The US Technology Transfer Scene: A view from California

January 10, 2008 JUNBA Summit, Hyatt Santa Clara

The US Technology Transfer Scene:

A view from California


A view from California

William Tucker

Executive Director

Research Administration and Technology Transfer

University of California, Office of the President

William Tucker

Executive Director

Research Administration and Technology Transfer

University of California, Office of the President

UNIVERSITY of CALIFORNIA, OFFICE OF THE PRESIDENTUNIVERSITY of CALIFORNIA, OFFICE OF THE PRESIDENTUNIVERSITY of CALIFORNIA, OFFICE OF THE PRESIDENTUNIVERSITY of CALIFORNIA, OFFICE OF THE PRESIDENT

OFFICE OF TECHNOLOGY TRANSFEROFFICE OF TECHNOLOGY TRANSFEROFFICE OF TECHNOLOGY TRANSFEROFFICE OF TECHNOLOGY TRANSFER

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 2

OutlineOutline

• A few facts about the University of California

• Technology Transfer at UC

– Principles, Policy, Practices

– Licensing Outcomes

• US Technology Transfer Scene– Legislative, Economic Development,

International, Industry-University Relations

• A few facts about the University of California

• Technology Transfer at UC

– Principles, Policy, Practices

– Licensing Outcomes

• US Technology Transfer Scene– Legislative, Economic Development,

International, Industry-University Relations




� 10 campuses, 3 National Labs

� 7,600 faculty (50 Nobel

laureates)� more than 200,000 students

� System-wide policies� Partially decentralized

management, decision-making

� 10 contracts and grants offices

� 10 campus-based compliance offices

� 9 campus-based licensing offices

� Office of the President

� Office of Technology Transfer

� University Counsel

� Treasurer’s Office

� 10 campuses, 3 National Labs

� 7,600 faculty (50 Nobel

laureates)� more than 200,000 students

� System-wide policies� Partially decentralized

management, decision-making

� 10 contracts and grants offices

� 10 campus-based compliance offices

� 9 campus-based licensing offices

� Office of the President

� Office of Technology Transfer

� University Counsel

� Treasurer’s Office

UC is a large, complex system of campuses

and administrative units

UC is a large, complex system of campuses

and administrative units




UC Technology Transfer is

Decentralized

UC Technology Transfer is

Decentralized

OTT

UCRUCB

UCI

UCM

UCSFUCD

UCSD

UCLA

UCSB

UCSC

• Each campus office reports through is own management structure

• OTT “advises” campuses but can rarely mandate actions

• Each campus office reports through is own management structure

• OTT “advises” campuses but can rarely mandate actions




Decentralized responsibilitiesDecentralized responsibilities

OTT• Policy Oversight,

Guidance and Training

• Legal Oversight and Review

• Information Systems

• Strategic Communications

• Transactional support– Prosecution docketing

– Royalty accounting

OTT• Policy Oversight,

Guidance and Training

• Legal Oversight and Review

• Information Systems

• Strategic Communications

• Transactional support– Prosecution docketing

– Royalty accounting

CAMPUS OFFICES• Case-specific management

of faculty inventions– Disclosure receipt and

evaluation

– Patentability analysis and patent filing/prosecution decisions

– Technology marketing

– License negotiation and drafting

– Post-agreement management

CAMPUS OFFICES• Case-specific management

of faculty inventions– Disclosure receipt and

evaluation

– Patentability analysis and patent filing/prosecution decisions

– Technology marketing

– License negotiation and drafting

– Post-agreement management




Technology Transfer at UC:Principles, Policy and Practices

Technology Transfer at UC:Principles, Policy and Practices

Why do we do Technology Transfer?

• Create public benefit from UC research

• Comply with Bayh-Dole requirements

• Support research partnerships with industry

• Create faculty incentives; recruitment and retention

• Encourage innovation: advancement of science and

technology

• Generate revenue for research and education

• Support economic development

Why do we do Technology Transfer?

