Introduction to the Introduction to the Offices of Biotechnology & Offices of Biotechnology &

Business DevelopmentBusiness DevelopmentJohn L. HarbJohn L. Harb

Director, Office of BiotechnologyDirector, Office of Biotechnology____________________________________________________________________

October 30, 2008October 30, 2008

Our OfficesOur Offices

The The Office of BiotechnologyOffice of Biotechnology serves as the serves as the

technology transfer officetechnology transfer office

of the College.  The office facilitates of the College.  The office facilitates licensing of College technology to licensing of College technology to

industry and research collaborations industry and research collaborations between industry and faculty. between industry and faculty.

The The Office of Business DevelopmentOffice of Business Development is is focused on capturing and/or developing focused on capturing and/or developing novel or more aggressive novel or more aggressive technology technology

transfertransfer opportunities. opportunities.

““Technology Transfer”Technology Transfer” DefinitionDefinition

““Technology transfer is the process of transferring Technology transfer is the process of transferring scientific findings from one organization to another scientific findings from one organization to another for the purpose of further development and for the purpose of further development and commercialization.” commercialization.”

– – Association of University Technology ManagersAssociation of University Technology Managers

Origin of FieldOrigin of Field Bayh-Dole Act 1980Bayh-Dole Act 1980

Encourages universities to patent and license the Encourages universities to patent and license the results of federally-funded research results of federally-funded research

Universities have rights in intellectual Universities have rights in intellectual property that resulted from federal research property that resulted from federal research fundingfunding

Commercialization of inventions benefit the Commercialization of inventions benefit the public good public good

Royalties are distributed to inventor and Royalties are distributed to inventor and reinvested for education and research reinvested for education and research purposespurposes

University Technology University Technology TransferTransfer

Knowledge TransferKnowledge Transfer Publications & PresentationsPublications & Presentations CollaborationsCollaborations Material TransfersMaterial Transfers Sponsored ResearchSponsored Research ConsultingConsulting InventionsInventions LicensingLicensing

Your ResponsibilitiesYour Responsibilities

Acceptance Agreement Acceptance Agreement Abide by Einstein’s Patent PolicyAbide by Einstein’s Patent Policy Promptly disclose inventionsPromptly disclose inventions Assign ownership rights Assign ownership rights

Third-Party Agreement ObligationsThird-Party Agreement Obligations PublicationsPublications Use of MaterialUse of Material ConfidentialityConfidentiality ReportingReporting

Our ResponsibilitiesOur Responsibilities

Support Einstein faculty Support Einstein faculty researchersresearchers Facilitate technology transfer Facilitate technology transfer

relationshipsrelationships Protect the school and its faculty Protect the school and its faculty

membersmembers

Comply with obligations to Comply with obligations to sponsors and licensing partners sponsors and licensing partners

ServicesServices

Invention DisclosuresInvention Disclosures Patent ManagementPatent Management

LicensingLicensing Material Transfer AgreementsMaterial Transfer Agreements

Agent Reagent ProgramAgent Reagent Program Industry-Sponsored Research Industry-Sponsored Research

AgreementsAgreements Grant required IP management languageGrant required IP management language

Resources and data sharing plansResources and data sharing plans Consulting AgreementsConsulting Agreements

Services (cont’d)Services (cont’d)

Confidentiality AgreementsConfidentiality Agreements Inter-Institutional AgreementsInter-Institutional Agreements Review IP languageReview IP language

Clinical Trial AgreementsClinical Trial Agreements Foundation/Non-Profit GrantsFoundation/Non-Profit Grants

Invention ProcessInvention Process

Invention Disclosure FormInvention Disclosure Form Details of invention and its Details of invention and its

reduction to practicereduction to practice Funding & material sourcesFunding & material sources Upcoming publicationsUpcoming publications Commercial contactsCommercial contacts

Patent CommitteePatent Committee Intellectual Property ProtectionIntellectual Property Protection

Licensing ProcessLicensing Process

Market, market, marketMarket, market, market Business discussions with Business discussions with

commercialization partnerscommercialization partners Confidentiality AgreementConfidentiality Agreement TermsTerms

