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David Winwood

The UAB Research Foundation

16 July 2009

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The UAB Research Foundation

The What Why & Howof

University Technology Transfer

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UAB Research Foundation &UAB Research Fundamentals• 501 c. 3 established in 1987 to provide services to the research

enterprise at UAB

• The research enterprise at UAB is significant –

• UAB’s research expenditures have doubled every decade since its founding:

• Research expenditures last year were >$420 MM

• Of which >$200 MM is from federal awards that is – money being sent here from D.C. and spent in our community

• Of the $420 MM, ~ half is salaries – again, mainly spent very close to where we are sitting today

• Every external $ spent on research at UAB has an additional $.84 impact on the local economy

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UABRF Role

• The RF completes almost 1,000 transactions a year

• Mainly service-oriented, ‘zero-revenue’ agreements:

• Material Transfer Agreements, Confidentiality

Agreements, inter-university agreements, consortium /

collaboration agreements….

• Not ‘newsworthy’ or exciting….but crucial components

of the research enterprise

• At core, UABRF is a service provider for UAB research

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The Meat…..

• The reason most here are interested in the RF:

• We own and manage intellectual property created at UAB

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Why?

• Fundamentally – if we accept federal support - we have to…

• Must provide administrative entity to manage resulting intellectual property – whether (potentially) patentable or research tools or biological materials; at UAB this entity is UABRF

• Bayh-Dole Act, 1980

• Provides mechanism for university ownership and commercialization of federally-supported inventions

• Described as ‘Possibly the most inspired piece of legislation to be enacted in America over the past half-century…*)

*”INNOVATION'S GOLDEN GOOSE”, The Economist, Dec 12th 2002

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Bayh-Dole Act Basics……

• Obligation to make developments available in

exchange for receipt of government grants

• Universities must file patents on inventions they

elect to own

• Encourage collaboration with industry to promote the

utilization of inventions

• Must give preference to small businesses

• Manufacturing in U.S.

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Patents…………

• Typically the UABRF licenses rights to patents

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Real Patents…..

“ANNUNCIATOR FOR THE SUPPOSED DEAD”Inventor: WILLIAM H. WHITE

U.S. Patent 465,548 Patented December 22, 1891

“ for preventing the commission of "grave errors"

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Results, 2006-2007

• In the U.S., University-licensed technologies resulted in:

• 686 new products being introduced into the market

• 555 new startup companies launches

• 19,827 new invention disclosures were received by universities

• A total of 5,109 licenses and options were signed

• 3,622 patents were issued to universities

• 3,388 startup companies based on university-created technologies were still operational (from the beginning of record keeping on such matters, in the late 1980s)

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UABRF Metrics (1987-2009)

• Total inventions received:

>1,900

• U.S. Patents issued: >467

• Total Option/License agreements: >350

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UABRF Metrics (1987-2009)

• License revenues collected to date: >$47MM

• Licenses with equity: 39

• Distributions to inventors: $13.2MM

• As personal income

• Distributions to UAB& UABRF $32MM

• Used to support research activities

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Technology Transfer vs. Knowledge Transfer

“Of course there's a lot of knowledge

in universities:  the freshmen bring a

little in; the seniors don't take much

away, so knowledge sort of

accumulates.”

Abbott Lawrence Lowell, Harvard president 1909-1933

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Technology Transfer Process - Simplified

Invention disclosed to TT office

Review / triage:

completeness; technical aspects; obligation to funding entity(federal agency or private industry?)

Patentability

Marketability

Seek patent protection

Identify potential licensee(s)

Market

Negotiate terms:

Option period

Internal review: Conflicts of interest?

Execute license agreement

Monitor compliance/diligence terms

Maintain patent portfolio

Invoice

Distribute revenues to happy inventors…….

(and even to unhappy inventors, as well…..)

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Technology Transfer Process - Simplified

What could possibly go wrong?

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UNIVERSITY INDUSTRY

Research Partner-ships, Tech Transfer =Economic Development

Teaching

Research

Service

EconomicDevelopment

R&D, products

Profits

Knowledge for Knowledge’s Sake

Academic FreedomOpen Discourse Time = Semester

Management ofKnowledge for Profit

ConfidentialityLimited Public Disclosure Time = Money

UNIVERSITY INDUSTRY

Research Partnerships, Tech Transfer =Economic Development

Teaching

Research

Service

EconomicDevelopment

R&D,

Products

Profits

Knowledge for Knowledge’s Sake

Academic FreedomOpen Discourse: Time = Semester

Management ofKnowledge for Profit

ConfidentialityLimited Public Disclosure Time = Money

Eg

o a

nd

en

vyF

ear and

g

reed

From Louis Berneman

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Challenges?

• By definition, the technologies managed by the RF

are very early stage

• Necessary to seek patent protection very early

• Result – UABRF is almost always the first ‘investor’ in

a UAB technology

• Patent investments made by UABRF in a single

portfolio often reach tens or hundreds of thousand $

before (if!) a licensee is found – whether an existing

company or a startup

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Finding a Licensee…

• Strong preference to do business locally to support local economic growth, however –

• Most UAB technologies are licensed out of state or overseas

• Exception is licenses to UAB startups

• Local industry clusters don’t yet match the technology base generated at UAB – strong life sciences portfolio

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Observations

• Most of our technologies / inventions are not candidates for

startup company formation; rather, they will best be

introduced into the market place by licensing to an existing

company for development as a new product or service

• Many times that company will be out of state

• Wealth is eventually created here as licensing revenues are

returned to UABRF, the inventors and UAB

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Expectations

• Alignment of priorities with performance metrics-• (e.g., create startup companies and wait for revenues that

may never materialize….or license to existing companies for up-front money?)

• How is success measured?• By the university?• By the inventor?• By the community?• By the federal government?

• Depending on the answer to this question, management styles for university technology transfer vary considerably across the nation

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Goals at UABRF

• Help build an environment that is supportive of the activities in

our realm to build an Entrepreneurial Ecosystem:

• At the university:

• support at all administrative levels – faculty, department,

school, university…..trustees

• Local investors

• Serial entrepreneurs – we have some, and they are well

represented here – but we need more

• Service providers

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Progress

• New staff positions added• RF staff now includes 5x Ph.D.’s, 3x MBA’s & 3x J.D.’s…

• Better business practices

• Outreach – to faculty & community

• Collaborations• Across campus

• With other UA system schools

• With local & regional economic development agencies

• Participation in national & international professional organizations

• Visibility

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Successes – Diverse Portfolio

• Commercializing a therapeutic technology is expensive and time

consuming – but rewards are significant

• Life science service / discovery companies present different

paths to commercial success:

• Discovery BioMed, Vivo BioScience

• IT and bioinformatics based companies from UAB have enjoyed

success:

• Emageon

• MedMined

• DefiniCare

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A Life Sciences Campus-With Engineering

• Alabama Launchpad, 2009:

• UAB teams – took 3 out of the 8 final places

• Won first and second place

• $100K 1st place prize – Innovative Composite Solutions,

from UAB’s Materials Sciences (School of Engineering)

• $50K 2nd place prize, Spectrum PhenomX, Genetics,

(School of Medicine)

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Summary

• Work in close collaboration with local, state and regional entities; leverage intellectual and physical assets

• Sometimes this means licensing a technology to a company; but often it may mean providing access to expertise or to one of a kind instrumentation.

• If this is done properly -

• Discoveries become beneficial products and services, medicines, improved electrical and computer equipment, plants, safer food, etc.

• Public benefits include employment, commerce, generating state and federal taxes

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Questions?

UAB Research Foundation

205 934 9911