Introduction to the Introduction to the Offices of Biotechnology & Offices of Biotechnology &
Business DevelopmentBusiness DevelopmentJohn L. HarbJohn L. Harb
Director, Office of BiotechnologyDirector, Office of Biotechnology____________________________________________________________________
October 30, 2008October 30, 2008
Our OfficesOur Offices
The The Office of BiotechnologyOffice of Biotechnology serves as the serves as the
technology transfer officetechnology transfer office
of the College. The office facilitates of the College. The office facilitates licensing of College technology to licensing of College technology to
industry and research collaborations industry and research collaborations between industry and faculty. between industry and faculty.
The The Office of Business DevelopmentOffice of Business Development is is focused on capturing and/or developing focused on capturing and/or developing novel or more aggressive novel or more aggressive technology technology
transfertransfer opportunities. opportunities.
““Technology Transfer”Technology Transfer” DefinitionDefinition
““Technology transfer is the process of transferring Technology transfer is the process of transferring scientific findings from one organization to another scientific findings from one organization to another for the purpose of further development and for the purpose of further development and commercialization.” commercialization.”
– – Association of University Technology ManagersAssociation of University Technology Managers
Origin of FieldOrigin of Field Bayh-Dole Act 1980Bayh-Dole Act 1980
Encourages universities to patent and license the Encourages universities to patent and license the results of federally-funded research results of federally-funded research
Universities have rights in intellectual Universities have rights in intellectual property that resulted from federal research property that resulted from federal research fundingfunding
Commercialization of inventions benefit the Commercialization of inventions benefit the public good public good
Royalties are distributed to inventor and Royalties are distributed to inventor and reinvested for education and research reinvested for education and research purposespurposes
University Technology University Technology TransferTransfer
Knowledge TransferKnowledge Transfer Publications & PresentationsPublications & Presentations CollaborationsCollaborations Material TransfersMaterial Transfers Sponsored ResearchSponsored Research ConsultingConsulting InventionsInventions LicensingLicensing
Your ResponsibilitiesYour Responsibilities
Acceptance Agreement Acceptance Agreement Abide by Einstein’s Patent PolicyAbide by Einstein’s Patent Policy Promptly disclose inventionsPromptly disclose inventions Assign ownership rights Assign ownership rights
Third-Party Agreement ObligationsThird-Party Agreement Obligations PublicationsPublications Use of MaterialUse of Material ConfidentialityConfidentiality ReportingReporting
Our ResponsibilitiesOur Responsibilities
Support Einstein faculty Support Einstein faculty researchersresearchers Facilitate technology transfer Facilitate technology transfer
relationshipsrelationships Protect the school and its faculty Protect the school and its faculty
membersmembers
Comply with obligations to Comply with obligations to sponsors and licensing partners sponsors and licensing partners
ServicesServices
Invention DisclosuresInvention Disclosures Patent ManagementPatent Management
LicensingLicensing Material Transfer AgreementsMaterial Transfer Agreements
Agent Reagent ProgramAgent Reagent Program Industry-Sponsored Research Industry-Sponsored Research
AgreementsAgreements Grant required IP management languageGrant required IP management language
Resources and data sharing plansResources and data sharing plans Consulting AgreementsConsulting Agreements
Services (cont’d)Services (cont’d)
Confidentiality AgreementsConfidentiality Agreements Inter-Institutional AgreementsInter-Institutional Agreements Review IP languageReview IP language
Clinical Trial AgreementsClinical Trial Agreements Foundation/Non-Profit GrantsFoundation/Non-Profit Grants
Invention ProcessInvention Process
Invention Disclosure FormInvention Disclosure Form Details of invention and its Details of invention and its
reduction to practicereduction to practice Funding & material sourcesFunding & material sources Upcoming publicationsUpcoming publications Commercial contactsCommercial contacts
Patent CommitteePatent Committee Intellectual Property ProtectionIntellectual Property Protection
Licensing ProcessLicensing Process
Market, market, marketMarket, market, market Business discussions with Business discussions with
commercialization partnerscommercialization partners Confidentiality AgreementConfidentiality Agreement TermsTerms
License AgreementLicense Agreement Royalty is distributed in accordance Royalty is distributed in accordance
with Einstein’s Official Policy on Patents with Einstein’s Official Policy on Patents and Licensing Agreements (“Patent and Licensing Agreements (“Patent Policy”)Policy”)
Patent Policy Patent Policy DistributionDistribution
Net Royalty is distributed as Net Royalty is distributed as follows:follows: 1/3 – Inventors (personally)1/3 – Inventors (personally) 1/3 – Laboratory Research1/3 – Laboratory Research 1/3 – College1/3 – College
Material Transfer Material Transfer ProcessProcess
Various forms Various forms Incoming vs. OutgoingIncoming vs. Outgoing Academic vs. Industry PartnersAcademic vs. Industry Partners Human material?Human material? Hazardous material?Hazardous material?
