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Industry and Academia Partnerships: An Inside Look into Technology Transfer
Introduction to Tech Transfer
May 8, 2014
Moderator:
Carissa Childs
Intellectual Property Attorney
UR Ventures
University of Rochester
Presenter:
Bill Bond
Director, IP and Tech Transfer
RIT
Presenter:
David Borkholder, PhD
Bausch and Lomb Associate
Professor of Microsystems
Engineering
RIT
Presenter:
Patrick Emmerling, PhD,
MBA
Licensing Manager
UR Ventures
University of Rochester
Presenter:
Alex Zapesochny, Esq.
President, COO
iCardiac
RIT
Industry and Academia
Partnerships:
An Inside Look into RIT
Bill Bond - Director, IP and Tech Transfer, RIT
David Borkholder - Bausch and Lomb Associate Professor of Microsystems Engineering, RIT
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RIT
Overview of University Tech
Transfer
University research leads to the creation and capture of IP
– Patents; Copyrights, Know-how
We can’t make and sell commercial products (non-profit)
Tech Transfer:
– Provides rights via license or other means to others to commercialize
• NewCo / Start-ups
• Established Companies8
RIT
Tech. Commercialization / Transfer Why should anyone care?
– Possible Qualitative and Quantitative Economic Advantages
• IP enables premium pricing via product differentiation
• Relieves the owner of the cost to create or invent around
• Reduces R&D expenses
• Improves time to market; provides first mover advantage
• Provides freedom to operate to licensee
• Advanced processes
– Lower cost materials or less material
– Eliminate environmental and/or safety hazards
– Improves quality/reduces defects
– Provides economies of scale
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RIT
RIT at a Glance
RIT Founded: 1829
Students: 15,000 undergrad; 2,900 graduate
1300 Acre Campus
Nine (9) Colleges (Latest is College of Health Sciences opened in Sept. 2011)
Six (6) PhD Programs
Full Time Faculty: 1,032
Number of active funded research awards: 400
Number of grant proposals annually: 700
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RITLicensing – IP Marketing for Tech
Transfer ID Prospects
– Faculty Connections – Papers; Conferences
– Review patent references for assignee names-target the companies.
– Open Innovation Organizations are looking for IP
– Advertise - Flintbox; University web page,
Start-ups vs Established Companies
– Faculty / PI / Inventor Motivation for start-up formation
• Can we help the faculty / PI with start-up guidance
• Evaluate if the IP support a “start-up” initiative
– Can we ID a qualified entrepreneur for a start-up?
– Established Company likely has lower risk for returns
Alternatives include IP sale, brokering, hiring an IP marketing organization or auctioning the IP
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RIT
General Tech Transfer Items
Evolutionary vs Revolutionary Tech/IP
– Number of applications, market segments, markets drives field(s) of use and IP value (not deal value)
• What the Licensor can “give”
Economic payment and rates by Licensor driven by:
– Exclusive or not, fields of use, payments for IP protection, maturity level of technology
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RIT
Intellectual Property (IP) Protection
Patents
– United States
• Provisional
• Full application, a.k.a. Non-provisional and Regular
– International
• PCT or direct nationalization (each nation)
Copyrights
Mask Works
Trademarks
– Service Marks
– Trade Name
Trade Secrets
Know how
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RIT
Possible Rights Granted to Licensee
To make, have made and import
To use
To sell
To distribute
To sub-license
To disclose to others– by publication
– in a marketed product
– in a service manual
To lease
Could be subject to exclusivity and fields of use
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RIT
Tech Transfer Success Story
Licensor = RIT and Owner of IP*
Licensee = Blackbox Biometrics, Inc (B3)(http://blastgauge.com) **
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Blast Gauge™ System sales for domestic and international DoD and Law Enforcement for monitoring blast exposure for triage and to guide treatment of Traumatic Brain Injury (TBI)
Development began – April 2010
License Written- 8/26/2011
Products Sold – Oct 2012
* US Govt. Has rights ** RIT Faculty Start-Up
RIT
Key Terms B3 Deal Licensor-
– Granted exclusive rights to two pending US patents and non-exclusive rights to one pending US patent and some foreign counterparts and included:
• SW, drawings, bills of materials and “tools” used to make earlier prototypes
• Paying patenting expenses
• Opportunity to take space in RIT incubator
– Retained rights for educational and research purposes
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RIT
Key Terms B3 Deal
Licensee – Provide commercialization plan to licensor to display competence in commercialization of the technology / IP prior to signing the DA
– Provides timely reports regarding
• Running Royalties
• Payments to Licensee
• Updated commercialization plan
May contract for additional research by RIT
Process –
– Term Sheet (TS)
– Definitive Agreement (DA)
Time to deal – TS to DA = 4-5 months
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RIT
Lessons Learned - B3 Deal
Plan for unforeseen delays in reaching agreement
Balance the deal structure for mutual benefit
Recognize intangible/broader benefits of success for community and economic growth
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RIT
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RIT Contacts Bill Bond, MBA; CLP; RTTP
Director, Intellectual Property Management Office, RIT
145 Lomb Memorial Drive (87 (USC) -2469)
Rochester, NY 14623
475-2986
David Borkholder, PhDBausch and Lomb Associate Professor of Microsystems Engineering, RIT
168 Lomb Memorial DriveRochester, NY [email protected]
Industry and Academia
Partnerships: An Inside Look
into U of R
Patrick Emmerling, PhD, MBA
Licensing Manager, UR Ventures
University of Rochester
Alex Zapesochny, Esq.
