2005 - university of california, san diego
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Technology Transfer and Intellectual Property Services
2005A n n u a l R e p o r t
The UCSD Technology Transfer Advisory Committee (TTAC)
is responsible for general oversight of the UCSD Technology
Transfer Program. This standing committee is appointed
by the chancellor and is chaired by the vice chancellor of
Research. It meets periodically to assess UCSD technology
transfer policy and guide the direction of the overall program.
COMMITTEE MEMBERS (FY2005)
RICHARD ATTIYEH (Chair )
Vice Chancellor, Research
ROGER BOHN
Professor, International Relations and Pacific Studies
MAARTEN CHRISPEELS
Professor, Division of Biological Sciences
FRED CUTLER
Executive Director, UCSD CONNECT
LINDA DALE
Director, Office of Contract and Grant Administration
GARY FIRESTEIN
Professor, Medicine
TOM JACKIEWICZ
Chief of Staff, School of Medicine
WILLIAM KUPERMAN
Professor, Scripps Institution of Oceanography,
Marine Physical Laboratory
JOE BEAR
Executive Director, William J. von Liebig Center,
Jacobs School of Engineering
LAWRENCE MILSTEIN
Professor, Electrical and Computer Engineering
ALAN PAAU (Secretary)
Assistant Vice Chancellor,
Technology Transfer and Intellectual Property Services
GEERT SCHMID-SCHOENBEIN
Professor, Bioengineering
ROBERT SULLIVAN
Dean, Rady School of Management
JOHN WOODS
Vice Chancellor, Resource Management and Planning
Technology Transfer and Intellectual Property Services 2005 Annual Report
4 Top Five UCSD Innovations
6 Spotlight Start-ups
8 FY2005 Start-ups
12 Community Outreach
14 Results
15 Financials
16 Appendix
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Message from Technology Transfer and Intellectual Property Services
I am delighted to share with you the FY2005 activities of the UC San Diego Technology Transfer and Intellectual Property Services (TechTIPS). The campus reached all-time highs in several significant areas: 334 disclosures of invention and copyright work by UCSD researchers; 71 executed licenses granting industry partners intellectual prop-erty rights to develop UCSD innovations; 60 patents issued by the United States Patent and Trademark Office to protect novel UCSD inventions; and gross revenues of over $21 million. They reflected well on the excellent research of our academic programs at UCSD and the relationship we have built with industry through the years.
In the second half of FY2005, UCSD also began a concerted effort with the UC systemwide Office of Technology Transfer to complete the “decentralization” of invention management started by the UC Office of the President. By the end of FY2006, the
UCSD campus office will be fully responsible for the management of all UCSD inventions. We hope by consolidating the management responsibility, we can provide more consis-tent, uniform, and timely services to our re-searchers and our industry partners. Please read more about this subject on page 7.
We were again busy promoting UCSD and UCSD innovations both at home and far away. We hosted many visitors who came to UCSD to study our technology trans-fer program and to exchange technology management and economic development ideas. We welcomed and took advantage of the opportunities to learn from each other. Please read more about our outreach and partnering activities starting on page 12.
The entrepreneurial spirit was rekindled at UCSD as the economy slowly recovered from the technology “nuclear winter” of 2002–2003. UCSD innovations were the
Alan S. Paau, M.B.A., Ph.D.Assistant Vice ChancellorTechnology Transfer and Intellectual Property Services
basis of fifteen new businesses formed in FY2005, some of which are highlighted on pages 8–10. UCSD innovations continue to gain market success. In FY2005, five of the Top 25 revenue-generating innovations from the entire UC system came from UCSD. Please read more about them on page 4.
I hope you find this report informative. If you have questions or suggestions for future re-ports, please do not hesitate to contact us. UCSD TechTIPS welcomes your input.
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Five UCSD Innovations Among the UC Top 25
In FY2005, five UCSD innovations made their way to the UC Top 25 list of revenue-generating inventions. Their presence reflected well on UCSD and included repeat honorees ELMIRON®, a therapeutic for interstitial cystitis; Ultravist® and Isovist®, two radiographic contrasting media for medical imaging; and the firefly Luciferase Assay System®, a ubiquitous life-science research tool. The two new honorees included Amplicor® and Ampliscreen®, for the diagnosis and detection of human cytomegalovirus; and Erbutix®, a biopharmaceutical for the treatment of colorectal and head and neck cancer.