Research ToolsResearch Tools
Disclose!Disclose! Online, interactive formOnline, interactive form
Review for commercial valueReview for commercial value Market to companies (“Agent Market to companies (“Agent
Reagent”)Reagent”)
High volume transfers High volume transfers repositories (mice, plasmids, etc.)repositories (mice, plasmids, etc.)
Industry-Sponsored Industry-Sponsored ResearchResearch
PI RolePI Role Develop Develop
Research PlanResearch Plan Develop BudgetDevelop Budget
Office RoleOffice Role Review BudgetReview Budget Negotiate Negotiate
AgreementAgreement
Points to remember:Points to remember: Overhead policy is consistent with NIH Overhead policy is consistent with NIH
raterate Involve us in the process early onInvolve us in the process early on Keep science and business separateKeep science and business separate
Hot Topics in Hot Topics in AgreementsAgreements
Publication RightsPublication Rights LiabilityLiability Intellectual Property RightsIntellectual Property Rights ConfidentialityConfidentiality
ConsultingConsulting
PrivatePrivate Agreements Agreements MustMust be approved by: be approved by:
Department Chair Department Chair Dean (Office of Biotechnology)Dean (Office of Biotechnology)
Proposed guidelines and Proposed guidelines and suggestedsuggested languagelanguage Not in place of outside counselNot in place of outside counsel
Clauses of concernClauses of concern ConflictsConflicts
Prior rights & Einstein rightsPrior rights & Einstein rights Time commitmentsTime commitments
LiabilityLiability Distinction from research activitiesDistinction from research activities Student involvementStudent involvement
Office of Biotechnology Office of Biotechnology StaffStaff
John Harb, M.S.P.H.John Harb, M.S.P.H. DirectorDirector Assistant Dean, Scientific OperationsAssistant Dean, Scientific Operations
David Schoenhaut, Ph.D. David Schoenhaut, Ph.D. Assistant DirectorAssistant Director
Benjamin Neymotin, M.A.Benjamin Neymotin, M.A. Contracts and Licensing AssociateContracts and Licensing Associate
Office of Business Office of Business Development StaffDevelopment Staff
Richard Kosman, Sc.M.M. Richard Kosman, Sc.M.M. DirectorDirector
David Silva, Ph.D. David Silva, Ph.D. Senior Business Development Senior Business Development
AnalystAnalyst
Janis Peck, M.B.A. Janis Peck, M.B.A. Business Development AnalystBusiness Development Analyst
Contact UsContact Us
Website: Website: www.aecom.yu.edu/biotechnologwww.aecom.yu.edu/biotechnologyy Forms & PoliciesForms & Policies News & PublicationsNews & Publications Contact InformationContact Information
Phone: 718-430-3357Phone: 718-430-3357 Office: Belfer Building, Office: Belfer Building, 99thth Floor Floor
Want to learn more about Want to learn more about IP?IP?
Join us…Join us…Tuesday, Tuesday, December 9December 9thth
Same RoomSame RoomDifferent time - Different time - NoonNoon
Guest Speaker - Guest Speaker - Kenneth P. George, PartnerKenneth P. George, Partner
Amster, Rothstein & Ebenstein LLP Amster, Rothstein & Ebenstein LLP (intellectual property law firm) (intellectual property law firm)
““Intellectual Property Overview Intellectual Property Overview for the Academic Researcher”for the Academic Researcher”
Thank YouThank You
Any Questions?Any Questions?
