© 2010 University of Florida University of Florida Office of Technology Licensing Where Science Meets Business

© 2010 University of Florida

University of Florida Office of Technology Licensing

Where Science Meets Business

www.otl.ufl.edu


Large Company

Start-Up-Company

Medium Size Company Jobs

Profits &Tax Revenue

Products &Services

• % of Revenue• Securities• Combination

The University

US, State and Local Governments

A Very Virtuous Cycle

Lab to Market – It Works !

Rapid Genomics

http://www.50states.com/florida.htm

http://upload.wikimedia.org/wikipedia/commons/a/a4/Flag_of_the_United_States.svg


UF-OTL Patents & Licensing Research Awards

Invention Disclosures

US Provisional Patent Applications

Licenses/Options Executed

2008/09 $574M 271 151 72

2007/08 562 299 167 75

2006/07 583 327 156 74

2005/06 519 260 115 73

2004/05 494 274 133 66

2003/04 475 280 121 64

2002/03 458 264 127 52

2001/02 428 196 86 59

2000/01 380 204 64 37

1999/00 295 166 43 28

1998/99 280 136 47 10

Research AwardsInvention

Disclosures

US Provisional Patent

Applications Licenses/Options

Executed

2010/11 $619M 298 145 78

2009/10 678 279 120 67

2008/09 574 271 151 72

2007/08 562 299 167 75

2006/07 583 327 156 74

2005/06 519 260 115 73

2004/05 494 274 133 66

2003/04 475 280 121 64

2002/03 458 264 127 52

2001/02 428 196 86 59

2000/01 380 204 64 37

1999/00 295 166 43 28

1998/99 280 136 47 10


AUTM Data FY 1991-2006

194,000 disclosures (discoveries)

$445B +Research

Opportunity Assessment

(Triage)

97,000 Patent Apps -42,000 Issued Patents

35,000 Active Licenses

5,800Start - ups

$2.3M : 1 disclosure

50% do not move forward

(16% lics / 3.0% discl.)

Positive exit (liquidation)

From Disclosure to Patent Royalties

(18% of discl.)

Attribution: Lou Berneman (Texelerate), updated data from Mike Cleare (U. Penn.) J.Fraser, FSU, 2/15/2010.

• Commercial potential• Technical advantages• Protectability• Inventor profile


How Does It Work at UF?

Idea

InventionDisclosure

Form

WrittenDisclosure

OralDisclosure

Exert

WaiveOTL Explores Patentability & Marketability

OTL Seeks Licensee &

Makes Patent Decisions

(120 Days)


• Several key elements are necessary to ensure discoveries help benefit society– Protected intellectual property – Further development and testing (almost always)– Commercial partner– Funding for additional R&D– Effective technology transfer services

Getting Science from the Lab to the Market – Technology Transfer


• Sentricon® is a colony elimination technology for termite control, developed at UF, introduced to market

in 1995• Saved the Statue of Liberty from a termiteinfestation • Has also led to a 300 metric ton

reduction in chemical use in homes nationwide


Bayh-Dole Act of 1980

• Obligates universities to proactively protect and market their technologies or else forfeit them to the federal funding agency

• Has stimulated industrial productivity and innovation in the U.S. – Federal agencies prior to Bayh-Dole had a very

low rate of success


Types of Patents• Utility patent

Provides protection for technological advances and innovation. Utility patents apply to the way something is made, how a device operates, or a process for accomplishing some utilitarian purpose. The subject of a utility patent must result from human activity (and not be a product of nature). • A machine: e.g., a new medical device to simplify intubation• Composition of matter: e.g. DNA/protein sequence or new

pharmaceutical• A process for making or doing something: e.g. steps for plant

transformation


Types of Patents• Plant patent

Applies to characteristics of a new plant that has been asexually reproduced (by grafting or selective cuttings — without seed manipulation). The specifications include:

• complete detailed description of the plant and the characteristics that distinguish it from related known varieties

• its antecedents, expressed in botanical terms • the origin or parentage of the plant variety • manner the variety of plant has been asexually reproduced

A new variety of plant, no matter how reproduced, can also be the subject of a utility patent.


Direct Support Organizations (DSO)

• Not-for-profit corporation • Organized and operated exclusively to receive, hold,

invest, and administer property and to make expenditures to or for the benefit of a (FL) state university

• Organized under part V of chapter 159, FL statutes

• UF has more than a dozen DSOs that serve specific purposes


• To promote, encourage and provide assistance to the research activities of UF faculty, staff and students.