ELMIRON® ELMIRON (pentosan polysulfate) is indicated for the relief of bladder pain or discomfort associated with interstitial cystitis. It was the first and only oral medication approved by the U.S. Food and Drug Administration (FDA) for the treatment of interstitial cystitis, also known as painful bladder syndrome. Interstitial cystitis patients struggle with symptoms of urinary frequency, urgency, pressure, and/or pain, as well as nocturia (frequent urination at night), dyspareunia (painful intercourse), pain, and/or discomfort while sitting in a car, while driving, and/or traveling. ELMIRON is sold by Ortho McNeil, a subsidiary of Johnson & Johnson, and resulted from pioneering work at UCSD by Professor C. Lowell Parsons (Surgery).
Ultravist® and Isovist®
Ultravist (iopromide) and Isovist (iotrolan, a dimer of triiodinated isophthalic acid derivatives) are two commercial radio- graphic contrasting agents. Isovist is useful in imaging spaces surrounding the central nervous system, such as the ventricles, after injection into the cerebrospinal fluid. It can also be used to image joint spaces and in endoscopic retrograde cholangiopancrea-tography. Ultravist is a nonionic, iodinated, low osmolar, injectable radiological con-trast agent for intravascular administration. Ultravist is being used today in over 100 countries worldwide with clinical experience in over 100 million patients. Sales for Ultrav-ist were over 248 million Euros in 2005, and it is sold by Berlex, a subsidiary of Schering Ag. These contrasting agents resulted from work by former UCSD researchers Drs. Milos Sovak and Ramachandran Ranganathan.
The Luciferase Assay System®
The Luciferase Assay System is an ex-tremely sensitive and rapid research tool for quantization of firefly luciferase that cata-lyzes a reaction with the substrate, luciferin, in the presence of ATP to produce light as a reporter gene. Linear results are seen over at least eight orders of magnitude of enzyme concentration, and patented technology incorporated in the formulation has allowed for less than 10–20 moles of luciferase to be measured under optimal conditions. Generally, 100-fold greater sensitivity can
be achieved over the competing chloram-phenicol acetyltransferase (CAT) assay. This reagent generates light that is nearly constant for at least one minute and is compatible with measuring firefly luciferase in a single-tube luminometer or in a multiwell plate luminometer with an auto-injector. In molecular biology, a reporter gene is a gene that researchers attach to another gene of interest in cell cultures, animals, or plants. Luciferase gene expression, because of its light-emitting reaction with luciferin, is easily identified and measured. The Luciferase Assay System line of products is sold by Promega Corporation. Other products, using this same cloned gene that resulted from work by Professors Donald Helinski and Marlene Deluca McElroy (Biological Sci-ences) at UCSD, are currently sold by other companies.
The Human CMV Monitoring KitThe human CMV monitoring kit is a diagnos-tic tool that resulted from work by Professor Deborah Spector (Cellular and Molecular Medicine) at UCSD and is widely used to test blood and blood products for the pres-ence of human cytomegalovirus, or hCMV. hCMV is a common virus that infects many people worldwide. An hCMV infection is usually harmless and rarely causes illness. A healthy immune system can hold the virus in check. However, if a person's immune sys-tem is seriously weakened in any way, the virus can become active and cause hCMV diseases. Cytomegalovirus is a member of the herpesvirus family and attacks the sali-vary glands. It may be devastating or even fatal to fetuses. An hCMV infection can be life threatening for patients who are immu-no-compromised (e.g., patients with HIV or organ transplant recipients). Other members of the herpesvirus family cause chickenpox, infectious mononucleosis, fever blisters, and genital herpes. These viruses all share the
ability to remain alive, but dormant, in the body for life. The human cytomegalovirus monitoring kits are sold by Roche Molecular Diagnostics as in vitro diagnostic kits under the trade name AMPLICOR®, and as kits for screening blood and blood products under the trade name AmpliScreen®.
Erbitux® Erbitux (cetuximab) is a new FDA-approved clinical product for the treatment of ad-vanced colorectal cancer that entered the market in 2004. In 2005, the FDA further approved its use for head and neck cancer. It can be used in combination with another approved colorectal drug, irinotecan, or alone if the patients cannot tolerate irinote-can. Erbitux is derived from a monoclonal antibody developed at UCSD by former pro-fessors Gordon Sato and John Mendelsohn and their associates. The antibody specifi-cally targets and blocks epidermal growth factor receptors on the surface of cancer cells and interferes with their growth and proliferation. UCSD granted license rights of this innovation to Imclone Systems, Inc. (IMCL–NasdaqNM) of New York to develop this cancer therapeutic. Imclone co-pro-motes Erbitux with its marketing partners, Bristol-Myers Squibb (BMY-NYSE), in the U.S. and in Canada, and with Merck KGaA in Europe. In 2005, sales of Erbitux were over $400 million in the U.S. alone.
