Technology Transfer Strategies: Approaches and Options

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2009/SOM1/IPEG/SEM/005 Session: 3 Technology Transfer Strategies: Approaches and Options Submitted by: Association of University Technology Managers (AUTM) From Mind to Market: The Highs and Lows of Technology Transfer Singapore 23-24 February 2009

APEC-IP Experts Groups Seminar Janna Tom, AUTM VP-Public Policy 23-24 February 2009 Singapore AUTM Professional Development AUTM Annual Meeting - March 18-20, 2010 New Orleans, Louisiana Basic and TOOLS Courses - October 7-9, 2009 Atlanta, Georgia Monthly online courses AUTM Region Meetings Central Region - July 27-29, 2009 Madison, Wisconsin Eastern Region - June 15-17, 2009 San Juan, Puerto Rico Western Region - September 13-15, 2009 Vancouver, BC 1

AUTM Scholarships Developing Economies Scholarship Howard Bremer Scholarship Bayh-Dole Fellowship in Public Policy AUTM Communications/Publications Website, Email Journal Technology Transfer Practice Manual Better World Report/ Reports from the Field Session 3 Technology Transfer Strategies: Approaches and Options Innovation Ecosystem Research Relationships Bridging the Gap Fostering the Environment Key Points 2

The University is Only Part of the Innovation Ecosystem University Research University Teaching University TT Regional Devmt Agencies Government Policy/ framework Company Innovation Innovation Ecosystem Service/Support Providers Research Funding Local Culture Capital Providers Entrepreneurial Activity University-Industry Relations Various Interactions Knowledge exchange Exchange of personnel Sharing research materials R&D collaborations Sponsored research or clinical trials Research consortia Gifts/Donations from industry Trained students entering the workforce Faculty consulting Cooperative Extension Licensing pre-existing technology Networking Forums 3

Inherent Cultural Differences Industry culture: - profit-oriented; requires secrecy; focus on select products University culture: - non-profit; focus on the public benefit and advancing science; dedicated to free dissemination of ideas; studies multiple perspectives and maximizes utilization of ideas Even within industry, different business models are used, e.g. IT vs. biotech, large vs. small companies Research Relationships Knowledge Transfer And Technology Transfer 4

General Support of Research Gifts No strings attached, university controls research University publication of research results University control over licensing of inventions Grants Investigator-driven research Direction of research may waver University publication of research results Fellowship or training Sponsored Research Agreements Research Agreements Federal funding Non-profit charitable foundation funding Industry funded Different business models based on field Large vs. Small vs. Start-up Various strategies based on technology type R&D Collaboration Agreement Material Transfer Agreement Clinical Trials 5

State Co-Funded Research Projects State-funded Special Research Programs (admin d by UC): Tobacco-Related Disease Research Program Systemwide AIDS Research Program Breast Cancer Research Program State Co-funded Research Programs UC Discovery Grants co-funded by industry partner: biotech, communications and networking, digital media, electronics manufacturing and new materials, information technology for life sciences, pilot project for multidisciplinary research AUTM Data FY 2007 AUTM U.S. Licensing Activity Survey $48.8B in R&D expenditures at U.S. academic centers $3.4B in industry-sponsored research at U.S. academic centers (15% over FY06) 6

Affiliation Agreements Dual Appointees Howard Hughes Medical Institute Research U.S. Department of Veterans Affairs Research Teaching of medical students, residents Regional Hospitals Teaching of medical students, residents Consortium Arrangements Multiple research partners: universities with or without industry participants Often multiple funding sources, such as government-university-industry centers Results shared for research under consortium Coordination on licensing strategy Possible license to industry participants or Consolidate rights in university lead for licensing to industry 7

Multi-Institutional Research Centers Micro/Nano Fluidics Fundamentals Focus (MF3) Center Academic strength: team of 17 professors 10 universities Industry sponsors 13 company members Federal matching dollars 1.5:1 (DARPA) Small seed grants and larger challenge grants Joint Center Agreement addresses tech transfer and IP rights Energy Biosciences Institute (EBI) research collaboration between UCB, UIUC, LBNL and BP funded by BP over a ten year period with infrastructure investment by the State of California and U.S. Department of Energy Multi-Disciplinary Research Centers: California Institutes for Science and Innovation Innovation occurs at interfaces UCSC quantitative biologists, engineers and computational scientists UCSF Clinicians UCSF quantitative biologists QB3 Portal Other Research Groups UCB quantitative biologists, engineers and computational scientists Making the whole > the sum of the parts Life Sciences Industries and the QB3 Garage 8

Industry Affiliate Programs Engineering and Comp Sci Centers Typically multiple companies supporting applied research in a field of interest, particularly across multiple engineering and comp sci projects Unlike single company sponsored research, center programs pool members money to support multiple parallel initiatives Afford members low cost leveraged view of much more research than possible with one-on-one PI sponsorship Freedom-to-practice sufficient for many high-tech IP Shared research results/ip amongst company members not problematic May not work for all fields, e.g. biotech Spanning the Valley of Death 9

University-Industry Relationship Academia Industry Industry Curiosity- Driven Basic Research Applied Research Technology Development Commercialization From Basic Research to Products on Shelves Early Stage Technologies and the Valley of Death University technologies often are early stage discoveries that need: Years of further development in order to interest an industry partner for commercialization Significant investment to develop a commercial product Gap Funding Issue: Spanning the Valley of Death 10

Product Advancement Courtesy of J. Sullivan, FL Research Consortium Industry-Funded Research: AmberWave Bridging the Gap Research/POC Gap University Research MIT UCSB Purdue CM RIT UNH AmberWave/University collaborations w/ licensing AmberWave Development IP Licensing Compelling Demonstration Industry Manufacturing & RD Organizations ND Courtesy of B. Lord, Amberwave 11

