james baxendale executive director igert april 15, 2010 ku center for technology commercialization...
TRANSCRIPT
James BaxendaleExecutive Director
IGERT
April 15, 2010
KU Center for KU Center for Technology CommercializationTechnology Commercialization““Promoting Innovation to Benefit Society”Promoting Innovation to Benefit Society”
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What Is Technology What Is Technology Commercialization?Commercialization?
the transferal of university research discoveries
and innovations to the commercial sector
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Bayh-Dole Act, 1980Bayh-Dole Act, 1980The Incentive for Technology CommercializationThe Incentive for Technology Commercialization
• University may retain title - Universities may elect to retain title to innovations developed under federally funded research programs
• Commercial collaboration encouraged - Universities are encouraged to collaborate with commercial concerns to promote the utilization of inventions arising from federal funding.
• Patent expectations - Universities are expected to file patents on inventions they elect to own.
• Small business preference - Universities are expected to give licensing preference to small businesses.
• Government rights - The government retains a nonexclusive license to practice the patent throughout the world and the government retains march-in rights.
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What is the KUCTC?What is the KUCTC?
• The new technology commercialization entity for all KU campuses
• A separate 501(c)(3) non-profit organization• Jointly controlled by the KU Center for Research and
the KU Medical Center Research Institute• Has its own Board with the Provost as the Chair• Thirteen members on the Board consisting of
University administration, KUMC and Lawrence faculty, and Lawrence and Kansas City community leaders
• Offices on the Lawrence and KUMC campuses• Executive Director and Licensing Associates travel to
both campuses• Has its own corporate counsel
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Functions of Technology CommercializationFunctions of Technology Commercialization
• Ensure public benefit from KU research through commercialization of inventions created at KU
• Negotiate various contracts/agreements
• Promote collaborative research
• Facilitate the protection of intellectual property
• Educate faculty and students in intellectual property
• Assist with retaining and recruiting faculty
• Generate revenue to support research and graduate education
• Participate in regional and state economic development
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National Activity, FY National Activity, FY 20062006
• $45 billion industry sponsored academic R&D
• 18,874 new inventions disclosed
• 11,622 new U.S. patent applications filed
• 3,255 new U.S. patents issued
• 4,963 new licenses signed
• 64.1% new licenses with start-ups and small companies
• 553 new start-ups launched
• 697 new products introduced to market from active licenses
Source: Association of University Technology Managers 2006 Survey Report
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More Funding
More Researc
h
More Invention
s
More License
s
More Dollars
Source: Martha Luehrman, Massachusetts Institute of Technology, Source: Martha Luehrman, Massachusetts Institute of Technology, September, 1998September, 1998
…is the volume of research funding,
since the greater the funding, the greater number of
researchers and research projects, the greater the number of
disclosures, the greater number of patents, and the greater
number of licenses…
…and eventually the greater the number of dollars.”