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In 2005, NetSift, Inc., a UCSD start-up, was acquired by Silicon Valley-based Cisco Systems for $30 million. NetSift was formed in 2004 to commercialize solutions for high-speed communications network security using technology developed by Professors George Varghese and Stefan Savage (Com-puter Science and Engineering), and gradu-ate scholars Sumeet Singh and Cristian Estan. Varghese and Singh were cofounders of the company.
CSE graduate student Sumeet Singh (left) and CSE professor George Varghese.
UCSD Start-up Acquired by Cisco Systems
TechTIPS provided the original technology license to establish the start-up and repre-sented the university’s interest in the acqui-sition negotiation. NetSift originally received venture backing from a local venture capital firm, Enterprise Partners Venture Capital, and employed several alumni from UCSD. Upon acquisition, the company and its employees became part of Cisco’s Internet Systems business unit.
UCSD Start-up Acquired by Cisco Systems
Decentralization
The technology transfer program at the University of California system is moving towards a decentralization scheme, which will distribute responsibilities to its vari-ous campuses. During the second half of FY2005, about fifty inventions previously disclosed to and managed by the system-wide Office of Technology Transfer (OTT) in Oakland were transferred to UCSD’s Technology Transfer and Intellectual Prop-erty Services (TechTIPS) office. Over the course of FY2006, all inventions previously disclosed to and managed by OTT will be transferred to the campus office.
With the consolidation of the entire UCSD portfolio of innovations to the campus, we hope to realize several advantages of local management of these innovations, including:
• Improved responsiveness to faculty and the San Diego industry community
• Local access to UCSD researchers for services provided by the local office
• A “one-stop shop” for industry or other third parties interested in licensing UCSD innovations
• Simplified financial accounting and control of licensing, legal expenses, and income
RedXDefense, LLC, a start-up company based in Rockville, Maryland, licensed tech-nologies from the research of Professors William Trogler and Michael Sailor, both of the Department of Chemistry and Biochem-istry at UCSD. The licensed technologies, together with technologies licensed from the Wisconsin Alumni Research Founda-tion, provide a simple, fast, and inexpensive method to detect trace amounts of explo-sives using fluorescent detection inks and silicon “nanowires” that are 2,000 times thinner than a human hair. The company’s Explosives Particulates Analysis Kit (XPAK) product can detect fingerprints left by some-
one who has handled explosives, such as TNT, DNT, RDX, HMX, PETN, Tetryl, C4, PE-4, Semtex, Composition B, and others, even in a heavy background of other fingerprints.
RedXDefense recently partnered with Smiths Detection, the world’s leading pro-vider of trace and x-ray detection systems, to jointly develop for the mass transit envi-ronment an advanced explosives screening system capable of screening 100 percent of passengers. The two companies will partner to adapt advanced RedXDefense detection technology into an explosives screening system that can meet the high throughput demands of subway stations.
The target market for this new explo-sives screening system is every turnstile in America’s subways. In New York City alone, there are 468 subways stations that accommodate 4.7 million passengers daily. If deployed in New York City, this advanced explosives detection system would screen 1.45 billion trips per year.
Start-up RedXDefense Teams with Smiths Detection to Improve Subway Security
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in October 2005. This spring, a customer obtained its first product silicon optimized with Blaze’s software tools.
“Results so far with our first product have exceeded our customers’ most optimistic expectations,” says Professor Andrew Kahng (Blaze co-founder and UCSD faculty member in Computer Science Engineering). “Now we want as many chip designers as possible to benefit from it.”
The “DFM” in the company’s name means “design for manufacturing” and refers to a concept of designing integrated circuits in a way that improves the percentage of chips on a wafer to meet product specifications and therefore can be shipped. But as chip sizes drop and densities increase, improving yields on sub-100-nanometer (nm) pro-cesses becomes an even bigger problem because of power leakage and manufactur-ing variability.
“DFM is the semiconductor industry’s only hope for a cost-effective continuation of Moore’s Law,” says Kahng. “It’s been my research focus since 1997. I felt I had to do something to help solve critical challenges of
variability, power and cost—if only as a safe-ty net for the industry. I am grateful to UCSD for having provided me with this opportunity to translate university research into practical impact. The strong interest, support, and follow-through from the technology transfer staff at UCSD has been very gratifying, as has been the sight of my research turning into commercial products.”
Kahng's new technology does DFM with a twist. He calls it “Electrical” DFM. Most of the DFM tools used today have a geometric mindset: they focus on whether the shapes of circuit features in silicon exactly match the layout as designed. But, argues Kahng, shape fidelity is not the same as maximizing the number of sellable chips per wafer (and therefore revenue per wafer). To optimize the yield of chips on a wafer, he says, designers must take into account electrical require-ments, notably power and timing.