License AgreementLicense Agreement Royalty is distributed in accordance Royalty is distributed in accordance

with Einstein’s Official Policy on Patents with Einstein’s Official Policy on Patents and Licensing Agreements (“Patent and Licensing Agreements (“Patent Policy”)Policy”)

Patent Policy Patent Policy DistributionDistribution

Net Royalty is distributed as Net Royalty is distributed as follows:follows: 1/3 – Inventors (personally)1/3 – Inventors (personally) 1/3 – Laboratory Research1/3 – Laboratory Research 1/3 – College1/3 – College

Material Transfer Material Transfer ProcessProcess

Various forms Various forms Incoming vs. OutgoingIncoming vs. Outgoing Academic vs. Industry PartnersAcademic vs. Industry Partners Human material?Human material? Hazardous material?Hazardous material?

mta@aecom.yu.edu &mta@aecom.yu.edu &

reagents@aecom.yu.edu reagents@aecom.yu.edu

Research ToolsResearch Tools

Disclose!Disclose! Online, interactive formOnline, interactive form

Review for commercial valueReview for commercial value Market to companies (“Agent Market to companies (“Agent

Reagent”)Reagent”)

High volume transfers High volume transfers repositories (mice, plasmids, etc.)repositories (mice, plasmids, etc.)

Industry-Sponsored Industry-Sponsored ResearchResearch

PI RolePI Role Develop Develop

Research PlanResearch Plan Develop BudgetDevelop Budget

Office RoleOffice Role Review BudgetReview Budget Negotiate Negotiate

AgreementAgreement

Points to remember:Points to remember: Overhead policy is consistent with NIH Overhead policy is consistent with NIH

raterate Involve us in the process early onInvolve us in the process early on Keep science and business separateKeep science and business separate

Hot Topics in Hot Topics in AgreementsAgreements

Publication RightsPublication Rights LiabilityLiability Intellectual Property RightsIntellectual Property Rights ConfidentialityConfidentiality

ConsultingConsulting

PrivatePrivate Agreements Agreements MustMust be approved by: be approved by:

Department Chair Department Chair Dean (Office of Biotechnology)Dean (Office of Biotechnology)

Proposed guidelines and Proposed guidelines and suggestedsuggested languagelanguage Not in place of outside counselNot in place of outside counsel

Clauses of concernClauses of concern ConflictsConflicts

Prior rights & Einstein rightsPrior rights & Einstein rights Time commitmentsTime commitments

LiabilityLiability Distinction from research activitiesDistinction from research activities Student involvementStudent involvement

Office of Biotechnology Office of Biotechnology StaffStaff

John Harb, M.S.P.H.John Harb, M.S.P.H. DirectorDirector Assistant Dean, Scientific OperationsAssistant Dean, Scientific Operations

David Schoenhaut, Ph.D. David Schoenhaut, Ph.D. Assistant DirectorAssistant Director

Benjamin Neymotin, M.A.Benjamin Neymotin, M.A. Contracts and Licensing AssociateContracts and Licensing Associate

Office of Business Office of Business Development StaffDevelopment Staff

Richard Kosman, Sc.M.M. Richard Kosman, Sc.M.M. DirectorDirector

David Silva, Ph.D. David Silva, Ph.D. Senior Business Development Senior Business Development

AnalystAnalyst  

Janis Peck, M.B.A. Janis Peck, M.B.A. Business Development AnalystBusiness Development Analyst

Contact UsContact Us

Website: Website: www.aecom.yu.edu/biotechnologwww.aecom.yu.edu/biotechnologyy Forms & PoliciesForms & Policies News & PublicationsNews & Publications Contact InformationContact Information

Phone: 718-430-3357Phone: 718-430-3357 Office: Belfer Building, Office: Belfer Building, 99thth Floor Floor

Want to learn more about Want to learn more about IP?IP?

Join us…Join us…Tuesday, Tuesday, December 9December 9thth

Same RoomSame RoomDifferent time - Different time - NoonNoon

Guest Speaker - Guest Speaker - Kenneth P. George, PartnerKenneth P. George, Partner

Amster, Rothstein & Ebenstein LLP Amster, Rothstein & Ebenstein LLP (intellectual property law firm) (intellectual property law firm)

““Intellectual Property Overview Intellectual Property Overview for the Academic Researcher”for the Academic Researcher”

Thank YouThank You

Any Questions?Any Questions?