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Executive Director, James G. Baxendale, MS, MBAExecutive Director, James G. Baxendale, MS, MBA
SOM KUMC March 30, 2009SOM KUMC March 30, 2009
A New Model A New Model for Technology Commercialization for Technology Commercialization
at The Universityat The University of Kansas of Kansas
KU Center for Technology Commercialization (KUCTC)KU Center for Technology Commercialization (KUCTC)
2
Why Combine Tech Transfer Offices?Why Combine Tech Transfer Offices?
• Unify and standardize tech transfer processes and policies across the University
• Leverage best practices of both organizations
• Coordinate interactions with business, economic development and government leaders
• Reduce duplication of resources and better leverage resources
• Support research collaboration across campuses
• Create additional funds for investment in university research and graduate education initiatives
3
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
4
KUCTC: Mission StatementKUCTC: Mission Statement
Mission: To maximize the impact of University intellectual property for the benefit of the University and society
5
KUCTC: GoalsKUCTC: Goals
• Ensure public benefit through commercialization of inventions created at KU
• Ensure inventor satisfaction with technology commercialization process
• Enhance recruitment and retention of faculty, staff and students by providing top quality technology commercialization services
• Provide educational opportunities for students, staff and faculty about the commercialization of intellectual property
• Participate in regional and state economic development
• Facilitate collaborative research projects
• Generate revenue to support research and graduate education
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KUCTC: Board Structure KUCTC: Board Structure andand CompositionComposition
• Establish overlapping board from functional RI and KUCR Boards» Chair of the Board = Provost
» Membership includes:• KUMC Vice Chancellor for Research and the KU Vice
Provost for Research and Graduate Studies
• Representation from business people on RI and KUCR boards
» Bi-campus faculty representation» Bi-campus community representation
7
KUCTC: Reporting StructureKUCTC: Reporting Structure
• Executive Director reports to Provost who is responsible for KU technology commercialization
• Operational reporting to KUMC Vice Chancellor for Research and KU Vice Provost for Research and Graduate Studies
• Licensing Associates & Licensing Assistants» Report to Executive Director
» Co-located on both campuses
» Deployed across campuses as needed
• Interns and Externs on both campuses
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Technology Commercialization Technology Commercialization ProcessProcess
• 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
10
Functions of Technology Functions of Technology
CommercializationCommercialization • 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
11
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
12
Current StatisticsCurrent Statistics
• 640+ faculty/staff/students participated in invention disclosures during past 10 years
• Cumulative revenue of over $16Min the last 10 years
• 19 active equity positions
• 20 active start-up companies
• 92 licenses signed during past 10 years, 32 with Kansas-based companies
• 60-80 annual invention disclosures on average
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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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Active Start-Up CompaniesActive Start-Up Companies
• Cadstone – Electronic design automation development tools
• Computerized Assessment and Learning – Online testing program
• Crititech – Particle-size reduction techniques for pharmaceuticals
• CyDex – Compounds that improve drug solubility
• DAR Corporation – Aeronautical design software
• e-Learning Creations – On-line certification for K-12 special education
• Flint Hills Scientific – Automated seizure detection and prediction
• Immunogenetix Therapeutics – Prevention / treatment of HIV infection
• ImmuPep – Modulating the immune and inflammatory responses to treat disorders of the immune response
• Institute for Community Health & Development – Internet-based community development tool
1515
Active Start-ups Companies (Cont…)Active Start-ups Companies (Cont…)
• NephroGenex – Treatment of end stage renal disease
• Relive for Kids – Educational software to assist children in managing severe headaches
• Savara Pharmaceuticals – Platform technology with broad applications in respiratory medicine, vaccines and other therapeutics
• TerraMetrics – Large scale agricultural remote sensing research
• TVAX BioMedical – Method for mobilizing the human immune system to kill cancer cells and reject growing cancers
• XenoTech – Develop pre-clinical drug safety information (recently acquired by Sekisui Chemical Group)
• KCBioMedix – Neonatal medical device
• Kansas Analytical Systems – Compound analysis by nuclear magnetic resonance imaging
• Arcademia – Educational software games
• Neo Abacus – Software for tagging SEC financial reports
