efficient

• Entered all information into KSS– Efficient

• Hired an LSUHSC PhD as Licensing Assistant– Accountable

• FACULTY OUTREACH!

IMPLEMENTING BEST PRACTICES AT LSUHSC-NEW ORLEANS

• More than doubled disclosures over

the three previous years

(individually)

• Solid leads from marketing efforts

• Decreased office’s expenses through

triage and drafting provisionals in-

house

• Identified a manageable subset of

technologies that are truly “active”

• Re-engaged faculty in the process

• Making good use of KSS and other

available resources

RESULT?

QUESTIONS?Patrick E. Reed, DirectorOffice of Technology ManagementLSU Health Sciences Center – New Orleans

504-568-3619preed3@lsuhsc.eduwww.lsuhsc.edu/administration/otm/@LSUHealthOTM