James BaxendaleExecutive Director

IGERT

April 15, 2010

KU Center for KU Center for Technology CommercializationTechnology Commercialization““Promoting Innovation to Benefit Society”Promoting Innovation to Benefit Society”

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What Is Technology What Is Technology Commercialization?Commercialization?

the transferal of university research discoveries

and innovations to the commercial sector

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Bayh-Dole Act, 1980Bayh-Dole Act, 1980The Incentive for Technology CommercializationThe Incentive for Technology Commercialization

• University may retain title - Universities may elect to retain title to innovations developed under federally funded research programs

• Commercial collaboration encouraged - Universities are encouraged to collaborate with commercial concerns to promote the utilization of inventions arising from federal funding.

• Patent expectations - Universities are expected to file patents on inventions they elect to own.

• Small business preference - Universities are expected to give licensing preference to small businesses.

• Government rights - The government retains a nonexclusive license to practice the patent throughout the world and the government retains march-in rights.

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What is the KUCTC?What is the KUCTC?

• The new technology commercialization entity for all KU campuses

• A separate 501(c)(3) non-profit organization• Jointly controlled by the KU Center for Research and

the KU Medical Center Research Institute• Has its own Board with the Provost as the Chair• Thirteen members on the Board consisting of

University administration, KUMC and Lawrence faculty, and Lawrence and Kansas City community leaders

• Offices on the Lawrence and KUMC campuses• Executive Director and Licensing Associates travel to

both campuses• Has its own corporate counsel

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Functions of Technology CommercializationFunctions of Technology Commercialization

• Ensure public benefit from KU research through commercialization of inventions created at KU

• Negotiate various contracts/agreements

• Promote collaborative research

• Facilitate the protection of intellectual property

• Educate faculty and students in intellectual property

• Assist with retaining and recruiting faculty

• Generate revenue to support research and graduate education

• Participate in regional and state economic development

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National Activity, FY National Activity, FY 20062006

• $45 billion industry sponsored academic R&D

• 18,874 new inventions disclosed

• 11,622 new U.S. patent applications filed

• 3,255 new U.S. patents issued

• 4,963 new licenses signed

• 64.1% new licenses with start-ups and small companies

• 553 new start-ups launched

• 697 new products introduced to market from active licenses

Source: Association of University Technology Managers 2006 Survey Report

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More Funding

More Researc

h

More Invention

s

More License

s

More Dollars

Source: Martha Luehrman, Massachusetts Institute of Technology, Source: Martha Luehrman, Massachusetts Institute of Technology, September, 1998September, 1998

…is the volume of research funding,

since the greater the funding, the greater number of

researchers and research projects, the greater the number of

disclosures, the greater number of patents, and the greater

number of licenses…

…and eventually the greater the number of dollars.”

“The strongest predictor of success…

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Tech Transfer WebsiteTech Transfer Website

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KUCTC Informational GuidesKUCTC Informational Guides

Doing Business with KU

Creating a Company

Start-up Company Checklist

Guide for the Inventor

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Kansas Board of RegentsKansas Board of RegentsIntellectual Property PoliciesIntellectual Property Policies

Board of Regents set policy November, 1998

Minimum 25% of revenue to inventors, after direct costs recouped

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Kansas University Kansas University Intellectual Property PolicyIntellectual Property Policy

Royalty Royalty After Deducting After Deducting

Direct CostsDirect Costs

1/31/3rdrd to Inventor(s) to Inventor(s)1/31/3rdrd to Inventor(s) to Inventor(s)

DepartmentDepartment1/31/3rdrd to KU Provost to KU Provost

1/31/3rdrd to to Inventor(s) Inventor(s)

Research AccountResearch Account

2/32/3rdrd to to Department FundsDepartment Funds

12New Industries, New MarketsNew Industries, New Markets

Funding:Funding:Federal, Industrial, Federal, Industrial,

FoundationFoundationKU Basic ResearchKU Basic Research PublicationsPublications

DissertationsDissertations

KU Center forKU Center forTechnology CommercializationTechnology Commercialization