“Leakage power is a big part of the prob-lem at the sub-100nm level,” notes Kahng. “Because of leakage currents, a fast chip may burn too much power and be unusable in, say, a mobile application, and a slow chip may not be usable either. Electrical DFM
ARS Holding Corp. Cupertino, CA ARS is commercializing advanced RF transceivers for wireless handsets using technologies developed by Professor Larry Larson (Electrical and Computer Engineering).
Bettles Gates LLC Las Vegas, NVBettles Gates was formed to bundle, develop, and commercialize a portfolio of teleconferencing technologies from patents donated to UCSD with technologies from other sources. The company has been suc-cessful in licensing the bundled technologies to other companies for commercial uses.
Blaze DFM, Inc. Sunnyvale, CA Blaze DFM, Inc., which now comprises twenty employees, has attained all of its benchmarks since closing a $6 million initial round of venture capital financing in late 2004. Alpha testing of its first product, Blaze MO, began in March 2005, and the product was first installed at a beta customer site
FY2005 Start-upsFY2005 was a prolific year for UCSD start-ups with fifteen newly formed companies entering the business world. Of the fifteen companies, five were biotechnology/biomedical companies and the rest were engineering/software development companies. Twelve of the fifteen companies are in California, and ten of those are in the San Diego area.
looks at these electrical requirements and optimizes the chip design so that manufac-tured silicon meets parametric specifications while burning as little power as possible. Our products also directly mitigate the manufacturing variation that is so challeng-ing at leading-edge process nodes.”
Digital Media Research, Inc.dba Immersive Media Research, Inc. Del Mar, CADigital Media Research was formed with vortex surround technology developed by Professor Peter Otto (Music). Vortex sur-round facilitates the creative and expressive manipulation of individual sounds in space as well as the combining of these sounds into multichannel sound cues and fully im-mersive soundscapes. Three applications (Vortex Surround Designer, Vortex Surround Mixer, and Vortex Surround Encoder) form a surround authoring system, and may be used individually or together as elements of a complete production chain. They also work transparently with other audio applica-tions and can be used to provide multichan-
nel sound capabilities for authoring environ-ments that are otherwise less capable.
Eilean Technologies, LLC Las Vegas, NVEilean, a holding company, was formed to explore bundled communications-related technologies developed by university researchers, including UCSD Professors Pa-mela Cosman, Larry Larson, Peter Asbeck, and Ian Galton (Electrical and Computer Engineering); and Mark Zumberge (Institute for Geophysics and Planetary Physics). The technologies utilize advanced signal pro-cessing techniques that will prove invaluable in tomorrow’s mixed-signal and portable power applications.
HiGene Therapeutics, Inc.San Diego, CAHiGene was formed with technology developed by Professor Yang Xu (Biologi-cal Sciences) that allows the production of humanized antibodies using a specialized transgenic mouse. Human or humanized monoclonal antibodies have proven to be
very effective therapeutics against a variety of cancers, autoimmune diseases, and inflammatory diseases. This new technology will allow a more cost-effective production of future antibody therapeutics in a less labor-intensive and time-consuming manner.
HypoxyGen La Jolla, CAHypoxyGen was formed with technology developed by Professor Randall Johnson (Biological Sciences) and his associates that enhances bacterial killing by the im-mune system. The UCSD inventors have shown that use of hypoxia mimetics, iron chelators, and other compounds that up-regulate the HIF-1 hypoxia responsive transcription factor—or inhibit hydroxylase action—accelerate the killing of bacteria by white blood cells. The potential of pharma-cologically increasing the killing capacity of white blood cells, alone or in conjunction with antibiotics, holds significant clinical and market promise.
Clockwise from top left: Yu-Hwa Lo co-founder of Rhevision; ARS founder and Eilean collaborator, Larry Larson; Geert Schmid-Schoenbein, whose patented discoveries contributed to the founding of InflammaGen; Blaze co-founder and UCSD faculty member Andrew Kahng; Ortiva technology developer Sujit Dey.
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InflammaGen, Inc. La Jolla, CAInflammaGen was founded to commercialize specific patented discoveries of Professor Geert Schmid-Schoenbein (Bioengineer-ing). UCSD researchers have discovered that blocking the action of inflammatory mediators dramatically increases survival rates among laboratory animals. In humans, obstructing the chain of biochemical events involved in shock may be able to save tens of thousands of lives annually in the United States and an even greater number on a global scale. Additionally, there is mounting evidence that suggests that inflammation is the underlying cause of degenerative diseases including arthritis, Alzheimer’s, coronary artery disease, diabetes, and even some cancers. The company is committed to testing and commercializing technologies to reduce severe inflammation in order to ameliorate disease and preserve human life.
IQ Analog San Diego, CAIQ Analog is a semiconductor design com-pany providing improved mixed-signal data converter technology for Radio Frequency (RF) systems.