• UFRF may take equity interests in licensee entities.

• At UF’s sole discretion, inventions in which university asserts its interests are assigned to UFRF.

• Licensing of all IP protected by utility patents, trademarks and copyright is carried out through UFRF

University of Florida Research Foundation, Inc. (UFRF)


• To provide foundation seed and nursery stocks of the best-known varieties adaptable to the Florida climate and soils available annually to Florida farmers and producers in adequate quantities and at reasonable prices.

• To cooperate with the Florida Agricultural Experiment Station (FAES) of the University of Florida in making available new and improved crop seed and nursery stocks to Florida farmers and producers

• To propagate and increase the same through any agency, and particularly by contracting with producers and institutions; and to disseminate such increased stocks to it's members and others.

• Licensing of all IP related to Plant Patents, PVPs, plant breeder’s rights and plant variety rights are carried out through FFSP.

Florida Foundation Seed Producers, Inc.(FFSP)


UF’s Organization and IP Policy• Clear rules and concrete IP policies in place since 1997• eliminates any disagreements over allocation of money or that a given project

is an exception to the rule

• Differential distribution policy appropriately incentivizes “innovation” and supports programs based on institutional goals

• Separate licensing personnel and offices for utility patents and plant varieties allows better focus on the specific needs of each program• Most utility patents are licensed exclusively and generally there are no state or

constituency group issues• Most licenses of plant varieties are either non-exclusive or exclusive with

expectation of extensive sub-licensing. Additionally, state grower and commodity groups may impact the process and terms


Comparison of Royalty Distribution Schemes

Assuming Net License/Royalty Income of $250,000

UFRF FFSP

Inventor(s) $100,000 $50,000

DSO $87,500 $25,000

Breeding Program $25,000 $93,330

Experiment Station $18,750 $40,830

Department $18,750 $40,830


Bridging the Technology GapBridging the Technology Gap• Start-ups are often the most appropriate (only)

vehicle to bridge the technology gap• And Gap Funds are often the only way to get

the Start-up Started!


Critical Elements of Technology-BasedEconomic Development

• Strong, diverse research programs• Technology transfer expertise• Business start-up facilities and parks• Capital• Management


• UF Tech Connect program fosters new business creation at UF

• Match researchers with potential management • Assist in business plan creation and market feasibility

studies• Provide training for “wanna be” entrepreneurs• Introduce funding opportunities through VC &

angel network introductions• Measured base on jobs & private investment

Critical Element - Technology Transfer Expertise


Critical Elements – FacilitiesIncubators for Spin-offs

Critical Elements – FacilitiesIncubators for Spin-offs

Biotechnology Development Institute - Opened 1995• 35,000 sq. ft.; 19 labs, 13 offices• Small and large animal facilities• 31 companies admitted • $42M in equity investment• $15M in grant awards• 680+ job-years created


Creating An Innovation Ecosystem

David L. DayDirector, Office of Technology Licensing

Close to UFHome to 4,000 faculty who, pulling from a pool of 50,000 talented students, conduct $680 million in research and disclose 300 new discoveries annually


• Serial Entrepreneur Focus/Gator Alums– Work closely with foundation

• Tap Venture Capital and Angel contacts for referrals• UF OTL funds Proof-of-Principle experiments to

make technologies attractive• Pay entrepreneurs to write business plans• Host series of meetings – UF Tech Showcase

Critical Element - Management


Venture Capital& Public Equity

Where We Fit

Valley of DeathGrants &Sponsored Research

Basic Research,Discovery

FeasibilityStudy

EngineeringModel

Product Design

Product Development Regulatory

Manufacturing

DistributionChannels

Market Roll-out

Commercialization

Bankhead – Coley& King Grants

FloridaInstitute

Seed Funds

Florida Opportunity Fund

Florida Growth FundGap Funds

GrowFL


Gatorade is most well-known product from UF

Gatorade has maintained 80%market share throughout the betterpart of the drink’s existence


Igniting Florida’s Innovation Economy

“Innovation is the central issue in economic prosperity” Michael Porter, Author, Professor,

Harvard Business School


Conclusion• Leveraging university research to create

companies that create jobs of the future• Keeping talented workers employed and

retaining them as residents• Reducing the brain drain of our students

26


For more information:

David L. Day, Assistant V.P. and Director

UF Office of

Technology Licensing

(352) 392-8929

[email protected]

research.ufl.edu/otl/

Documents

© 2010 University of Florida University of Florida Office of Technology Licensing Where Science Meets Business