“The strongest predictor of success…
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Tech Transfer WebsiteTech Transfer Website
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KUCTC Informational GuidesKUCTC Informational Guides
Doing Business with KU
Creating a Company
Start-up Company Checklist
Guide for the Inventor
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Kansas Board of RegentsKansas Board of RegentsIntellectual Property PoliciesIntellectual Property Policies
Board of Regents set policy November, 1998
Minimum 25% of revenue to inventors, after direct costs recouped
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Kansas University Kansas University Intellectual Property PolicyIntellectual Property Policy
Royalty Royalty After Deducting After Deducting
Direct CostsDirect Costs
1/31/3rdrd to Inventor(s) to Inventor(s)1/31/3rdrd to Inventor(s) to Inventor(s)
DepartmentDepartment1/31/3rdrd to KU Provost to KU Provost
1/31/3rdrd to to Inventor(s) Inventor(s)
Research AccountResearch Account
2/32/3rdrd to to Department FundsDepartment Funds
12New Industries, New MarketsNew Industries, New Markets
Funding:Funding:Federal, Industrial, Federal, Industrial,
FoundationFoundationKU Basic ResearchKU Basic Research PublicationsPublications
DissertationsDissertations
KU Center forKU Center forTechnology CommercializationTechnology Commercialization
Potential New Products
& Services Product Development
Research
Proof of Concept
MarketableTechnology
License Technology to…
Royalties, Equity
Reinvest in Research
Start-up CompaniesStart-up CompaniesExisting CompaniesExisting Companies
Jobs, Products, ProfitsJobs, Products, Profits
University
Technology Commercialization CycleTechnology Commercialization Cycle
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Technology Commercialization ActivitiesTechnology Commercialization Activities
Facilitate Proof of Concept Collaborations with Industry
Perform Economic Development Outreach
Assist with Faculty Retention and Recruitment
Market Technologies to Out-license
Coordinate Intellectual Property Protection
Prepare/Negotiate License Agreements
Prepare/Negotiate Option Agreements
Education of Faculty/Staff/Students
Review of Faculty Conflict of Interest Management Plans
Interpret and Assist in the Development of IP Policy
Consult on IP Clauses in Research Agreements
Facilitate Invention Disclosure Meetings and Assess Technology
for Commercial Potential
Review Start-up Company Business Plans Promote
Entrepreneurship Across Campus
Prepare/Negotiate Material Transfer Agreements
Prepare/NegotiateInter-Institutional Agreements
Prepare Internal Royalty Distribution MOU
Prepare/Negotiate Company Formation Documents and Securities Agreements
Diligence Review of Licensees
Public Education and Relations
Prepare/Negotiate
Term Sheets
Prepare/Negotiate Confidentiality Agreements
09/08
Assist with Development of Consortia Agreements
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Technology Commercialization ProcessTechnology Commercialization Process
• Disclosure of invention
• Initial evaluation and market research
• Patentability Search
• Commercialization strategy
• File patent/copyright/trademark
• Potential enhancement of technology
• Material Transfer/Research Agreements
• Out licensing or Company spin-off
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KU Campuses Current StatisticsKU Campuses Current Statistics
• 640+ faculty/staff/students participated in invention disclosures during past 10 years
• Cumulative revenue of over $16M in the last 10 years
• 20 active equity positions• 21 active start-up companies• 91 licenses signed during past 10 years, 31 with
Kansas-based companies• 70-80 annual invention disclosures on average
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Breadth of Invention DisclosuresBreadth of Invention Disclosures• Nursing – Videotapes for addressing congestive heart failure• Chemistry – Compounds as anti-cancer drugs, glucose sensor• Business – Software to tag financial data for customized reports• Journalism – Software and web design for presenting the news• Education – Distance education modules, software tools for teachers• Biodiversity Resource Center – Predictive software for invasive species• Civil Engineering – Biodiesel Production• Life Span Institute – Medical devices for premature infants• Mechanical Engineering – Synthetic functional spine• Aerospace Engineering – Fiber design software, UAV• ITTC – Communication system for remote regions, RFID• Higuchi Biosciences Center – Inhalation drug delivery technique• Architecture – Copyrighted building plans• Physics – Instrumentation to detect defects in semiconductor coatings• Medicine – Software algorithm to predict epileptic seizures• Occupational Therapy – Stroke rehabilitation device• Physics – Cartoon characters and website for teaching science to children• Business – Software to tag financial data for customized report• Civil and Environmental Engineering – New antibiotic compound• Chemical & Petroleum Engineering- nanoparticles used for O2
separation and storage
KU Products in the Marketplace
• Bioreversible derivatives to overcome limitations of parent drugs• Software enables broadcasters to detect local commercial
insertions by cable operators and gather valuable marketing information
• Technology to help newborns get to oral feeds sooner • Testing, assessments and psychometric applications for schools • Technique for examining metabolism of drugs, adverse drug-drug
interactions.• Online instructional and learning tools• Compound enhances water solubility and effectiveness of drugs• Environmental and agricultural applications of remote sensing
technology• Signal Analysis for Seizure Detection and Prediction• Curriculum for community health and development
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StakeholdersStakeholders
KUCTCKUCTC
KUResearchers KU Designated
Research Centers
KU Leadership
Law Firms
PartnerUniversities
Chambers ofCommerce
KTECNetwork
Enterprise Corporationof Johnson County
Kansas City AreaLife Sciences Institute
VentureCapitalFirms
AngelInvestors
Lawrence Life Sciences Center
Local Entrepreneur
s
Industry/Gov’t. Contracting
Existing Companies World-wide
KU Start-up
Companies
Lawrence Regional
Technology Corp.