President, COO
iCardiac
Our Mission
Develop UR Innovations into
valuable products and services
to make the world ever better.
Fundamental ChallengeUniversity Research
Commercial Products/Services
Commercial Interest
• Ground breaking research• Driven by research,
grants, publications• Limited business input
and often no business partner
• Development of solutions valued by the market
• Customer and market driven• Sustainable growth• Seek risk mitigation and
barriers to entry via IP, regulatory, cost advantages
• Risks and interest depend on:
• Proof of concept
• Regulatory hurdles
• Technology and market opportunity
• Corporations vs. Start-ups and Investor
types
• Researcher engagement and team
development
• Limited proof-of-concept investment
Many Technologies get stuck here
Solution and Focus
University Research
Commercial Products/Services
Commercial Interest
• Prove the concept, e.g.
• Prototyping, customer feedback, market
• Earlier clinical-regulatory input
• Researcher engagement and team
development
Requires a Concerted Effort
Just as it takes a village to raise a child, it takes a team working
together efficiently to bring a new and exciting innovation to
market:
• UR Ventures Team
• Licensing and IP Professionals
• Inventors
• Industry Experts
• Licensee
The Commercialization Pathway
UR Ventures Fresh Perspective on Innovation
Commercialization
• Focused, lean, and team oriented approach to the commercialization of UR Innovations.
• Taking Innovations from the Bench-top to the Bedside to make the world ever better.
iCardiac Overview
• Founded in 2006 leveraging world-class cardiovascular research:
– Technologies from the University of Rochester Medical Center and Pfizer
– Raised $7 million capital from Pfizer and venture capital firms
– Management team experienced in clinical trials technologies and strongly aligned
• Better assessment of potential cardiac safety side effects of all new drugs:
– FDA, EU, and others require cardiac safety assessment for all drugs under development
– Historical tools were expensive, cumbersome, and left significant uncertainty
– Most extensively validated cardiac safety technology with FDA, industry, and scientific community
• Strong foundation and key market success: 2006-present
– Established as scientific leader in the most complex cardiac safety studies (TQTs)
– Delivered successful projects for largest pharmaceutical companies and channel partners
– Highly valued for unusually exceptional customer service without sacrificing EBITDA
Initial Relationship
Worldwide leader in the science of heart arrhythmias
30+ years of cardiology/ECG research
World’s largest International Registry for congenital LQTS
Holter based techniques for studying drugs that change heart rate (QTbtb)
15+ years, 150 INDs and 4 marketed products supported with QTbtb
High Precision QT (HPQT)
T-wave Morphology Analysis
QT beat-to-beat (QTbtb) Analysis
Restitution Analysis
Key Lessons
• The relationship with the scientists is key
• We spent months with Drs. Couderc and
Zareba before the deal
• Can you work together, even through the
difficult times?
Key Lessons
• UR tech transfer is flexible and fair
• Make sure milestones are realistic and
achievable within timeframes
• Try to minimize early payments
Key Lessons
• Commercialization is a long process
• You will near certainly need a Plan B (and a
Plan C, D, etc.)
• Your sellable technology may bear little
resemblance to what you initially licensed
Key Lessons
• The university relationship will evolve
• It starts off providing credibility and a way to
stand out
• It can become an engine for further research
and even help to validate your product ideas
Questions to Consider (Team)
• What is the motivation of the scientists?
• Will they be there for the long run, even if their initial research doesn’t win out?
• Will you enjoy their company, and will they enjoy yours, over the long run?
Questions to Consider (Tech)
• Do you have validation beyond academia about the need for the solution?
• What will it take to get the technology customer-ready? (usually a lot)
• Does the technology (and your license) provide you with the flexibility to pivot?
Questions to Consider (About You)
• Will you feel comfortable being an innovator and a thought partner to the scientists?
• Most academic commercialization is a very long haul. Is that for you?
• Can you always remember that it’s rarely about the science or the technology?
Contact InformationPatrick Emmerling, PhD, MBA
Licensing Manager
UR Ventures
University of Rochester
(585) 273-3250
Alex Zapesochny, Esq.
President, COO
iCardiac Technologies, Inc.
(585) 295-7610 X102
Questions?
Next Webinars in Series
• May 20 – Tech Transfer Innovation
• June 5 – Non-Traditional Funding of Tech Transfer
Register online: http://www.medtech.org/events
Thank you for your
time!