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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: [email protected]