Partnering with researchers at the university, the company is developing the latest digi-tally calibrated analog interface technology to provide practical, cost-effective commer-cial applications. The technologies include a digital-analog converter technology devel-oped by Professor Ian Galton (Electrical and Computer Engineering).
Mushroom Networks, Inc. La Jolla, CAMushroom Networks was formed to com-mercialize a smart network-sharing technol-ogy for broadband Internet access devel-oped by Professor Rene Cruz (Electrical and Computer Engineering).
Ortiva Wireless, Inc. San Diego, CAOrtiva Wireless provides enhanced wireless content delivery. The company’s technology compensates for real-time wireless channel fluctuations to ensure the highest quality mobile user experience by expanding both capacity and reach of wireless networks. Professor Sujit Dey (Electrical and Computer Engineering) is the developer of the technol-ogy and co-founder of the company.
Proveri, Inc. San Diego, CAProveri focuses on improving the diagnosis and prognosis of prostate cancer by devel-oping tests that distinguish aggressive and indolent prostate cancer. The company’s technology was jointly developed by re-searchers at UCSD and the Sydney Kimmel Cancer Center (La Jolla, CA), and utilizes biomarkers that are statistically indicative of aggressive prostate cancer. These bio-markers were identified in a large clinical trial that was funded by a $4.7 million grant from the National Institutes of Health.
Rhevision Technology, Inc. San Diego, CARhevision was founded to commercialize revolutionary technologies on tunable smart optics for mobile and miniature imaging. Licensed technology was developed by Professor Yu-Hwa Lo (Electrical and Com-puter Engineering), and the company was founded by UCSD faculty and scientists.
StemTech, Inc. San Diego, CAStem Tech was formed with licensed technology developed by Professor Alberto Hayek (Pediatrics) that allows the main-tenance of pluripotency and propagation of human stem cell in culture without the use of a mouse embryonic fibroblast (mEF) feeder cell layer or a conditioned medium using mEF. This technology holds prom-ise as a stem cell research tool as well as a preferred production tool as stem cell research advances ever closer to practical therapeutic applications.
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AUG 2004 Presentation at the Amylin “Friend Raising” Evening (sponsored by UCSD External Relations)
Life Science Innovators Roundtable with presetations by Professors Virgil Woods, Jr., Nicholas Spitzer, Laura Borodinsky, and Wolfgang Dillmann
SEPT 2004 Life Science Innovators Roundtable with presentation by Professor Michael Sailor CONNECT Springboard Event for Hekko
OCT 2004 Life Science Innovators Roundtable with presentation by Professor Ajit Varki
Presentation at the meeting of the Control and Accountability Committee on Relationship Risks
Presentation at the Oceanids Annual Conference
Breakfast with TechTIPS with presentation by Professor Sujit Dey
Licensing Executive Society Annual Meeting
UCSD Technology Road Show to Boston (hosted by PureTech)
UCSD Technology Road Show to Shanghai, China (co-hosted by Crimson Pharmaceuticals, Paul Hastings, and the BayHelix Group)
AgBio Annual Conference (co-hosted by TechTIPS and the San Diego Center for Molecular Agriculture)
NOV 2004 Life Science Innovators Roundtable with presentation by Professor Juan Lama
UCSD Technology Road Show to Weihai, China (hosted by the International Biotechnology Center of the Shantung University)
Presentations and technology exhibition at the Taiwan Invention Exposition and TechnoMart Convention, Taipei, Taiwan
UCSD Technology Road Show to Hsinchu, Taiwan (hosted by the Industry Technology Research Institute)
Intellectual Property Seminar at Scripps Institution of Oceanography
TransMed program presentations at CONNECT Frontiers in Science
Innovators Showcase and TechTIPS Tenth Anniversary Celebration
CONNECT Most Innovative Product Awards Judging Presentation
Technology exhibition at the LARTA T2 Conference (Los Angeles) SABPA Company Profile 2 (co-hosted by TechTIPS and SABPA)
DEC 2004 CONNECT Most Innovative Product Awards Banquet Life Science Innovators Roundtable with presentation by Professor Yitzhak Tor
Community Outreach and Partnering
JAN 2005 Physical Science Innovators Roundtable with presentations by Professors Edward Yu, Kenneth Vecchio, Raymond de Callafon, and Yu-Hwa Lo