KU Small Business Development
Center
Kansas City Area
Development Council
KC SourceLink
KauffmanFoundatio
n9/08
Kansas Bio-Science Authority
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MarketingMarketing
• Faculty/Staff member is often a good resource• Database searches, associations lists, conventions,
publications and personal networking • Non-confidential disclosures• Confidential disclosures• Corporate Partner for licensing and/or additional
funding
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Protecting Intellectual Property Protecting Intellectual Property
•Patents
•Copyrights
•Trademarks
•Trade Secrets
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What is Patentable?What is Patentable?
•Products
•Processes
•Plants
•Designs
• Ideas vs. Application
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Lab Books/Inventor RecordsLab Books/Inventor Records
• Keep complete, detailed recordsKeep complete, detailed records
first idea through commercial products
• Describe the invention clearly-Describe the invention clearly-
words, photos, graphs, drawings, etc.
• Explain operation or use fully Explain operation or use fully
• Witnessed Witnessed by trustworthy colleague “Read
and understood by…”
• Dates noted, signed in inkDates noted, signed in ink
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Patent BasicsPatent Basics
• Demonstrate novelty
• Demonstrate utility
• Demonstrate non-obviousness
• Prevent others from making, using and selling invention
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Patent ProcessPatent Process
• Original and authentic inventor
• Duty of candor
• Enabling disclosure
• Specifications
• Claims
• Response to rejection
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Universities create start-ups to…Universities create start-ups to…
• Develop platform technologiesDevelop platform technologies and revolutionary discoveries in an entrepreneurial environment
• Promote local economic growthPromote local economic growth (jobs)
• Further research on discoveriesFurther research on discoveries too embryonic to be of interest to large companies (risk-reward)
• Generate a quicker financial returnGenerate a quicker financial return (equity liquidation before royalties flow)
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Issues for KU Start-upsIssues for KU Start-ups
• Management
• Capitalization
• Market
• Product/Services
• KU Equity/Royalty
• License Agreement
• Business Incubator Needs
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KU Start-up Company ExamplesKU Start-up Company Examples• Savara Pharmaceuticals– Pulmonary drug delivery technology
platform
• Crititech ― Particle-size reduction techniques for pharmaceuticals
• CyDex ― Compounds that improve drug solubility
• Flint Hills Scientific ― Automated seizure detection and prediction
• Immunogenetix Therapeutics ― Prevention / treatment of HIV infection
• Kansas Analytical Services ― Compound analysis by nuclear magnetic resonance
• KC BioMedix ― Neonatal medical devices
• NephroGenex ― Treatment of end stage renal disease (ESRD)
• ProQuest ― Developed prodrugs to reduce delivery barriers
• XenoTech ― Develop pre-clinical safety information
• eLearning Creations ― Interactive online environment for learning
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Entrepreneurship InitiativesEntrepreneurship Initiatives
Law Extern Program
Courses: ME 875,
BUS 895,
Business Plan
Competitions
Invention to VentureWorkshops in technology entrepreneurship
2006, 2007
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KU Center for KU Center for Technology CommercializationTechnology Commercialization
““Promoting Innovation to Benefit Society”Promoting Innovation to Benefit Society”
http://www.ctc.ku.eduhttp://www.ctc.ku.edu