Proof of Concept Centers POC Centers provide Competitive proposal process reviewed by commercial experts Seed funding Expert assistance, feasibility studies Educational programs and conferences Examples: Deshpande Center, MIT, 2002 von Liebig Center, UC San Diego, 2001 The two centers provided grant funding of $10 million that led to 26 spinout companies and raised an additional $159 million in private investment by early 2008 State-Supported Gap Funding Programs Florida State University REsearch Commercialization Assistance Grant (SURECAG) Program: The Valley of Death/GAP funding program promotes the commercialization of start-up companies based on university research products Pre-Inc Kentucky Cabinet for Economic Development offers dollar-for-dollar SBIR-STTR matching funds program to match both Phase 1 (up to $100,000) and Phase 2 (up to $500,000 for up to two years) to KY-based companies Post-Inc Michigan Emerging Technologies Fund would match 25% of Phase 1 SBIR/STTR (up to $25,000) and 25% of Phase 2 SBIR/STTR (up to $125,000); needs third party match to MI-based companies 12

Identifying Partners Upfront to Expedite Translational Research and Clinical/Regulatory Approvals $8M to UCBerkeley University BASIC RESEARCH $12M to Amyris Biotechnologies Biotechnology Co. Applied RESEARCH Courtesy of C. Mimura, UCB $22.6M to Pharma Pharmaceutical Co. REGULATORY & CLINICALS Instead of a relay race a single donor (Gates Foundation) makes one grant to fund basic research, translational research, clinical & regulatory activities No uncertainty in finding the next partner or in future contract terms and no gaps (time, expertise, additional transactions) between stages Berkeley s start up company, Amyris Biotech, can refine and scale up the technology The Institute for One World Health (iowh) is the world s first nonprofit pharmaceutical company and has expertise in clinical trials, FDA regulatory approvals. Mission: cure infectious diseases in developing world Incubators Laboratory facilities for entrepreneurs and start up companies Limited term lease Reduction of start up costs Ability to test technology before seeking significant investment for scale up manufacturing Access to various resources and services 13

Fostering the Environment Networking Forums Ensure that correct players are partnering CONNECT (originated at UCSD) CleanTech Systemwide UC Forum (4/08) Panel discussions: regional initiatives, research emphases, impacts and drivers Breakout sessions: fuel cells, biofuels/mass, sustainable energy, solar Networking breaks: university researchers and administrators, government economic development and regulatory officials, companies, law firms, venture capital firms and investors Next: UC Forum on Stem Cells and Regenerative Medicine in coordination with British Consulate in San Francisco and Canadian Consulate in CA (4/09) 14

Basic Research Funding Absolutely CRITICAL to continue basic research funding Results of basic research fuel the next generation of ideas and products Encourage curiosity and initiative to explore outside-of-the-box ideas Developing Expertise From the Ground Up Technology Development Analyst Program at Boston University Candidates: grad and undergrads in business, science, and engineering Commitment: 10 hrs/week, at least 1 semester, preferably more Compensation: $12/hour Title: Technology Development Analyst Role: Triage and assessment of new technologies, create reports and present select technologies to OTT Training: 1 day intensive and/or Dr. Stevens Technology Commercialization Course 15

Student Competitions Provide Access to Expertise Annual business concept/plan competition by Kentucky Cabinet for Economic Development Undergrad or grad students from the state s eight public university business schools Top team in 2008 earned over $44,000, has since incorporated and received IRB approval to test its prototype medical device in hospital delivery rooms. Half of the universities have implemented courses and programs to develop entries specifically for the state event and to qualify for national competitions, such as Moot Corp. Successes of Academic Technology Transfer 16

Communicating the Value of Academic Technology Transfer FY 2007 AUTM U.S. Licensing Survey 686 new products introduced in FY07 5,036 new products introduced from FY98-FY07 555 new start-up companies launched in FY07 19,827 disclosures received in FY07 30,351 licenses/options were managed in FY07 6,279 new spinouts from FY80-FY07 But metrics do not convey the real life value AUTM Better World Project Telling the story of the outcomes of technology transfer in human terms A database of stories A publication (and e-version) with 100 Stories A publication (and e-version) with 25 case studies highlighting social and economic impact Creation of additional AUTM metrics AUTM is moving beyond its metrics and stories to document the outcomes and impact of academic technology transfer www.autm.net * www.betterworldproject.net 17

UC Start-Up Companies (1986-2006) by Founding Year # of Companies 40 35 30 25 20 15 10 5 0 1986 1988 1990 1992 1994 1996 1998 2000 2002 2004 2006 Year # of Companies Percent Active 100% 90% 80% 70% 60% 50% 40% 30% 20% 10% 0% Percent Active (as of March 2007) UC Links to Biotech Companies Source: Industry-University Cooperative Research Program 581 life science companies have links to UC 1 in 4 public biotechs is within 35 miles of a UC campus 1 in 6 public biotechs founded by a UC scientist 1 in 3 California biotechs founded by UC scientists 18

UC Links to High Tech Companies Source: Industry-University Cooperative Research Program 739 high tech companies have links to UC 1 in 6 CA R&D-intensive communication companies founded by UC scientists and engineers 57% has UC scientists and engineers as Execs 65% <7 years old 55% <200 employees Key Points Industry-university partnerships are essential for development of products for the public benefit Think big for multi-disciplinary and multiinstitutional research centers Nurture a broad array of technology development phases, including basic research University-industry relationships are varied and should be structured to address the circumstances One Size Does Not Fit All 19

Questions? Thank you. Janna C. Tom Janna.Tom@ucop.edu 510-587-6059 www.autm.net www.betterworldproject.net www.ucop.edu/ott 20