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Transfer of Technology and Licensing · Transfer of Technology and Licensing Hina Mehta, PhD, MBA...

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Transfer of Technology and Licensing Hina Mehta, PhD, MBA Director, Office of Technology Transfer George Mason University [email protected]
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  • Transfer of Technology and Licensing

    Hina Mehta, PhD, MBA

    Director, Office of Technology Transfer

    George Mason University

    [email protected]

  • Content

    Overview

    Background

    Office structure and Operation

    Technology Transfer Process

    Licensing Process

  • What is Technology Transfer?

  • Why is it important?

    • Under Bayh-Dole, university and researcher may retain title to inventions

    made using federal research dollars

    • This system incentivizes the transfer of technology to the private sector for

    job creation

    • Net licensing revenues to universities go back into more research,

    education, or patenting costs

    • Initial economic development usually happens locally – more than 70% of

    start-ups formed each year are located in same state as research institution

  • ✓ Bayh-Dole Act of 1980

    ▪ Allowed recipients of Federal $ to own inventions, i.e., Universities

    ✓Stevenson-Wydler Technology Innovation Act of 1980

    ▪ Required Federal Labs to engage in T2 Activities

    ✓ Federal Technology Transfer Act of 1986

    ▪ Allowed federal labs to conduct research with companies (CRADAs)

    Required by Law

  • Driving Innovation and Economy

    • 4.3 million jobs

    supported

    • $1.3 trillion contributed

    to economy

    • Report published by

    AUTM in June 2017

    Source: Association of University Technology Managers

  • Societal and Economical Benefit

    • 1,080 start-ups formed

    • 6,050 start-ups still operational

    at end of FY2017

    • 755 new products created

    Independent study commissioned

    by AUTM and the Biotechnology

    Innovation Organization (BIO). The

    report, “The Economic Contribution

    of University/Nonprofit Inventions

    in the United States: 1996-2015,”

    was released in June, 2017.

    Source: Association of University Technology Managers

  • Place of TTO within University

    President

    VP Research VP Finance VP..

    Provost

    TTO

  • TTO Structure (small office)

    Director

    Licensing Personnel

    Administrative Staff

    Paralegal

  • TTO Structure (large office)

    Director

    Licensing Group

    Patent Counsel

    Administrative Staff

    Marketing Group

    Associate/

    Assistant Director

    Life Science

    Engineering

    Comp Science

    Student Interns

    Attorney

    Paralegal

    Finance

    License

    Compliance

    Technology Marketing

    Industry Partnership Liaison

  • Services offered by TTO

    ➢ Interpret university policies on patents and copyrights

    ➢Provide intellectual property guidance

    ➢Solicit, review and evaluate disclosures for commercial potential and

    patentability

    ➢Non-Disclosure, option, license and other research agreements

    ➢Market and License IP - Monitor licensee performance, ensure license and legal

    compliance; distribute revenues

    ➢Promote Entrepreneurship at all levels of the university

    ➢Provide direction for further information or resources, if available

  • good science

    commercially valuable

    invention

    exploitable

    IP

    Drives

    Innovation

    Public Benefit

    Financial Gain

    Economic

    Development

    TTO Model

  • Technology Transfer Process

    Image Credit- MIT TLO

    • Educate Faculty

    • Relationship building

    • IDF solicitation

    • IDF Completeness

    • Funding information

    • Collaborations, if any

    • IP and Market

    assessments

    • Marketing Material• Identify potential licensee• Initial Discussions

    Gap: further technology development?

    • Negotiate Term

    Sheet

    • Execute a Win-

    Win License

    • Maintain

    ongoing

    relationship

    • Potential

    Sponsored

    Research

  • Commercialization Of Invention

    The process by which a new product or service is introduced into the market.

  • Commercialization

    ➢ Technology Assessment

    • Just a concept or more of a product

    • Sufficient Data

    • Cheaper, better, faster

    • Prototype Ready

    ➢ Marketing

    ➢ Licensing to existing companies

    ➢ Startups

  • Licensing IP- Terms

    Patent Rights

    Type of License- Exclusive or Non-exclusive

    Considerations- Up-front Fees and/or Equity

    Patent Expenses

    Running Royalties

    Annual Payments

    Milestone Payments

    Diligence Requirements – Milestones and Reports

    Term and termination

    Infringement

    Warranty

    Assignment

    Export/US Manufacturing waiver

  • Nine points to consider in licensing IP

    1. Reserve the right to practice licensed inventions

    2. Exclusive licenses – Structured to encourage development

    3. Minimize licenses to ‘ future improvements’

    4. Manage Conflict of Interest

    5. Broad access to research tools

    AUTM, March 6, 2007

  • Nine points to consider in licensing IP

    6. Engage in IP enforcement carefully

    7. Know your export regulation policies

    8. Be mindful of implications of working with patent

    aggregators

    9. Consider terms that address unmet needs

    AUTM, March 6, 2007

  • Inventors – 50%

    College Dean- 10%

    Foundation- 40%

    Revenue Distribution

    Research

    Commercially valuable

    invention

    License

    Revenue

  • Your All in One Stop

    • Office of Technology Transfer

    Invention Disclosure

    Evaluation- ownership, commercial potential, need for legal protection

    Legal Process/marketing

    Licensing and revenue distribution

  • Thank you

    Questions?


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