Boost Disclosures by UtilizingProven Technology Scouting

MethodsMarch 28, 2011

Todd Sherer, Ph.D., CLP™Associate Vice President and Director

Kevin Lei, MBA, MS, CLP™Associate Director and Director, VentureLab Program

Office of Technology Transfer Emory University

The Changing Landscape

• Tech Transfer in a “National fish bowl”– White House Strategy for American Innovation

• OFFICE OF SCIENCE AND TECHNOLOGY POLICY NATIONAL ECONOMIC COUNCIL Commercialization of University Research Request for Information, March 25, 2010

• DEPARTMENT OF COMMERCE Office of the Secretary Request for Comments on the Strategy for American Innovation, February 4, 2011

– Commerce Secretary Gary Locke’s National Advisory Council on Innovation and Entrepreneurship (NACIE)

– Kauffman Foundation Experts' Solution for University Technology Licensing Reform Named to List of 'Ten Breakthrough Ideas for 2010' by Harvard Business Review

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The “Why” for Universities

• Our potential licensees expect us to do so.• It is the first step along the innovation value

chain. • It takes about 3,000 disclosures to have a

home run; “Every strike brings me closer to the next home run (Babe Ruth).”

• Growing recognition of value added steps in the disclosure process

• More & quality disclosures? Ad hoc is not enough!

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The Emory Specific "Why”

• FY02-04: Disclosures flat for 3 years • Increased demand and short supply of

Emory technologies • Emory Senior Administrators’ expectation

– “TT Office must be seen on campus.”• Some researchers just don’t disclose if

not proactively approached. • A pre-licensing team created under the

“Todd Sherer” tech transfer model • It is one of the 9 metrics for our incentive

plan!

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Research & Discovery on the Rise Together? Not

Always W/O Scouting:Awards +11%/yearInventions -0.1%/year

W/ Scouting:Awards +7% /yearInventions +15% /year

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The Emory Model--Rationale

• Changing altitudes – Each licensing professional has a special job

to do (Henry Ford’s idea of the assembly line) versus cradle to grave.

– It is Emory’s IP asset. Identifying the asset is not just inventors’ responsibilities.

–Making our job harder but inventors’ job easier

– Proactive, not just reactive (greatly improves faculty relations)

– Add value, not just process paperwork

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The Emory Model—Org. Form

• Organizational form – Pre-licensing team responsible (1/3 of 2FTEs) – One person as technology scout– Desired characteristics of a scout

• Knowledgeable in science, business, and legal issues

• A lateral thinker, cross-disciplinary, and imaginative • Familiar with all aspects of the technology transfer

office• Service oriented – Strong follow-up skills a must• If it’s done correctly, new collaborations will be

formed, additional disclosures will be identified, and faculty relationships will be strengthened.

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Proven Tools

• Proactive, proactive, & proactive • Scout--better to be a senior person• One-on-one meeting better than anything else• Minimize our own mistakes• Always try to make the disclosure process

simpler – Different forms for different kind of inventions

(standard form; research tools; animal model)– Hard copy versus electronic one – 2011 goal: online submission

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Target Researchers

• Top 200 well-funded faculty-quarterly updated

• Translational research grant recipients– The Wallace H. Coulter Foundation Grant– Georgia Research Alliance VentureLab

Grant – Emtech Bio Seed Grant – ACTSI Grant– SBIR/STTR awardees

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Target Researchers

• HTS drug discovery projects • Physicians conducting clinical trials • New faculty (see handout)– welcome packet followed by a meeting

• Leaving faculty– IP exit interview

• Alumni willing to accept Emory IP policy

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Value Added Help from Scout

• Match making (collaborators; entrepreneurs; industry partners)

• Prototype development • Proof-of-principle funding • Translational project management • Startup assistance• Business incubation

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Benefits of Technology Scouting

• Identify inventions we would not have seen otherwise

• Proactive filtering • Create value during the process • More & quality disclosures • Premium faculty service/education• Better IP awareness—seeds

germinating

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Benefits of Technology Scouting

• Tech transfer program promotion • Better disclosure process–More consistent procedures– Fewer incomplete forms– Quicker to case managers’ hands

• Very positive feedback from– Faculty– Chairs and Deans– Even Senior Management!

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How to Measure Success?

• √ Create a regular tech scout report (see handout)• √ Number of disclosures received.

Increased incentive payout• √ Industry/investor expectation/perception• √ Faculty/management satisfaction• ? Quality of disclosures– % of revenue generating inventions/total

disclosures– High net worth licenses/total disclosures– Home runs

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Questions?

Todd Sherer, Ph.D., CLP™ttshere@emory.edu

404-7275550

Kevin Lei, MBA, MS, CLP™klei@emory.edu404-727-7241

Office of Technology Transfer Emory University

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