FEB 2005 AUTM Annual Meeting Start-up Seminar: Forming a New Company —Legal Issues to Consider
MAR 2005 PharmaSTART Drug Development Seminar
UCSD Technology Road Show to Industry Technology Research Institute (Hsinchu, Taiwan)
SABPA Second Annual Career Development Conference at UCSD
Life Science Innovators Roundtable with presentation by Professor Robert Mattrey
APR 2005 CONNECT Springboard for TheraPei
Intellectual Property Seminar (co-sponsored with Center for Wireless Communications)
MAY 2005 Plant Intellectual Property Seminar (co-spon- sored with San Diego Center for Molecular Agriculture)
JUN 2005 San Diego BioPharma Conference 2005 (co-sponsored with SABPA)
Presentation at the National Roundtable on Technology Transfer, Science and Trade (co-hosted by TAMU and University of Hawaii with support from the U.S. State Department)
Mentoring services to the Rady School of Management: Lab2Market class
JUL 2004 Representatives from University of Wollongong, New South Wales, Australia
AUG 2004 Technion University, Israel–Dr. Eizenberg
SEP 2004 Kyoto Trade Mission/Kyoto Research Park Corp./JETRO of Japan
A*STAR, Singapore–Sze Tiam Lin
EMD Biosciences and Merck KgaA
OCT 2004 Domain Associates, LLC–Dr. Brian Halak
NOV 2004 Polaris Delegation of Science and Technology Park of Sardinia, Italy
Hsinchu Biomed Park Delegation of Taiwan
Institute for Information Industry (Taiwan/UCSD Extension hosted)
Technion R&D Foundation, Ltd., Israel –Ami Lowenstein
Tokuyama College of Technology, Japan –Professor Takashi Hara
DEC 2004 Hong Kong Science and Technology Park –Dr. Joseph Liu and Mr. Jim Huang
BioRiver ABCD Regional Consortium of Germany–Annette Traude and Josef Steffinn
JAN 2005 BioVentures–Mr. Micky Kim
Merck & Co.–Dr. James Schaeffer
FEB 2005 Steve Tomlin of Avalon Ventures
Northwestern University–Professor Burton Weisbrod
San Diego Union-Tribune –Teri Somers (biotech reporter) New Zealand Government Science Council –Counselor Brian Young and Tim Blackmore
MAR 2005 University of New England, Armidale, NSW, Australia–Professor Grant Harman
APR 2005 Universidade Federal do Rio Grande do Sul, Porto Alegre, Brazil–Professor Jose Antonio Martinelli
Dr. Dale Cooper, Head of Bioscience, BD–Americas, Procter & Gamble
Changchun Botai Biotech–Dr. Xun Zhu
MAY 2005 Université de Montréal Vice Recteur a la Récherche–Alain Caille
Invest New Zealand–Gabriella Riera, Bret Morris, and Adam Podmore
Swedish Office of Science and Technology –Mr. Anders Asperen
University of Hong Kong –Professor Paul Tam
JUN 2005 University of Hong Kong –Professor Wong Kam Fai Hong Kong Science and Technology Park –Dr. Joseph Liu
China State Intellectual Property Office Delegation
Texas A&M University Delegation
Beijing University Delegation
Yunnan University Delegation
China Ministry of Science and Technology
Welcome
Sharing Experience
AUG 2004 SRI BioAsia Licensing and Deal-Making Summit
SEPT 2004 UC Technology Transfer Managers Dialog with Science and Engineering Deans
UC Systemwide Intellectual Property Managers Conference
Kansas City/San Diego Leadership Exchange
OCT 2004 China Beijing Bioengineering and Pharma Industrial Park Delegates (co-hosted by TechTIPS and SABPA)
NOV 2004 Presentation at the National Association of University Attorneys Meeting
Presentation at the National Association of State Universities and Land-Grant Colleges (NASULGC) Annual Meeting
Presentation at “Invention to Ventures” Conference (hosted by UCSD von Liebig Center)
JAN 2005 Presentation at the Rady School FlexMBA Seminar Finnish Delegation (co-hosted by TechTIPS, IR/PS, and Global CONNECT)
Ontario Delegation of University Vice Presidents for Research (hosted by Global CONNECT)
FEB 2005 Presentation at the ENG100L (Teams in Engineering Service Program)
MAR 2005 UC Riverside Technology Transfer and Economic Development Advisory
UC Systemwide Independent Substantive Review Committee Seminar
Hong Kong Science and Technology Park International Technology Conference Chinese Medicine CEO Business Round- table (co-hosted by the Hong Kong Jockey Club, Institute for Chinese Medicine, and the Hong Kong Science and Technology Park)
Presentation at the SRI Biotech/Pharma Licensing Summit
Presentation at the California Western School of Law Intellectual Property Conference
APR 2005 Presentation at the University of South Florida Moffett Cancer Center Seminar
Presentation at the UCSD BioBusiness Extension Class
Presentation at the SDSIC Entrepreneur Forum: Technology—Acquire or Develop?