Potential New Products

& Services Product Development

Research

Proof of Concept

MarketableTechnology

License Technology to…

Royalties, Equity

Reinvest in Research

Start-up CompaniesStart-up CompaniesExisting CompaniesExisting Companies

Jobs, Products, ProfitsJobs, Products, Profits

University

Technology Commercialization CycleTechnology Commercialization Cycle

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Technology Commercialization ActivitiesTechnology Commercialization Activities

Facilitate Proof of Concept Collaborations with Industry

Perform Economic Development Outreach

Assist with Faculty Retention and Recruitment

Market Technologies to Out-license

Coordinate Intellectual Property Protection

Prepare/Negotiate License Agreements

Prepare/Negotiate Option Agreements

Education of Faculty/Staff/Students

Review of Faculty Conflict of Interest Management Plans

Interpret and Assist in the Development of IP Policy

Consult on IP Clauses in Research Agreements

Facilitate Invention Disclosure Meetings and Assess Technology

for Commercial Potential

Review Start-up Company Business Plans Promote

Entrepreneurship Across Campus

Prepare/Negotiate Material Transfer Agreements

Prepare/NegotiateInter-Institutional Agreements

Prepare Internal Royalty Distribution MOU

Prepare/Negotiate Company Formation Documents and Securities Agreements

Diligence Review of Licensees

Public Education and Relations

Prepare/Negotiate

Term Sheets

Prepare/Negotiate Confidentiality Agreements

09/08

Assist with Development of Consortia Agreements

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Technology Commercialization ProcessTechnology Commercialization Process

• Disclosure of invention

• Initial evaluation and market research

• Patentability Search

• Commercialization strategy

• File patent/copyright/trademark

• Potential enhancement of technology

• Material Transfer/Research Agreements

• Out licensing or Company spin-off

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KU Campuses Current StatisticsKU Campuses Current Statistics

• 640+ faculty/staff/students participated in invention disclosures during past 10 years

• Cumulative revenue of over $16M in the last 10 years

• 20 active equity positions• 21 active start-up companies• 91 licenses signed during past 10 years, 31 with

Kansas-based companies• 70-80 annual invention disclosures on average

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Breadth of Invention DisclosuresBreadth of Invention Disclosures• Nursing – Videotapes for addressing congestive heart failure• Chemistry – Compounds as anti-cancer drugs, glucose sensor• Business – Software to tag financial data for customized reports• Journalism – Software and web design for presenting the news• Education – Distance education modules, software tools for teachers• Biodiversity Resource Center – Predictive software for invasive species• Civil Engineering – Biodiesel Production• Life Span Institute – Medical devices for premature infants• Mechanical Engineering – Synthetic functional spine• Aerospace Engineering – Fiber design software, UAV• ITTC – Communication system for remote regions, RFID• Higuchi Biosciences Center – Inhalation drug delivery technique• Architecture – Copyrighted building plans• Physics – Instrumentation to detect defects in semiconductor coatings• Medicine – Software algorithm to predict epileptic seizures• Occupational Therapy – Stroke rehabilitation device• Physics – Cartoon characters and website for teaching science to children• Business – Software to tag financial data for customized report• Civil and Environmental Engineering – New antibiotic compound• Chemical & Petroleum Engineering- nanoparticles used for O2

separation and storage

KU Products in the Marketplace

• Bioreversible derivatives to overcome limitations of parent drugs• Software enables broadcasters to detect local commercial

insertions by cable operators and gather valuable marketing information

• Technology to help newborns get to oral feeds sooner • Testing, assessments and psychometric applications for schools • Technique for examining metabolism of drugs, adverse drug-drug

interactions.• Online instructional and learning tools• Compound enhances water solubility and effectiveness of drugs• Environmental and agricultural applications of remote sensing

technology• Signal Analysis for Seizure Detection and Prediction• Curriculum for community health and development

