Technology Transfer at UIC

© 2009 by the Board of Trustees of the University of Illinois

Presentation to the Software Commercialization Symposium

April 6th, 2009

Nancy Sullivan, DirectorMark Krivchenia, Technology Mgr.Office of Technology Management

The Office of Technology Management

© 2009 by the Board of Trustees of the University of Illinois

Main Office:

COM 446, MC 6821853 West Polk StreetChicago, IL 60612www.otm.uic.edu

Satellite Office:

SEO 801 (East Campus)851 S. Morgan St., MC 682Chicago, IL 60612

The Office of Technology Management

© 2009 by the Board of Trustees of the University of Illinois

Our Mission: The Office of Technology Management (OTM)

Support faculty members and researchers in the commercialization of their discoveries

Bring research discoveries to the public through commercialization

Support economic development in the State of Illinois(State Policy Statement, 2000)

Generate income for the University

Key Drivers of Academic Technology Transfer

© 2009 by the Board of Trustees of the University of Illinois

1. Bayh-Dole (1980):

Allows Universities to retain ownership of inventions created with federal funding. In exchange, Universities must use its resources to develop these inventions and share proceeds with inventors

2.Research Funding Dollars at Major Research Institutions:

UI: 808 Million FY 2006UIC: 332 Million FY 2006UIUC: 476 Million FY 2006

University Policy www.vpaa.uillinois.edu/policies/patents.asp

© 2009 by the Board of Trustees of the University of Illinois

1. Intellectual Property (IP) is owned by UIC if:

discovery is a result of employee’s duties discovery is made through use of university resources

2. Sharing of revenues from UIC IP:

40% divided among inventors40% to University20% to College

3. University Rights in Creator-Owned Works

(1) Traditional academic copyrightable works owned by the creators. Such works need not be licensed to the University.(2) Traditional academic copyrightable works created with use of university resources over and above those usually and customarily provided shall be owned by the creators but licensed to the University.

The Office of Technology Management

© 2009 by the Board of Trustees of the University of Illinois

How we achieve our goals

•work with faculty members and researchers to assess the patentability and commercial potential of their discoveries

•provide intellectual property education

•support and encourage UIC inventors to explore the commercial potential of their discoveries

The Office of Technology Management

© 2009 by the Board of Trustees of the University of Illinois

How we achieve our goalscontinued

•protect university IP with patents, copyright, and trademarks

•market and license technologies and monitor licensees’ performance

•distribute income according to University policy : patent reimbursement, royalty distribution (40-40-20%)

The Disclosure Process

© 2009 by the Board of Trustees of the University of Illinois

1. Inventor makes a discovery.2. Inventor completes a “Report of Research Discovery” form and submits to OTM3. OTM does a screening analysis to assess:

Preliminary View of PatentabilityCommercialization potentialCompleted 4-6 weeks from initial disclosure

4. OTM communicates recommendations to facultyFiles for patent or other IP protection (copyright, etc.)

5. Markets technology (licensee or start-up company)

Request further data or researchClose down the technology

© 2009 by the Board of Trustees of the University of Illinois

Assessmenttiming

OTM Activities

© 2009 by the Board of Trustees of the University of Illinois

FY 05 FY 06 FY 07 FY 080

20

40

60

80

100

120

140

Disclosures Filed

FY 05 FY 06 FY 07 FY 080

20406080

100120140160180200

US Patents Filed

OTM Activities

© 2009 by the Board of Trustees of the University of Illinois

FY 05 FY 06 FY 07 FY 080

5

10

15

20

25

Licenses and Options

FY 05 FY 06 FY 07 FY 080

0.51

1.52

2.53

3.54

4.55

Royalties Earned ($mil-lions)

Commercialization

© 2009 by the Board of Trustees of the University of Illinois

MarketingActive – reach out to companiesPassive – website

InterestNon-Disclosure Agreement with interested companies – scientific discussions with inventorsOption Agreement – evaluation and license negotiationsLicense Agreement – product development and sales

ComplianceRoyalty distribution - 40%-40%-20% Monitoring license compliance

License Agreement

© 2009 by the Board of Trustees of the University of Illinois

•Regular technology license agreementUpfront feeRoyalty paymentsMilestone eventsMilestone paymentsSublicensing rights

•Noncommercial, research-use only license agreement•Equity and non-equity license agreements

How OTM fits into larger UI Commercialization Complex

© 2009 by the Board of Trustees of the University of Illinois

Office of Technology Management (OTM) Invention disclosure triageIntellectual property protectionMarketing and Licensing

IllinoisVentures, LLCStart-up company due diligenceCompany formation, consultation, guidanceDevelopmental funding, pre-seed fundingSeed funding, co-investments, follow-on investments

Research ParksCompany incubationCompany expansionLinkages to campus facilities, research, people

University-wide leadership and coordination provided by Vice President for Technology and Economic Development in cooperation with campus Vice Chancellors for Research.

My Contact Information

© 2009 by the Board of Trustees of the University of Illinois

Mark Krivchenia

Technology ManagerOffice of Technology ManagementSEO 801 (East Campus)446 COMW, MC-682 (West Campus)1853 West Polk Ave.Chicago, IL 60612

(312)996-6626 (Office Phone)E-mail: krivchen@uic.edu