terese rakow, phd. postdoctoral career development course march 10, 2008

03/10/2008

Terese Rakow, PhD. Postdoctoral Career Development Course

March 10, 2008

Highpoints

What is commercialization What we do Structure varies with school Interaction with Technology Transfer

Office (TTO)

OR

HOW TO WORK WITH YOUR TTO

Inventions to New Products

Scientistdiscovers

new technology & submits disclosure

TTO developscommercialization

and patenting strategy

TTO licenses

technology to company

Company does research/

makes new

products

Company pays license fees and royalties

Federal & industry funding

Notes on Commercialization

Transfer of research discoveries to the marketplace to benefit patients and the public

Faculty are the source of technology. When something is developed in your lab that may have commercial potential contact your TTO.

If you are unsure contact your TTO

Notes on Commercialization

Possible outcomes: License to large pharma or device co. License to small biotech or device co. License to start-up company / venture

group

Not all technologies get licensed

What can be Commercialized

Technology that solves a problem or improves a process:

Cell lines Clones Vectors Research tools Transgenic or knockout animal models Diagnostic probes Therapeutics Devices Software Educational materials

When To Contact TTO

Contact the TTO BEFORE public use, publication or presentation

to help protect against the loss of certain patent rights.

Not all discoveries will be patented.

What We Do

Evaluate technologies for commercial viability

Market technologies to industry Arrange for patent prosecution if needed Negotiate license terms Draft license agreements Coordinate legal review and approval of

license agreements

What We Do (continued)

Receive license income and coordinate distribution

Monitor licensee performance Report technologies to appropriate sources Educate about the licensing process

Some Things Vary

Some schools: Triage Divide work by; technology area,

departments, process stage, agreement type

Patent everything or nothing (or so it seems)

TTO is a foundation or a for-profit VC group or VC fund for start up

Some Things Don’t

The Institution owns data, results, inventions, etc.

This includes notebooks

The goal is a license NOT a patent.

Licenses take time, patents take longer

Relationships

We depend on faculty to communicate new ideas and discoveries

We would rather hear too much, too often; than, too little, too late

Relationships

Caution – do not put too much in writing, ask to meet with your TTO

If a company or attorney contacts you about your research contact your TTO

Don’t commit (license / SRA)

Relationships

The TTO will need to see data. If you have information on market,

science, etc. provide it If you have questions, ask

Relationships

If commercialization is of interest ask to meet with TTO when interviewing for jobs

Learn more about the process

Be Realistic

We do not get points for turning away perfectly good, commercially viable technology

Many things are patentable, but not commercially viable

Be Realistic

It is highly unlikely you will get rich

~1.4% of all licenses generate over $1M in revenue/year

Be Realistic

1 in 10 funded start ups might result in a home run (100’s do not get funded)

3 in 10 might survive

You need to let it go for it to survive

What is in it for Developers

Contribution to healthcare and research Expand collaborations Net income is distributed:

developers department school operations etc.

Other Agreements

Other agreements might be handled by TTO

Confidential Disclosure Agreements

Sponsored Research Agreements

Clinical Trial Agreements

Material Transfer Agreements to academics

Contact Information

Terese Rakow, Ph.D.Sr. Licensing AssociateBaylor Licensing Group

Baylor College of Medicine713 798-6821 phone

713 798-1252 faxwww.bcm.edu/blg/

Physical location: BCMD-600D - Jewish Wing

trakow@bcm.edu

Questions?