Technology Transfer at UIC
© 2009 by the Board of Trustees of the University of Illinois
Presentation to the Software Commercialization Symposium
April 6th, 2009
Nancy Sullivan, DirectorMark Krivchenia, Technology Mgr.Office of Technology Management
The Office of Technology Management
© 2009 by the Board of Trustees of the University of Illinois
Main Office:
COM 446, MC 6821853 West Polk StreetChicago, IL 60612www.otm.uic.edu
Satellite Office:
SEO 801 (East Campus)851 S. Morgan St., MC 682Chicago, IL 60612
The Office of Technology Management
© 2009 by the Board of Trustees of the University of Illinois
Our Mission: The Office of Technology Management (OTM)
Support faculty members and researchers in the commercialization of their discoveries
Bring research discoveries to the public through commercialization
Support economic development in the State of Illinois(State Policy Statement, 2000)
Generate income for the University
Key Drivers of Academic Technology Transfer
© 2009 by the Board of Trustees of the University of Illinois
1. Bayh-Dole (1980):
Allows Universities to retain ownership of inventions created with federal funding. In exchange, Universities must use its resources to develop these inventions and share proceeds with inventors
2.Research Funding Dollars at Major Research Institutions:
UI: 808 Million FY 2006UIC: 332 Million FY 2006UIUC: 476 Million FY 2006
University Policy www.vpaa.uillinois.edu/policies/patents.asp
© 2009 by the Board of Trustees of the University of Illinois
1. Intellectual Property (IP) is owned by UIC if:
discovery is a result of employee’s duties discovery is made through use of university resources
2. Sharing of revenues from UIC IP:
40% divided among inventors40% to University20% to College
3. University Rights in Creator-Owned Works
(1) Traditional academic copyrightable works owned by the creators. Such works need not be licensed to the University.(2) Traditional academic copyrightable works created with use of university resources over and above those usually and customarily provided shall be owned by the creators but licensed to the University.
The Office of Technology Management
© 2009 by the Board of Trustees of the University of Illinois
How we achieve our goals
•work with faculty members and researchers to assess the patentability and commercial potential of their discoveries
•provide intellectual property education
•support and encourage UIC inventors to explore the commercial potential of their discoveries
The Office of Technology Management
© 2009 by the Board of Trustees of the University of Illinois
How we achieve our goalscontinued
•protect university IP with patents, copyright, and trademarks
•market and license technologies and monitor licensees’ performance
•distribute income according to University policy : patent reimbursement, royalty distribution (40-40-20%)
The Disclosure Process
© 2009 by the Board of Trustees of the University of Illinois
1. Inventor makes a discovery.2. Inventor completes a “Report of Research Discovery” form and submits to OTM3. OTM does a screening analysis to assess:
Preliminary View of PatentabilityCommercialization potentialCompleted 4-6 weeks from initial disclosure
4. OTM communicates recommendations to facultyFiles for patent or other IP protection (copyright, etc.)
5. Markets technology (licensee or start-up company)
Request further data or researchClose down the technology
© 2009 by the Board of Trustees of the University of Illinois
Assessmenttiming
OTM Activities
© 2009 by the Board of Trustees of the University of Illinois
FY 05 FY 06 FY 07 FY 080
20
40
60
80
100
120
140
Disclosures Filed
FY 05 FY 06 FY 07 FY 080
20406080
100120140160180200
US Patents Filed
OTM Activities
© 2009 by the Board of Trustees of the University of Illinois
FY 05 FY 06 FY 07 FY 080
5
10
15
20
25
Licenses and Options
FY 05 FY 06 FY 07 FY 080
0.51
1.52
2.53
3.54
4.55
Royalties Earned ($mil-lions)
Commercialization
© 2009 by the Board of Trustees of the University of Illinois
MarketingActive – reach out to companiesPassive – website
InterestNon-Disclosure Agreement with interested companies – scientific discussions with inventorsOption Agreement – evaluation and license negotiationsLicense Agreement – product development and sales
ComplianceRoyalty distribution - 40%-40%-20% Monitoring license compliance
License Agreement
© 2009 by the Board of Trustees of the University of Illinois
•Regular technology license agreementUpfront feeRoyalty paymentsMilestone eventsMilestone paymentsSublicensing rights
•Noncommercial, research-use only license agreement•Equity and non-equity license agreements
How OTM fits into larger UI Commercialization Complex
© 2009 by the Board of Trustees of the University of Illinois
Office of Technology Management (OTM) Invention disclosure triageIntellectual property protectionMarketing and Licensing
IllinoisVentures, LLCStart-up company due diligenceCompany formation, consultation, guidanceDevelopmental funding, pre-seed fundingSeed funding, co-investments, follow-on investments
Research ParksCompany incubationCompany expansionLinkages to campus facilities, research, people
University-wide leadership and coordination provided by Vice President for Technology and Economic Development in cooperation with campus Vice Chancellors for Research.
My Contact Information
© 2009 by the Board of Trustees of the University of Illinois
Mark Krivchenia
Technology ManagerOffice of Technology ManagementSEO 801 (East Campus)446 COMW, MC-682 (West Campus)1853 West Polk Ave.Chicago, IL 60612
(312)996-6626 (Office Phone)E-mail: [email protected]