Campus-Wide Business Managers Meeting

Thursday August 19th, 2010

Richard Magid, Vice President

The Role of UTRF

Our Mission• Protect, manage and commercialize UT inventions• Support the UT research enterprise• Develop and support an entrepreneurial culture• Contribute to state and regional economic development

Our goal is to find partners for all viable inventions• A partner strongly committed to turning the invention into a

marketed product.• A partner with the financial and personnel resources to develop,

manufacture, and sell the product.• A partner who is willing to pay the university a fair price for the

invention.

UTRF Services

• Technology evaluation (formal and informal)• Patent prosecution• Licensing agreements (startups and others)• Register copyrights or trademarks• Material transfer agreements• Sponsored research agreements• Royalty collection and distributions• Confidentiality Agreements• Entrepreneurship education• Annual maturation grant competition

How is UTRF Doing?

In FY2009:

3 new start-up companies

12 new commercialization agreements

31 new inventions

51 applications filed in U.S. Patent & Trademark Office

26 patents issued

93 Material Transfer Agreements

$1,104,000 in license-related revenues collected

$492,000 distributed to inventors in formula-based revenue sharing

$1,000,000 in industrial research awards via UTRF

$388,000 invested to perfect intellectual property rights

$75,000 invested in technology development

$3.02 ROI to UTHSC on each dollar allocated to UTRF$3.02 ROI to UTHSC on each dollar allocated to UTRF

What is an invention?

• Research tool• New drug• New treatment using existing drugs• Medical device• Biomarker• Diagnostic test

Each of these will have a different value, but they all can be commercialized.

Almost anything can be an invention.Almost anything can be an invention.

Working with UTRF

• Prepare Invention Disclosure (http://utrf.tennessee.edu or contact UTRF)Prepare Invention Disclosure (http://utrf.tennessee.edu or contact UTRF)

• Submit disclosure to Research AdministrationSubmit disclosure to Research Administration

• Prepare Invention Disclosure (http://utrf.tennessee.edu or contact UTRF)Prepare Invention Disclosure (http://utrf.tennessee.edu or contact UTRF)

• Submit disclosure to Research AdministrationSubmit disclosure to Research AdministrationInventor

• Disclosure evaluated for conflicts or sponsor obligationsDisclosure evaluated for conflicts or sponsor obligations

• Invention assigned to UTRF for commercializationInvention assigned to UTRF for commercialization

• Disclosure evaluated for conflicts or sponsor obligationsDisclosure evaluated for conflicts or sponsor obligations

• Invention assigned to UTRF for commercializationInvention assigned to UTRF for commercializationUTHSC

• Disclosure evaluationDisclosure evaluation

- Assigned to case manager who talks to PI, studies inventionAssigned to case manager who talks to PI, studies invention

- Assessed for novelty, protectability, and commercial potentialAssessed for novelty, protectability, and commercial potential

- Go/no-go decision made and communicated back to inventorGo/no-go decision made and communicated back to inventor

• Patent attorney selected to draft patent applicationPatent attorney selected to draft patent application

• Manager prepares marketing material (with input from PI) and starts Manager prepares marketing material (with input from PI) and starts marketing the technology to potential licenseesmarketing the technology to potential licensees

• License is negotiatedLicense is negotiated

• Active licenses are monitored to assure compliance by licenseeActive licenses are monitored to assure compliance by licensee

• Disclosure evaluationDisclosure evaluation

- Assigned to case manager who talks to PI, studies inventionAssigned to case manager who talks to PI, studies invention

- Assessed for novelty, protectability, and commercial potentialAssessed for novelty, protectability, and commercial potential

- Go/no-go decision made and communicated back to inventorGo/no-go decision made and communicated back to inventor

• Patent attorney selected to draft patent applicationPatent attorney selected to draft patent application

• Manager prepares marketing material (with input from PI) and starts Manager prepares marketing material (with input from PI) and starts marketing the technology to potential licenseesmarketing the technology to potential licensees

• License is negotiatedLicense is negotiated

• Active licenses are monitored to assure compliance by licenseeActive licenses are monitored to assure compliance by licensee

UTRF

UTRF Evaluation Criteria

Technical Merit•What data is there on the invention?

•Is there a prototype?

•Is the invention in a “Hot” area?

•Is this a core or platform technology, or is it an incremental advance?

Protectability•Prior public disclosure?

•Extent of prior art?

•Could infringement be detected?

•Would there be freedom to operate?

•How broad could a patent be?

Commercial Potential•Is there a clear product?

•Does it solve a significant problem?

•Will the customer pay for it?

•What is the market size?

•What are competitive products?

•Who are likely licensees?

•What are legal and regulatory barriers?

Inventor•What industry relationships does the

inventor have?

•What is the funding status for further research on the invention?

•Has UTRF worked with the inventor before? If so, what was the outcome?

•What does the inventor want?

Average Life of a Technology

Invention Disclosure

Provisional patent application

License / 1st Revenue

Full patent application

•Not novel•Small market•Low need

•Prior art•Low interest

Fallout Reason

•New data

(UTRF Data)

9 months

Average Time

1 month

15 months

30 months•Market rejection•Development failure

Royalty Sharing

UTRF covers all expenses (patents, legal fees, marketing) and no money is ever asked of the inventor or the originating unit.

Revenue* Inventor UTHSC Department UTRF

1st $5000 100% 0% 0% 0%

$5K-$1M 40% 15% 15% 30%

$1M+ 35% 20% 20% 25%

** The inventor receives 100% of the first $5000 of gross revenue, but all other The inventor receives 100% of the first $5000 of gross revenue, but all other distributions refer to net revenue (i.e., after UTRF expenses are subtracted).distributions refer to net revenue (i.e., after UTRF expenses are subtracted).

UTRF: HSC Office

Executive Committee– Dick Gourley (Chair)

– Larry Pfeffer (Faculty)

– David Stevens (External)

– Frank Chan (External)

– Karl Schledwitz (Trustee)

Executive Committee– Dick Gourley (Chair)

– Larry Pfeffer (Faculty)

– David Stevens (External)

– Frank Chan (External)

– Karl Schledwitz (Trustee)

Advisory Board– Bernd Meibohm (Pharm)

– Audrey Zucker-Levin (Allied HS)

– Steve Bares (Memphis Bioworks)

– Franklin Garcia-Godoy (Dentistry)

– Mona Wicks (Nursing)

– Darryl Quarles (Medicine)

Advisory Board– Bernd Meibohm (Pharm)

– Audrey Zucker-Levin (Allied HS)

– Steve Bares (Memphis Bioworks)

– Franklin Garcia-Godoy (Dentistry)

– Mona Wicks (Nursing)

– Darryl Quarles (Medicine)

Vice President – Richard MagidVice President – Richard Magid

UTRF Staff– Lakita Cavin (staff attorney/licensing)

– Janet Ralbovsky (licensing associate)

– Marcia Phillips (office administrator)

– Joy Fisher (marketing)

UTRF Staff– Lakita Cavin (staff attorney/licensing)

– Janet Ralbovsky (licensing associate)

– Marcia Phillips (office administrator)

– Joy Fisher (marketing)

Contacts

Richard Magid, Ph.D. rmagid1@uthsc.edux8-1562

Lakita Cavin, J.D., Ph.D.lcavin@uthsc.edux8-7827

Janet Ralbovsky, Ph.D.jralbovs@uthsc.edux8-1146

Office:910 Madison, Suite 827x8-7825

http://utrf.tennessee.edu