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Nursing – Videotapes for addressing congestive heart failure rehabChemistry – 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 – Energy-efficient wall panel
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 coatingsMedicine – Software algorithm to predict epileptic seizuresOccupational Therapy – Stroke rehab device
Breadth of Invention DisclosuresBreadth of Invention Disclosures
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Examples of Marketplace ProductsExamples of Marketplace ProductsAbilify – antipsychotic drug
CAL – Online testing/ assessments for teaching/ learning processes
Captisol – improves solubility
Cerebyx – antiseizure drug
Community Tool Box – Internet based community development tool
Distance Education – modules for special education certification
Dual Diagnosis – training videos
Force Plate Actimeter – records/ scores finer scale movement/ activities
Geodon – antiseizure drug
Hot Tip Catheter – device for sleep apnea, GERD, tissue ablation, etc.Implantable Glutamate Biosensor – enzyme based sensor for glutamate
N-trainer System – teaches feeding in premature infants
Profusion – Internet meta search engine
QuizStar – software teaching tool
Stroke Impact Scale – measure stroke rehab progress
Swept-Step Radar – detection/range determination device
Vfend – antifungal drug
VidWatch – broadcast monitoring software
1818
Educational InitiativesEducational Initiatives
• Co-hosted two (2) National Collegiate Innovators and Inventors Alliance (NCIIA) seminar events
• Technologies are supplied for Business Plan competitions to KU and UMKC Schools of Business
• Full year law externships for KU and UMKC law students
• KUCTC/OTDD Translational Research symposium• Undergraduate and Graduate Engineering student
IP presentations• Teacher Tech 2008 internship, Uplink/Ewing Marion
Kauffman Foundation• Global Entrepreneurship Week, Ewing Marion
Kauffman Foundation• Technology showcases and IP/Commercialization
seminars
1919
OutreachOutreach
• KC 2009 Year of Innovation Steering Committee• Student inventions i.e. graphic design• External entrepreneurs i.e. Kansas State Trooper• Science Pioneers Fair, Kansas City, MO; Oct. 25,
2008• Tomahawk Elementary School, Overland Park, KS;
Nov. 17, 2008• Children’s Mercy Hospital Tech Transfer Director
Search Committee• NSF Partnerships in Innovation Grant participant
20
Protecting Intellectual PropertyProtecting Intellectual Property
• Patents
• Copyrights
• Trademarks
• Trade Secrets under CDA’s (NDA’s)
21
What is Patentable?What is Patentable?
• Products • Processes• Plants• Designs• Applications not just ideas
22
Patent BasicsPatent Basics
• Demonstrate novel
• Demonstrate utility
• Demonstrate nonobviousness
• Prevent others from making, using and selling invention
• Costs
23
Patent ProcessPatent Process
• Original and authentic inventor
• Duty of candor
• Enabling disclosure
• Specifications
• Claims
• Response to rejection
24
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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CopyrightCopyright
• Protect the work not the ideas• Ownership i.e.; work for hire,
payment • Licensable as intellectual property• Length of protection • Original works of art, manuscripts,
etc.• KU property, within scope, except
scholarly works
26
Copyright (2)Copyright (2)
• Informs the public that works are copyrighted
• Identifies the copyright owner• Determines the date work was published• Emblem C, the letter C in a circle, the word
Copyright or “Copr.” followed by the date and name of owner
• Omission of notice:» a. Cured if registration obtained within 5
years» b. Affix notice to remaining copies
27
TrademarksTrademarks
• Common Law Trademark- once a trademark is used in connection with a product so that consumers have come to identify the trademarked goods as originating with the owner.
• Federal Registration» a. gives nationwide notice
» b. after 5 years, subject to cancellation only on limited grounds
» c. filed on the basis of “actual use”
» d. filed on the basis of “intent-to-use”
» e. must have sales in two or more states
28
Trademarks (2)Trademarks (2)
• Colors: red on the heels of shoes, red on bowling pins, pink for Owens-Corning fiberglass
• Pictures and Symbols: Nike “swoosh” and silhouette of Michael Jordan flying through the air
• Numerals and Letters: MG, RCA, CBS, 707, 7-eleven and AAA
• Label and Package Designs: color, shape and design but only those distinctive features which function as an identification of origin may be used as a trademark., i.e. COKE bottle
• Slogans: must be used to associate a particular product with a particular product in the mind of the public
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Jim Baxendale, Executive DirectorJim Baxendale, Executive DirectorKU Center for Technology CommercializationKU Center for Technology Commercialization
Email: Email: [email protected]: Web: www.ctc.ku.edu
Lawrence campus:
Youngberg Hall
2385 Irving Hill Rd.
Lawrence, KS 66045
Tele: 785/864-7783
Fax: 785/864-5272
Medical Center campus:
Wescoe Pavilion, M.S. 1039
3901 Rainbow Blvd.
Kansas City, KS 66160
Tele: 913/588-5439
Fax: 913/588-8214