What To Look Out For When Licensing Health Care Related Apps

Lewis HumphreysSoftware & IT Licensing Manager

When Things Fall Apart

The following presentation reflects the personal views and thoughts of Lewis Humphreys, and is not to be construed as representing in any way the

corporate views or advice of the University of Arizona or Tech Launch Arizona and their Affiliates, Subsidiaries or Divisions, nor the views or

advice of the Association of University Technology Managers (AUTM). The content is solely for purposes of discussion and illustration, and is not to be

considered legal advice.

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Tech Launch ArizonaCommercializing the Inventions of

The University of Arizona

Our PurposeVISION

By 2020, the University of Arizona through Tech Launch Arizona will become a recognized national resource for its role in commercializing UA-created knowledge, thereby bringing the University’s inventions to the public for economic and social benefit.

MISSION

TLA will build upon the synergies among the faculty, administration, students and alumni of the University of Arizona, its tech parks, and the technology and business community to significantly enhance the impact of UA research, intellectual property (IP) and technological innovation.

The TLA Story

Our OrganizationTechnology Transfer Business Development Tech Parks Arizona

• IP Protection• Licensing• Business Intelligence• Startup formation and

management

• Asset Development• Developing New

Ventures• Leveraging the

Commercialization Network

• Increasing SBIR/STTR Effectiveness for UA Technologies

• UA Tech Park and UA Tech Park at The Bridges

• 45 Companies, 6,500 Employees

• Arizona Center for Innovation (AzCI), a Startup and Business Development Services Incubator

The Commercialization Network

Domain Experts

• Deep domain expertise in a particular technology domain

• Contribute by helping to evaluate the technical merit and market applicability of an idea

Business Leaders

• Individuals that have founded companies and/or held high level roles in companies

• Contribute by helping to identify necessary steps for successful market penetration

• May become a member of a resulting startup

A 1400-member network of experienced individuals that contribute to conversations around emerging UA discoveries

FY2016 Tech Commercialization

• 14 startup companies• 250 inventions reported• 278 US patents filed• 95 licenses and options

• 27 Asset Development awards

• 95% occupancy of approx. 2M sq. ft. at the UA Tech Park

• 15 client companies served at the Arizona Center for Innovation

Commercialization Progress

Consistent Year-Over-Year Improvement

724 127 $3.07M(77 projects)

31 268 108

Metric FY09-13 Avg* FY16

Invention Disclosures 138 250

Total Licenses 37 95

New Patent Apps 81 278

Startups 6 14

Percentage of AzCI companies with UA IP or people

36% 52%

* Five years immediately preceding formation of TLA

UA Technologies, FY 2016

Inventions by CollegeInventions by Field

Invention Disclosure

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Managing expectations

Curb yourenthusiasm

All babies arebeautiful

Assessment & Business Intelligence

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Where is it on theCurve?

How much furtherDevelopment?

Market size?

Time to launch?

The Inventor

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Reputation

Time

Naiveté

www.famousinventors.org

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The Inventor!!

Ego

Trust

Collaborators

By MGM / Clarence Bull

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Passion?

Money

Ready?

Time?

Trust

Who Leads?

The Inventor & The Start Up

© AMC Networks 2009-2013

Opportunity Knocks

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Opportunity Knocks

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• Tech Scouts• Venture Scouts• When to seek leadership• When to seek investors• Managing expectations

Image from Wikicommons

When Things Fall Apart

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Image from Wikicommons

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By Farcaster - PowerPoint slide based on argument terminology, CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=46732080

When Things Fall Apart

• New people get involved• Different worlds of licensing• Sponsored research deal vs. license• Medical Device vs. Software• Medical Device + Software

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When Things Fall Apart

• When to introduce the terms?• Who negotiates?• License Fee For Start Ups?• Fields of use – do start ups get them all?• Patent reimbursement• Milestones

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When Things Fall Apart

• Royalty Rate• Sublicensing• Equity• Patent reimbursement• Milestones

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When Things Fall Apart

• The dirty details• Enmity• Frustrations• Misunderstanding• Time wasted

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When Things Fall Apart

• Can I please work with someone else? • Different worlds of licensing• Advising when to get a lawyer• How long do you have before its too late?• Creating a deadline

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Lessons Learned

Thank you.

Connect with us via our monthly newsletter and social media.

http://techlaunch.arizona.edu

Lewis Humphreys: lewish@tla.arizona.edu