IP Bundling: Establish Effective Partnerships to Increase the Value of Your Innovations Presented...

IP Bundling: Establish Effective Partnerships to Increase the Value of Your Innovations

Presented by: Andrew R.O. Watson, PhD Technology Development Manager Technology Transfer & Business Development

Oregon Health & Science University

July 9, 2009

History of IP Bundling/Patent Pooling

• In 1856 by sewing machine manufacturers– Five manufacturers all accused each other of patent

infringement– They agreed to pool their patents

• Patent pools were also created in the early 20th century in the emerging automotive and aircraft industries– In 1917, two major patent holders for airplanes had effectively

blocked the building of new airplanes– With urging from the U.S. government, the two pooled their

patents

Recent Examples of IP Bundlingfrom University/Government Labs

• The Larta Institute’s Virtual Bundling Agent– Expert panels review the university-submitted technologies and determine

bundles

– 41 bundles assembled comprising 100 different technologies

• New Mexico Technology Research Corridor Collaborative– Involved a variety of organizations in New Mexico

– Joined together in 2003, signed IIA in 2005

– Changed direction shortly after signing IIA and never had any activity in the area of IP bundling

• Inter-University Technology Bundling Project– In 2008, Loma Linda University received a 3-year grant from the National

Science Foundation

– Working closely with the Larta Institute to jointly market their discoveries by bundling related technologies from different universities

The West Coast Licensing Partnership(WCLP)

• A group of institutions willing to group a subset of their technologies for marketing and licensing purposes

• Improve the commercialization and access to proprietary technologies and research tools

• Initiated by Caroline Bruce, former Associate Director at The University of British Columbia's University-Industry Liaison Office

• The WCLP was formed at a satellite meeting of Bio-Partnering North America in Vancouver B.C. in 2006

The Institutions of the WCLP

Technology Focus Areas of the WCLP

• Mouse Models• Biomarkers• Medical Devices• Imaging Technology

Advantages for Institutions and Licensees

• For Institutions:– Added value from the bundle of related technologies over individual

tools and technologies

– Strengthened inter-institutional relationships between member partners

– Increased global access to research tools by promotion of non-exclusive licensing

• For Licensees: – Simple one-stop licensing of technologies from multiple institutions

– Save time and money from negotiating multiple license agreements

– A bundle of complementary technologies

WCLP Governing Documents

• First, the Memorandum of Understanding– Defined the group’s main objectives

• Identify technologies from the institutions for inclusion in bundles

• Catalog these technologies to identify technology categories

• Manage the commercialization of such technologies in a way that both maximizes the commercial value and reduces the transaction costs associated with multiple commercial license agreements

– Implementation of the collaboration, negotiation of inter-institutional agreements, intellectual property rights, administration and confidentiality

WCLP Governing Documents (cont’d)

• Second, the template Inter-Institutional Agreement– Utilized an outside law firm to draft the template IIA– Each institution had the opportunity to provide comments– Template IIA for use with bundles from all technology categories

Items to Consider in the IIA

• All potential bundles• Patented vs. Non-Patented technology• Administration Fees• Different state or government laws for the institutions• Termination (termination by one institution)• Addition/Subtraction of technologies• Revenue sharing

WCLP Governing Documents (cont’d)

• Third, the WCLP Manual– Governance– Membership Structure– Financing– Bundling Process– FAQs

• All documents on a Wiki site and accessible by all member institutions

Host Institution

Carries out the administrative functions for the group– Chairing and organizing group teleconferences– Cataloging new technologies– Updating general WCLP marketing materials– Periodically reviewing cataloged technologies– Recruiting and providing WCLP information to new members– Managing WCLP administrative costs

Identifying Technologies

• Collection of available technologies in the four technology focus areas from all institutions

• The following information was collected:– Institution’s Identification/Disclosure Number– Title and Brief Description/Utility– Patent Status– Names of Inventors/Researchers– Publication References– Licensing Fee (List and Reserved)– Any Third-Party IP

Initial Approach

• Members of the WCLP assembled bundles (mouse models first)– Identified technologies which were complementary to one another– If bundles were extremely large, then sub-bundles were identified

• Example: Neurodegenerative Bundle – Alzheimer’s, Parkinson’s, etc.

