Technology TransferCommercial Opportunities in Research

J. Heidjer StaeckerPartner

What is Technology Transfer?

The process of transferring scientific findings from one organization to another for the purpose of further development and commercialization.

The process typically includes:• Identifying new technologies• Protecting technologies through patents and copyrights• Forming development and commercialization strategies such as

marketing and licensing to existing private sector companies or creating new startup companies based on the technology

Prior to law Government held title to ~30,000 patents Less than 5% were licensed and operating All inventions and patents were available on a

non-exclusive basis Government rarely relinquished title after a

lengthy, petition process The public, as taxpayers, did not benefit from

investment in research and its outcome

Bayh-Dole Act

P.L. 96-517, Patent and Trademark Act Amendments of 1980 Established that Universities, not the gov't, own the rights to

IP developed under federal research funding Universities required to have written agreements with

faculty/staff for disclosures and assignments University must disclose to funding agency w/in 2 months of

receiving disclosure Decision to retain title to ownership must be made w/in 2

years of disclosure Decision to patent must be made w/in 1 year of decision to

retain title Preference given to small companies for licenses Must share royalties with inventors Limited government march-in rights

Bayh-Dole Act

Promote utilization of federally-funded inventions Encourage small business engagement in

federally-funded R&D Promote collaborations between universities and

industry Promote commercialization in the U.S. of U.S.-

made federally-funded inventions Protect the government’s rights to federally-funded

inventions

Bayh-Dole Objectives

Publication prior to filing creates IP issues Cannot assign IP Cannot provide unjust enrichment to a sponsor Data is not IP unless agreed in contract Publication rights critical IP allows research to impact communities

Important Things to Remember

Technology Transfer Process Lifecycle

• Research

• Technology Disclosure

• Commercialization Evaluation

• Protection

• Marketing

• License/Sponsored Research Agreement

Disclosure Assignment Patent Prosecution Spin-out/license Negotiate Transaction Distribute royalties

TTO – basic functions for faculty

MTA CDA/NDA IIA Assignment Agreements Licenses

Common Agreements

Ownership of IP IP Protection Licensing Compliance Help with sponsored research Start up formation

TTO Activities

Applied Research as a Goal Funding Sources Impact on Communities Notoriety Build on Past Work Publications Freedom to Operate

Importance to Research

Technologies are evaluated from a commercial perspective

This differs from a legal or scientific evaluation• The scientific and creative side of inventions are

generally top-notch• Science alone does not create a market• Similarly just because a technology can be patented does

not mean there is a market need for the innovation For successful commercialization efforts, it is

important to match innovation value with market need

Commercialization Evaluation - Purpose

Commercial Application• Relationship of the invention to a product-commercial

application• What problem does it solve?

Technical Technology Summary Competitive Landscape and Commercial Benefits

-What are the top competing technologies?-How does this new invention compare to competing

technologies?• More efficient• Less expensive• Better, Stronger, Faster, Cheaper, Greener

Commercialization Evaluation – Content

Market Size and Trend• Define target industry/industry sectors• Describe size and current trend of the target industries

Technical Development Direction• Develop a recommended pathway to development• Suggest additional applications or features for optimization• Identify regulatory/commercialization hurdles and provide

advice for ways to overcome them Potential Partners Include

• Industry Partners• Investors/VCs• Community/Economic Development Groups

Commercialization Evaluation – Content Continued

Marketing

Packaging The Technology – The Summary

Exclusive right to disallow use by others Provides the holder exclusive right to disallow use 20 years from date of filing Public domain if public disclosure = not patentable 1 year grace in US PCT = foreign patents First to file in US as of March 2013 (AIA)

Packaging The Technology – The Summary

Potential partners will want to see additional, non-confidential information:• Publications• Abstracts• Presentations• Video• Data

When marketing, this information is needed to fill

in the gaps in the marketing summary Also keep in mind additional applications

Packaging The Technology – Additional information

Passive – Putting out a technology/discovery/ offer and wait for people to find it• i.e., Websites & publication

Semi-Passive (or semi-active) – Putting out a technology/discovery/offer to a specific group of people• i.e., Social Media, conference presentations, etc.

Active – Active engagement of targeted, potential partners• Phone calls, introductions, etc.

Types of Marketing: Passive, Semi-Passive, Active

Research contacts Peer publications Knowledge of the field Social media (i.e., Linked In) Proprietary Databases (i.e., OneSource, Salesforce, Hoovers etc.) Office of Patents & Licensing Internet Research

Resources: How does one find companies & contacts?

Personal interaction is most important way to establish first contact

Phone call is easiest way to do it Meeting at a conference Contact through a relation E-mail and mail is too easily ignored, lost, or

forgotten

Pick up the Phone … and dial

Non-confidential information first After NDA, confidential information and discussions Inventor availability and involvement very

important Remember research requirements Be realistic about development

Someone wants to talk

How much money does you need to accomplish your (and the company’s) research goal?

Defined actions Have you taken into account the university’s

overhead? Do not fudge the costs!

Let’s talk about Cash

Does not mean that it is bad science• Market timing may be wrong• Market may be too small• Path to market may be difficult

Focus on research opportunities around technology

Think about alternative applications

No one is interested

Interaction with industry (and others) is based around a series of legal constructs (concepts), whose goal is to protect the owners (inventors, university, and industry)• IP – intellectual property – patents, copyrights, trademarks, trade

secrets, know how• NDA/CDA – Non-disclosure agreement – keeps secrets• MTA – Material Transfer Agreement – Keeps track of materials

coming in and out of labs• Sponsored Research Agreement – Contract that outlines a specific

line of research that is paid for by one of the parties• Option – Keeps a piece of intellectual property off the open market

for a period of time• License – A contractual transfer of rights between parties

Some or all of these may come into play

IP, NDAs, MTAs, and other Nonsense

Questions?