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