• Identification of a “Managing Institution” for each bundle• The Managing Institution proceeded with the IIA and other

management duties (each bundle had its own IIA)– Marketing of the bundle– Licensing of the bundle

Finding Licensees/Marketing

• Utilization of Flintbox®

• For Mouse Model Bundles – The Jackson Laboratory• Word of mouth & targeted marketing

– Conferences, partnering events, etc.

• Websites of all participating institutions• The WCLP website www.westcoastlicensing.com

Feedback from Industry

• Liked the concept, but not the approach– Not what we expected

• Licensees would prefer to put their own bundles together– What if they did not want all technologies in a pre-established

bundle?– What if they want to pick and choose from different pre-

established bundles?– Selection of technologies from mouse models and biomarkers to

make a bundle

What Did Work – What Did Notwith Initial Approach

• Worked– Identification of technologies into specific disease areas– The concept of a single license for technologies from multiple

institutions

• Didn’t Work– Assembling the bundles ourselves (this also took an extensive

amount of time)– Not allowing a prospective licensee to pick and choose

technologies for bundling

Current Approach

• Technologies grouped into broad categories– Mouse Models in Neurology, Oncology etc.

• Modified IIA template– Allows more freedom to add and subtract technologies from the

broad categories

• Licensees have the ability to construct their own bundle– Price will then be set based upon the technologies selected– Still under a single license from the WCLP

Advantages to Current Approach

• Advantages for members of WCLP– Less work involved with constructing bundles on our own– More ease with adding/subtracting technologies– Greater flexibility to license bundles across the technology focus

• Advantages for licensees– Ability to customize their own bundles of interest– Possibility to include technologies from across the technology

focus areas

Current Bundling Efforts

• OHSU – Mouse Models in Neurology, Oncology and Metabolic Disease/Obesity

• Salk – Mouse Models in Cardiovascular Disease• Scripps – Mouse Models in Immunological-Based Disease• UBC – Biomarkers

Challenges of the Partnership

• Turnover of employees• Maintaining up-to-date database of technologies • Time……Time……Time• Keeping it moving forward• Switching gears on how we approached the bundles• Institutional and stakeholder differences• Economic/budgetary issues we are all facing• Will not happen overnight……serious effort is required

by each party involved

Next Challenge - Biomarkers

• What are biomarkers? What do we include as biomarkers?• Tangible versus Intangible assets

– Antibodies, cell lines, plasmids, etc.– Patent rights

• Warehouse/distributor for tangible assets– For mouse models we partnered with The Jackson Laboratory– Initial discussions have taken place with a few companies

Keys to Bundling Success

• Absolutely requires one “Champion” from each partner

• Host Institution is critical to moving the process forward

• Even with a Managing Institution for each bundle, participation from each partner is necessary

• Start small…do not try to bundle everything at once

• Begin with what is the “lowest hanging fruit”

• Involve your researchers early in the process– Explain the bundling process and the advantages

– Resolve any issues well ahead of time

• Keep antitrust issues in mind if bundling may restrict trade, competition or innovation

Future Directions for the WCLP

• Continued work on Animal Model bundles• Bundling for the other technology categories

– Biomarkers – currently underway– Imaging Technology and Medical Devices?

• Self-sustainment– Portion of revenue reserved to fund future interns or a full-time

person devoted to this partnership?• Expansion

Expansion of the WCLP

• Expanding to include universities/academic research institutions in western North America

• If interested, please look over the documents on our website and contact us for further information

• Visit with us at the AUTM Western Regional Meeting– September 13-15, 2009– Vancouver, B.C.

Acknowledgements

• AstraZeneca – sponsoring registration to Bio-Partnering N.A. conferences

• The Canadian Consulate in Seattle and the Canadian Consulate in San Diego – funding for WCLP meetings in Vancouver, B.C. and San Diego

• The Flintbox Innovation Network – technical support for developing the online marketing materials

Thank You

www.westcoastlicensing.com

Andrew R.O. Watson, PhD

Technology Development Manager

Technology Transfer & Business Development

Oregon Health & Science University

Phone: (503) 494-8309

Email: watsonan@ohsu.edu

IP Bundling: Establish Effective Partnerships to Increase the Value of Your Innovations Presented...

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