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StakeholdersStakeholders

KUCTCKUCTC

KUResearchers KU Designated

Research Centers

KU Leadership

Law Firms

PartnerUniversities

Chambers ofCommerce

KTECNetwork

Enterprise Corporationof Johnson County

Kansas City AreaLife Sciences Institute

VentureCapitalFirms

AngelInvestors

Lawrence Life Sciences Center

Local Entrepreneur

s

Industry/Gov’t. Contracting

Existing Companies World-wide

KU Start-up

Companies

Lawrence Regional

Technology Corp.

KU Small Business Development

Center

Kansas City Area

Development Council

KC SourceLink

KauffmanFoundatio

n9/08

Kansas Bio-Science Authority

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MarketingMarketing

• Faculty/Staff member is often a good resource• Database searches, associations lists, conventions,

publications and personal networking • Non-confidential disclosures• Confidential disclosures• Corporate Partner for licensing and/or additional

funding

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Protecting Intellectual Property Protecting Intellectual Property

•Patents

•Copyrights

•Trademarks

•Trade Secrets

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What is Patentable?What is Patentable?

•Products

•Processes

•Plants

•Designs

• Ideas vs. Application

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Lab Books/Inventor RecordsLab Books/Inventor Records

• Keep complete, detailed recordsKeep complete, detailed records

first idea through commercial products

• Describe the invention clearly-Describe the invention clearly-

words, photos, graphs, drawings, etc.

• Explain operation or use fully Explain operation or use fully

• Witnessed Witnessed by trustworthy colleague “Read

and understood by…”

• Dates noted, signed in inkDates noted, signed in ink

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Patent BasicsPatent Basics

• Demonstrate novelty

• Demonstrate utility

• Demonstrate non-obviousness

• Prevent others from making, using and selling invention

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Patent ProcessPatent Process

• Original and authentic inventor

• Duty of candor

• Enabling disclosure

• Specifications

• Claims

• Response to rejection

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Universities create start-ups to…Universities create start-ups to…

• Develop platform technologiesDevelop platform technologies and revolutionary discoveries in an entrepreneurial environment

• Promote local economic growthPromote local economic growth (jobs)

• Further research on discoveriesFurther research on discoveries too embryonic to be of interest to large companies (risk-reward)

• Generate a quicker financial returnGenerate a quicker financial return (equity liquidation before royalties flow)

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Issues for KU Start-upsIssues for KU Start-ups

• Management

• Capitalization

• Market

• Product/Services

• KU Equity/Royalty

• License Agreement

• Business Incubator Needs

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KU Start-up Company ExamplesKU Start-up Company Examples• Savara Pharmaceuticals– Pulmonary drug delivery technology

platform

• Crititech ― Particle-size reduction techniques for pharmaceuticals

• CyDex ― Compounds that improve drug solubility

• Flint Hills Scientific ― Automated seizure detection and prediction

• Immunogenetix Therapeutics ― Prevention / treatment of HIV infection

• Kansas Analytical Services ― Compound analysis by nuclear magnetic resonance

• KC BioMedix ― Neonatal medical devices

• NephroGenex ― Treatment of end stage renal disease (ESRD)

• ProQuest ― Developed prodrugs to reduce delivery barriers

• XenoTech ― Develop pre-clinical safety information

• eLearning Creations ― Interactive online environment for learning

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Entrepreneurship InitiativesEntrepreneurship Initiatives

Law Extern Program

Courses: ME 875,

BUS 895,

Business Plan

Competitions

Invention to VentureWorkshops in technology entrepreneurship

2006, 2007

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KU Center for KU Center for Technology CommercializationTechnology Commercialization

““Promoting Innovation to Benefit Society”Promoting Innovation to Benefit Society”

http://www.ctc.ku.eduhttp://www.ctc.ku.edu