IP Bundling: Create Higher Value and More Licensing Opportunities

Presented by: Andrew R.O. Watson, Ph.D. Licensing Associate Technology & Research Collaborations

Date: February 20, 2008

The West Coast Licensing Partnership(WCLP)

• A group of institutions willing to group a subset of their technologies for marketing and licensing purposes

• Initiated by Caroline Bruce, former Associate Director at The University of British Columbia's University-Industry Liaison Office

• The WCLP was formed at a satellite meeting of Bio-Partnering North America in Vancouver B.C. in 2006

The Institutions of the WCLP

Interactions between the Institutions of the WCLP

Face-to-Face meetings– Bio-Partnering North America meetings in Vancouver B.C.– AUTM Annual meetings– AUTM Western Regional meetings– BIO International Convention – Others, including discussions during downtime of AUTM Board

meetings

Agreements between the Institutions

• First, the Memorandum of Understanding– Defined the group’s main objectives

• Obtain and pool selected technologies developed at the institutions

• Catalog these technologies to identify bundles of complimentary technologies

• Manage the commercialization of such bundled technologies in a way that both maximizes the commercial value of the complimentary technologies and reduces the transaction costs associated with multiple commercial license agreements

– Covered implementation of the collaboration, negotiation of inter-institutional agreements, intellectual property rights, administration and confidentiality

Agreements between the Institutions

• Second, the template Inter-Institutional Agreement– Used an outside law firm to draft the IIA– Each institution was asked to provide comments– Template IIA for use with bundles from all technology categories– Select discussion points:

• Patented vs. Non-patented technology in same bundle

• Administration Fees

• Revenue sharing

• Warranties and representations

Challenges with the Agreements

• Consideration for all possible bundles which could be identified in the future

• Feedback from all institutions in a timely manner• Addressing different state or government laws for the

institutions (Governing Law etc.)• Termination (termination by one institution)

Technology Bundle Categories of the WCLP

• Animal Models• Biomarkers• Medical Devices• Imaging Technology

Identifying Technologies from the Institutions

• Collection of available technologies in the four technology categories from all institutions

• Collected the following initial information for each technology:– Institution’s Identification Number– Title and Brief Description– Patent Status– Names of Inventors– Publication References

Identifying Technology Bundles

Initial focus has been on Animal Model Bundles• Obtained further information from each institution on their

animal models– Animal Category subgroups

• Neurology, Oncology, Development, Immunology, Virology, Cardiovascular, Reproductive, Endocrinology, Metabolic, Dermatology, Inflammation

– Commercial Uses– Any Third-Party IP (HHMI, Cre-lox, Oncomouse, etc.)– Value (will be discussed later)

Identifying Technology Bundles

• Interns and members of the different institutions put their scientific skills to work– Identified technologies which were complementary to one another– If bundles were extremely large, then sub-bundles were identified

• Example: Neurodegenerative Bundle – Alzheimer’s, Parkinson’s, etc.

• Identification of a “Managing Institution” for each bundle• The Managing Institution proceeds with the IIA and other

management duties (each bundle has its own IIA)

Valuation of a Bundle

Each institution assigned a value to their contributed technology– For Animal Models

• Category A: $5,000 - $10,000• Category B: $10,000 - $20,000• Category C: $20,000 - $50,000• Category D: $50,000 - $100,000

All individual values added together = Total Bundle Value

Revenue shared proportionate to value assigned by each institution to their technology(ies)

Finding Licensees/Marketing

• Utilization of Flintbox®

• For Animal Model Bundles – The Jackson Laboratory• Word of mouth

– Conferences, partnering events, etc.

• Websites of all participating institutions• The WCLP website www.westcoastlicensing.com • Targeted Marketing – using interns

Advantages for Bundling Institutions and Licensees

• For Bundling Institutions:– Added value from the bundle of related technologies over individual

tools and technologies

– Strengthened inter-institutional relationships between member partners

– Increased global access to research tools by promotion of non-exclusive licensing

• For Licensees: – Simple one-stop licensing of technologies from multiple institutions

– Save time and money from negotiating multiple license agreements

– A bundle of complementary technologies

The First Animal Model Bundles

• Hyperactivity & Attention Deficit Disorder Bundle– Mice from OHSU and Salk

• Stress and Anxiety Disorder Bundle– Mice from Salk, University of Washington and OHSU

• Drug and Alcohol Addiction Bundle– Mice from University of Washington and OHSU

• Ion Channel-Associated Disease Bundle– Mice from Scripps and OHSU

• Neuroendocrinology Disease Bundle– Mice from Salk, Scripps, University of Washington and OHSU

Upcoming Animal Model Bundles

• Cancer Disease Bundles– Breast Cancer Bundle– Gastric/Colorectal Cancer Bundle– General Cancer Bundle– Tumor Suppression Bundle

• Cardiovascular Disease Bundles– Blood Disease Bundle– Vascular Development and

Disease Bundle– Atherosclerosis Bundle

• Immunology Disease Bundle– Inflammation Bundle– Autoimmune Disease Bundle– Virology Bundle– Dermatology Bundle

• Neurodegenerative Disease Bundles– Alzheimer’s Disease Bundle– Parkinson’s Disease Bundle– Huntington’s Disease Bundle– Multiple Sclerosis Disease Bundle

Future Directions for the WCLP

• Continued work on Animal Model bundles• Construction of bundles for the other technology categories

– Biomarkers, Imaging Technology and Medical Devices• Involvement of interns

– Portion of revenue reserved to fund future interns?• Click-through license agreements

– Standardized license agreements for more rapid access to the bundled technologies

Challenges of the Overall Bundling Process

• Turnover of employees• Maintaining current database of technologies • Time……Time……Time• Bundles are not just lists of technologies• Will not happen overnight……serious effort is required

by each party involved

The Road to Bundling Success

• Absolutely requires one “Champion” from each partner• Even with a Managing Institution for each bundle,

participation from each partner is necessary• Dedicated people to do technology collection and

technology research – Interns • Start small…..do not try to bundle everything at once• Involve your researchers early in the process

– Explain the bundling process and the advantages– Resolve any issues well ahead of time

www.westcoastlicensing.com

Andrew R.O. Watson, Ph.D.

Licensing Associate

Technology & Research Collaborations

Oregon Health & Science University

Phone: (503) 494-8309

Email: watsonan@ohsu.edu