• Create public benefit from UC research

• Comply with Bayh-Dole requirements

• Support research partnerships with industry

• Create faculty incentives; recruitment and retention

• Encourage innovation: advancement of science and

technology

• Generate revenue for research and education

• Support economic development




The University’s “Principles”The University’s “Principles”

• UC adheres to 8 fundamental principles, without

exception

• Applies to (i) all agreements that address future research

results; (ii) all relationships with all external parties

• UC adheres to 8 fundamental principles, without

exception

• Applies to (i) all agreements that address future research

results; (ii) all relationships with all external parties

1) Open Dissemination

2) Commitment to

Students

3) Accessibility for

Research Purposes

4) Public Benefit

1) Open Dissemination

2) Commitment to

Students

3) Accessibility for

Research Purposes

4) Public Benefit

5) Informed Participation

6) Legal Integrity and Consistency

7) Fair Consideration for Commercial Use

8) Objective Decision Making

5) Informed Participation

6) Legal Integrity and Consistency

7) Fair Consideration for Commercial Use

8) Objective Decision Making




UC Patent Policy – Key Elements UC Patent Policy – Key Elements

• Mandatory patent

agreement

• Mandatory disclosure of

all inventions

• Assignment to UC of

inventions created:�Through use of contract,

grant or gift funds

�Through use of UC research facilities

�Within scope of employment

• Mandatory patent

agreement

• Mandatory disclosure of

all inventions

• Assignment to UC of

inventions created:�Through use of contract,

grant or gift funds

�Through use of UC research facilities

�Within scope of employment

• Distribution of net royalties�35% - inventors

�15% - research on campus/Lab

• Can release to inventor� If UC elects not to file

patent application

�…and there are no conflicting obligations

� Inventor cannot continue to develop invention using UC resources

�UC retains the right to use the invention

• Distribution of net royalties�35% - inventors

�15% - research on campus/Lab

• Can release to inventor� If UC elects not to file

patent application

�…and there are no conflicting obligations

� Inventor cannot continue to develop invention using UC resources

�UC retains the right to use the invention




UC Licensing Guidelines – Key ElementsUC Licensing Guidelines – Key Elements

• Primary objective is public benefit

• Licensee must be capable of bringing to market

• License should include diligence terms

• University should receive fair consideration

• License should support academic principles

• Legal integrity and consistency

• Licensing decisions based on institutional and business concerns, not personal financial gain

• Primary objective is public benefit

• Licensee must be capable of bringing to market

• License should include diligence terms

• University should receive fair consideration

• License should support academic principles

• Legal integrity and consistency

• Licensing decisions based on institutional and business concerns, not personal financial gain




“Nine Points to Consider”“Nine Points to Consider”

• Reservation of research

rights

• Exclusive licenses

should encourage

technology use

• Minimize licensing

“future improvements”

• Manage Conflict of

Interest

• Reservation of research

rights

• Exclusive licenses

should encourage

technology use

• Minimize licensing

“future improvements”

• Manage Conflict of

Interest

• Ensure broad access to

research tools

• Carefully consider

litigation

• Be mindful of export

regulations

• Beware of Trolls

• Consider “humanitarian

use” language

• Ensure broad access to

research tools

• Carefully consider

litigation

• Be mindful of export

regulations

• Beware of Trolls

• Consider “humanitarian

use” language




100 patentapplications filed300 inventions rejected

34 licenses generateslicense issue fees

16 licensesgenerate royalties

15 licenses generate < $1M

1 license generates > $1M

50 inventions not licensed 50 inventions licensed

The Pyramid of DisappointmentThe Pyramid of Disappointment

400 inventions disclosed




FY 07 Tech Transfer HighlightsFY 07 Tech Transfer Highlights

• 1399 Inventions reported

• 317 US, 393 Foreign Patents issued

• 214 Utility Licenses/Options issued

• 8821 Active inventions

• 1586 Inventions with royalties or fees

• 1378 Active utility licenses/options

• >7000 Active US and Foreign patents

• $118.5 Million Licensing Revenue

• 1399 Inventions reported

• 317 US, 393 Foreign Patents issued

• 214 Utility Licenses/Options issued

• 8821 Active inventions

• 1586 Inventions with royalties or fees

• 1378 Active utility licenses/options

• >7000 Active US and Foreign patents

• $118.5 Million Licensing Revenue




Significant Results of UC’s

Licensing Program

Significant Results of UC’s

Licensing Program• More than 300 startups founded on UC technology

• Over 800 products on the market

• Top 10 revenue earning licenses (FY 2007)– (top 5 generate 50% of all revenue)

• More than 300 startups founded on UC technology

• Over 800 products on the market

• Top 10 revenue earning licenses (FY 2007)– (top 5 generate 50% of all revenue)

