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

Bill.bond@rit.edu;

David Borkholder, PhDBausch and Lomb Associate Professor of Microsystems Engineering, RIT

168 Lomb Memorial DriveRochester, NY 14623david.borkholder@rit.edu

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

patrick.emmerling@rochester.edu

Alex Zapesochny, Esq.

President, COO

iCardiac Technologies, Inc.

(585) 295-7610 X102

alex.zapesochny@icardiac.com

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!