MAY 2005 MultiLaw IP Special Interest Group
VentureForth Biotechnology Conference
JUN 2005 Presentation at the Carmel Valley Section of IPLA
Presentation at the Fish & Richardson Video Seminar
TECHTIPS UC SAN DIEGO ANNUAL REPORT 1�
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IP DisclosuresThe basis of UCSD’s intellectual property portfolio starts with an invention or copyright disclosure from our researchers. These disclosures are the foundation for seeking statutory protection and licensing of protected rights for commercialization to serve the university’s mis-sions. In FY2005, we reached 334 disclosures—another all-time high for the campus.
AgreementsTechTIPS agreement activity increased to over 700 agreements in FY2005, a new high for the campus. This number included licenses, options, letters of intent (LOI), material transfer agreements (MTA), and other adminis-trative agreements.
IP ProtectionUCSD’s technology transfer program continues to achieve high numbers for patent prosecution and protection, ranking second to UCSF in the UC system. In FY2005, 239 patents were filed of which 172 were U.S. provisional or secondary filings and the remain-ing 67 were foreign applications. An all-time high was achieved with 147 issued patents, 60 U.S. and 87 foreign patents.
Results
0504030201009998979695
250
187 23
4
236
242
489
576
592 62
6
699
713
0504030201009998979695
Copyrights
Inventions
2628
56
16
41
16
15
11213
7
476
139 16
1
200
194
265
255
294
288
4429
0
Tech Transfer Agreements Licenses of Inventions and Copyrights Intellectual Property Disclosures
1995
–
107
0
107
1996
–
70
4
74
1997
–
94
11
105
1998
–
96
40
136
1999
60
87
37
184
2000
55
87
22
164
2001
74
76
40
190
2002
75
86
41
202
2003
127
45
69
241
2004
144
44
94
282
14
1
15
27
1
28
30
3
33
36
41
77
40
51
91
58
33
91
59
36
95
42
39
81
51
69
120
50
79
129
Filings
U.S. Provisional
Non-Provisional
International
TOTAL FILED
Patents Issued
U.S. Issued
International Issued
TOTAL ISSUED
2005
133
39
67
239
60
87
147
Inventions
6
1995
Copyrights
5
Inventions
21
1996
Copyrights
1
Inventions
23
1997
Copyrights
3
Inventions
41
2000
Copyrights
6
Inventions
34
2001
Copyrights
12
1999
Inventions
24Copyrights
19
Inventions
25
1998
Copyrights
2
Inventions
28
2002
Copyrights
23
Inventions
41
2004
Copyrights
15
Inventions
23
2003
Copyrights
18
Inventions
50
2005
Copyrights
22
Table 1 Patent Activities
IncomeUCSD intellectual property income in FY2005 was ap-proximately $21.6 million. Income included over $15.5 million in license fees and royalties from inventions, over $214,000 in license fees and royalties from copyrights, over $578,000 in fees from the transfer of tangible research materials, and over $5.3 million in patent cost reimbursement. For a categorical breakdown of total income, please refer to the appendix.
Mandatory DistributionsIn FY2005, TechTIPS distributed over $8.5 million. Distributions were made to inventors, joint titleholders, participating academic units for research support, and the California State General Fund Pool in accordance with the UC systemwide patent policy and UCSD cam-pus guidelines. Invention income distributed is based on income received in the prior fiscal year. Copyright income and tangible research materials income distributed is based on income received in the same fiscal year.
Financials
ExpensesUCSD’s technology transfer program incurred total expenditures of $12.1 million. Expenditures included approximately $2.3 million for UCSD office operations, $890,000 for systemwide office operations and assess-ments, and $6 million in patent prosecution costs. A detailed categorical breakdown of total expenses is in the appendix.
Research ImpactUCSD’s technology transfer program continued to have a positive impact on UCSD research programs. TechTIPS distributed license income to support research by provid-ing incentives in the form of research support share and inventor/author share of the net income for faculty reten-tion and recruitment. In addition to the mandatory dis-tributions of income under UC Patent Policy and UCSD campus guidelines, TechTIPS negotiated additional funding for research in its license agreements whenever appropriate. In FY2005, the total research impact was estimated to be $5.9 million. These estimates include
distributions to researchers and authors, research laboratories, academic departments, copyrights, tangible research materials, and sponsored research pledges as a result of licenses and matching grants from the UC Discovery Grant Program.
In addition to distributing license income to encourage and support research, TechTIPS assisted in finalizing agreements for several research initiatives including the establishment of the Center for Networked Systems, a collaboration between the Department of Radiology and GE Healthcare, a gift from Sammy Studios of gaming software to the Center for Research in Computing and the Arts, and a gift from the William K. Warren Founda-tion to support the Celiac Disease Program. These gifts totaled almost $25 million.
0504030201009998979695
21.6
15.0
10.7
17.0
8.49.
