Tech Launch ArizonaTech Transfer ArizonaRakhi Gibbons, Asst. Director for Biomedical and Life Sciences Licensing

• Securing, protecting and licensing Univerity employee created intellectual property (IP)

• Embed network• Many procedural and

process changes

• Business domain experts advise on emerging technologies

• Proof of Concept (POC) and Commercial Feasibility (CFS) Programs

• Build strategic large consequence relationships between the UA and companies

• Promote an infrastructure for such relationships

• Leverage space to help UA research and development thrive

• Specific programs of interaction and company engagement w/ UA

How do companies engage UA?

Engagement Ecosystem

UA FY11 Funding Sources

$611 Million

Academics

• Earn reputation as an individual• Generate knowledge• Give away knowledge• Currency is publications• Publications • Strive for technical elegance• Economic feasibility is rarely

considered• Funding cycle: Semester

Companies

• Built around teams• Generate products• Knowledge is power• Currency is profit• Patents• Technology is table stakes• Economic feasibility is paramount• Quarterly statements, product

lifecycles, manufacturing cycles

Types of Agreements with Industry• Service

• Preforming agreed upon experiments, raw data generation, no analysis

• Sponsored Research • Preforming research based on scope of work

• Collaboration • Jointly applying for grants or subcontracts

• Memorandum of Understanding (MOU)• Establishing the groundwork for future research, typically non-binding

• Material Transfer Agreements• Typically Company provides a drug or compounds for testing

• Licenses• Transferring rights to intellectual property to established company or to new startup

• Options• Limited license to intellectual property for evaluation purposes

Intellectual Property becomes key• UA standard IP clause in sponsored research agreements• Institution owns their inventions• Company owns their inventions• Inventions developed together is owned jointly

• Service Agreements• No IP expected- agree to not file any patents

• Collaboration Agreements• IP clause varies

• Material Transfer Agreements (incoming)• IP clause typically favors the provider

Transfer of Intellectual Property• Option Agreements

• Gives the company an opportunity to evaluate the technology as it stands to date• Does not give the right to practice the technology or to sell products• No promise of future technology

• License Agreements • Can be exclusive or non-exclusive • Gives company the right to use, make, sell and market products• Does not promise future technology and/or improvements• Research contracts can be part of the deal • Consulting contracts • Conflict of Interest can apply in some cases

Focus on Translational Research

• Federal government encourages collaborations with industry• Some grants require industry partners

• NIH/NSF wants to patients and tax payers to benefit from research• Inventions and patent rights allow for more competitive grant proposals• Many proposals now require an Intellectual Property (IP) plan • Economic impact is a consideration

• Industry sponsored grants have an expectation of IP development• Important to protect your background IP • UA wants to double industry sponsored research

Research

Pre-Disclosure

Disclosure

Assessment

Protection

Find or Form a Licensee

Existing Company Marketing Business Planning

Developing the License Components Business Formation

Licensing

Commercialization, Relationships, Revenue, Reinvestment

Find Form

•Written notice of invention to TT•Used for review of protection and commercialization options

Form a Company or Find One

Company develops & sells products

Agreement in which University’s rights are exchanged for financial and other

benefits

Assess commercial potential and protectionIs it Patentable?

What is the Commercial Potential?

File Patent Application…or notFeasibility Studies

&Proof of Concept Tapping the

Commercialization Network

Tapping the Network

UA Tech Commercialization Process

UA is Proactive in working with companies• Arizona Choice – simplifies IP terms and provides certainty

• AC #1: Non-Exclusive-Royalty Free with Exclusive Option (No fees or terms/ Time-limited option to go exclusive on commercially reasonable terms)• AC# 2: Exclusive License-Royalty Free (Up to $25M/ <$25M= 1% Net Sales)• AC# 3: Exclusive License- Royalty Bearing (1.5% of Net Sales)• AC# 4: Assignment of Project IP

Questions?

Tech Launch Arizona Website: http://techlaunch.arizona.edu/

Tech Transfer Arizona Website: http://techtransfer.arizona.edu/

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