1. Hepatitis B Vaccine (1981)

2. Treatment for intracranial

aneurysms (1989)

3. Laser cooling device for

dermatology (1993)

4. Interstitial cystitis therapy (1980)

5. Egf Receptor Antibodies (1983)

1. Hepatitis B Vaccine (1981)

2. Treatment for intracranial

aneurysms (1989)

3. Laser cooling device for

dermatology (1993)

4. Interstitial cystitis therapy (1980)

5. Egf Receptor Antibodies (1983)

6. Biodegradable implant coils

(1998)

7. Camarosa Strawberry (1992)

8. Cochlear Implants (1979)

9. Firefly luciferase (1984)

10. Chromosome painting/FISH

(1985)

6. Biodegradable implant coils

(1998)

7. Camarosa Strawberry (1992)

8. Cochlear Implants (1979)

9. Firefly luciferase (1984)

10. Chromosome painting/FISH

(1985)





Changes and Challenges


Changes and Challenges• Federal Laws and Regulations

– Patents, USPTO and Bayh-Dole

– Export control and Tax Act

• Economic Development Initiatives

– Value creation; gap funding; seed investment

• University-Industry Relationships– Sponsored research and IP management

• International issues

– Trade agreements etc.

• Federal Laws and Regulations– Patents, USPTO and Bayh-Dole

– Export control and Tax Act

• Economic Development Initiatives

– Value creation; gap funding; seed investment

• University-Industry Relationships– Sponsored research and IP management

• International issues

– Trade agreements etc.




Economic Development InitiativesEconomic Development Initiatives

• Move from tacit to explicit role for

universities in ED activities

• Expectations from local governments for

quantitative benefits from university

research

• State, and local programs to support ED

– TX, MD, CA

• Move from tacit to explicit role for

universities in ED activities

• Expectations from local governments for

quantitative benefits from university

research

• State, and local programs to support ED

– TX, MD, CA




Start-up/Spin-out companies

• Recognition of the university role in start-ups.

• Develop stronger connections to early stage

investors through outreach events

– Traditional Venture Capital

– Angel investors

– University Angel groups

– University-based seed/venture funds

Start-up/Spin-out companies

• Recognition of the university role in start-ups.

• Develop stronger connections to early stage

investors through outreach events

– Traditional Venture Capital

– Angel investors

– University Angel groups

– University-based seed/venture funds





Enhancing entrepreneurship• Formal graduate programs (MBA etc)

• “On the job” training for faculty, post-docs and graduate students– UCD Green Entrepreneurship Institute

– Von Liebig Center for Entrepreneurship

• Business plan competitions– “Big Bang” (UCD)

• CONNECT programs

Enhancing entrepreneurship• Formal graduate programs (MBA etc)

• “On the job” training for faculty, post-docs and graduate students– UCD Green Entrepreneurship Institute

– Von Liebig Center for Entrepreneurship

• Business plan competitions– “Big Bang” (UCD)

• CONNECT programs





University-Industry RelationshipsUniversity-Industry Relationships

• Increasing pressure from some industry

segments on university tech transfer

– “The Greedy University” or…

“The Kept University”

• Initiatives to “streamline” university tech

transfer practices

– GUIRR/UIDP

• AUTM’s “A Better World” Project

• Increasing pressure from some industry

segments on university tech transfer

– “The Greedy University” or…

“The Kept University”

• Initiatives to “streamline” university tech

transfer practices

– GUIRR/UIDP

• AUTM’s “A Better World” Project




International IssuesInternational Issues

• Humanitarian access to essential medicine/

technologies

– BMGF funding

– PIPRA initiative for agricultural technologies

• Genetic Resources/Traditional Knowledge

– Subject of international trade negotiations

– Potential to impact patent rights

• Humanitarian access to essential medicine/

technologies

– BMGF funding

– PIPRA initiative for agricultural technologies

• Genetic Resources/Traditional Knowledge

– Subject of international trade negotiations

– Potential to impact patent rights

January 10, 2008 JUNBA Summit, Hyatt Santa Clara

Thank you for your

attentionあなたの注意をありがとう

Thank you for your

attentionあなたの注意をありがとう

More information available at www.ucop.edu/ott/More information available at www.ucop.edu/ott/

Documents

The US Technology Transfer Scene: A view from California