1
6.1
5.3
4.3
3.7
3.0
Dollars in Millions
Estimated Research Impact Total Income from Intellectual Property Management
1995*
$643,705
13,178
–
252,930
$909,813
1996*
$848,778
11,413
–
243,952
$1,104,143
1997*
$907,112
46,882
–
299,023
$1,253,017
1998
$1,171,430
38,359
451,008
1,081,503
$2,742,300
1999
$2,512,878
94,221
345,741
235,872
$3,188,712
2000
$1,597,695
59,635
980,352
730,140
$3,367,822
2001
$2,154,601
196,770
928,614
$2,868,364
2002
$2,097,659
633,082
1,990,384
1,519,149
$6,240,274
2003
$4,055,993
303,719
1,003,550
$4,144,715
2004
$2,666,558
295,219
1,267,438
1,007,431
$5,236,646
Inventor/Author Share
Joint Titleholders Share
Research Labs/HAU#/Department Share State General Fund Share†
Total Distributions
2005
$3,716,953
190,694
1,987,232
2,658,331
$8,553,210
* Inventions Only # Home Academic Unit † FY01 and FY03 show credit
TOTALS
$22,373,358
1,883,173
8,954,320
6,398,163
$39,609,013
Table 2 Mandatory Distributions of IP Management Income
$.91million
$.64million
$.85million
$5.9million
$6.4million
$6.3million
$4.9million
$1.6million
$4.3million
$8.3million
$6.6million
1995 1996 1997
2001200019991998
2005200420032002
(411,621) (1,218,547)
TECHTIPS UC SAN DIEGO ANNUAL REPORT 1�
INVENT.UCSD.EDU
Appendix
Invention
Copyright
Tangible Research Materials
Legal Cost Reimbursement
Extraordinary Income†
Total Income
1995
$2,204,002
–
–
761,687
–
$2,965,689
1996
$2,389,128
–
–
1,287,424
–
$3,676,552
1997
$2,901,369
–
–
1,377,230
–
$4,278,599
1998
$3,057,487
11,649
–
2,259,994
3,000,000
$8,329,130
1999
$4,042,919
74,223
–
2,028,760
–
$6,145,902
2000
$5,476,522
83,581
647,401
2,848,046
–
$9,055,550
2001
$5,627,139
46,083
595,253
2,032,033
55,779
$8,356,287
2002
$7,240,086
202,503
1,122,889
2,898,996
5,552,353
$17,016,827
2003
$6,367,907
156,608
474,311
3,677,680
–
$10,676,506
2004
$11,472,540
314,268
405,074
2,896,168
–
$15,088,050
2005
$15,506,214
214,418
578,315
5,336,046
–
$21,634,993
Income
† Extraordinary income includes nonrecurring items such as legal settlements.
TOTALS
$66,285,313
1,103,333
3,823,243
27,404,064
8,608,132
$107,224,085
Patent Prosecution
Copyright
Campus Operations UCOP & OTT Assessment
Extraordinary Expenses*
State General Fund
Total Expense
Net Income
1995
$1,297,086
–
380,773
473,215
–
252,930
$2,404,004
$561,685
1996
$1,679,763
–
519,248
426,701
163,795
243,952
$3,033,459
$643,093
1997
$2,092,643
–
699,279
513,131
35,924
299,023
$3,640,000
$638,599
1998
$2,750,577
5,000
689,296
650,648
40,865
1,081,503
$5,217,889
$3,111,241
1999
$2,154,597
2,500
892,006
472,203
397,190
235,872
$4,154,368
$1,991,534
2000
$3,503,079
7,500
1,213,967
438,171
220,594
730,140
$ 6,113,451
$2,942,099
2001
$3,104,498
5,000
1,386,222
602,743
3,915,960
$8,602,802
2002
$3,832,578
937
1,696,395
862,383
2,992,514
1,519,149
$10,903,956
$6,112,871
2003
$4,026,056
2,901
1,981,436
901,692
6,566,816
$12,260,354
2004
$4,645,062
60
2,263,301
877,272
2,789,449
1,007,246
$11,582,390
$ 3,505,660
2005
$6,054,754
3,630
2,272,051
892,459
257,504
2,658,331
$12,138,729
$9,496,264
* Extraordinary expense includes unbudgeted legal expenses for litigation and settlement.
Expense
(411,621) (1,218,547)
$(246,515) $(1,583,848)
TOTALS
$35,140,693
27,528
13,993,974
7,110,618
17,380,611
6,397,978
$80,051,402
$27,172,683
Technology Transfer and Intellectual Property Services University of California, San Diego9500 Gilman Drive, Dept # 0910 / La Jolla, California 92093-0910 / (858) 534-5815 / invent.ucsd.edu
0607-007