Introduction to University Tech TransferFall 2013

@Columbia_Tech

Columbia Technology Ventures

Columbia Technology Ventures

www.techventures.columbia.edu

techventures@columbia.edu

2

What Is Academic Tech Transfer?

Academic research

Practical applications

Benefit society on a local, national and global basis

3

Beware the Valley of Death

“Somewhere between invention and commercialization, there’s a desolate

place where new technologies go to die alone. It’s called the Valley of Death,

and it’s littered with the decaying corpses of technologies that never get

to realize their potential. Too many technologies will be left to rot on the

lonely, dusty road.”

4

What is “The Valley of Death”

Commercial value

Government & Foundation Grants

Industry & VC Funding

EarlyFeasibility

StudiesBasic

Research

Technical Validation

& Prototyping

Product Development,Marketing, and

SalesEarly MarketTesting

The Valley

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Pre-1980• Early-stage research innovations belonged to federal agencies• However, government not motivated to actively commercialize

– Only 5% of patents ever commercialized1

• Result: very few products, jobs or other public benefits

History of Technology Transfer

Bayh-Dole Act (1980) gave universities right and obligation to patent and commercialize federally-funded inventions

• Most universities broadened policies to include all inventions made with university resources

Since 1980, rapid adoption among U.S. universities

1: Ashley Stevens, New England Journal of Medicine, Feb 2011

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Increasing Focus by Industry on Patenting

7

300% Increase in Overall Patent Applications Since 1990

1990

1992

1994

1996

1998

2000

2002

2004

2006

2008

2010

0

100,000

200,000

300,000

400,000

500,000

600,000

Patent AppsPatent Awards

USPTO Activity, 1990 - 2011

8

US Tech Transfer Productivity “By The Numbers”:Cumulative Inputs and Outputs, 1991 - 2011

~$695B in Researchfunding

Source: AUTM Licensing Surveys (FY91- FY11)

~165,000 patent

applications~59,000patentsawarded

57%

36%

~287,000invention

disclosures

$2.4M / disclosure

48,064 active license & options,

7,495 start-ups,130+ new drugs & devices,

300,000+ new jobs

17%

9

But the End of One Process is Just the Beginning of Another

Only 1 in 6 inventionsever gets licensed

Roughly 1 in 100 pharma

compounds gets approvedRoughly 1 in 10 venture investmentsis a significant hit

University’s Funnel Industry / VC’s Funnel

Successfulproduct

on the market

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$0

$50

$100

$150

$200

$250 ($M) 150 U.S. Universities – Gross Tech Transfer Revenues

Commercial Success is Not Easy

Source: AUTM 2011Survey Data

Columbia

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Who Else Does Well, Commercially?

(FY2011)Name of Institution

License Income

($M)

Research Expenditures

($M)Invention

Disclosures

Northwestern $192 $484 195Univ. of California System $182 $5,419 1581Columbia $146 $714 335New York Univ. $142 $431 167Princeton $115 $193 84MIT $76 $1,490 603U Washington $67 $967 356Stanford $67 $806* 504University of Texas System $65 $2,547 719UW-Madison/WARF $58 $1,112 357

Source: AUTM 2011 data except * AUTM 2010 data

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Inventions Often Take Years to Get Licensed:Only ~50% of Deals Done by Year 3, only 70% by Year 5

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20+0

20

40

60

80

100

120

140

160

180

200

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%

Columbia University: # of Years from Invention to First License

# of licenseswithin

elapsed year

Cumulative% of deals done

by year

Source: Review of elapsed time from invention submission to executed license, for all 580 of Columbia’s executed licenses from 1982 until 2011 (29 years)

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Elapsed Time from Invention to License Relatively ConstantOnly Slight Variation by Health Science vs. Phys Sci; Exclusive vs. Non-Exclusive

Source: Review of elapsed time from invention submission to executed license, for all 580 of Columbia’s executed licenses from 1982 until 2011 (29 years)

All LicensesPhysical Sciences onlyHealth Sciences only

All LicensesExclusive licenses onlyNon-ex licenses only

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Columbia’s Experience Mirrors that of Other Institutions

National Cancer Institute’s Licenses# of Years from Patent Filing to License (1995 – 2009)

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“Blockbusters” Drive Most of the Revenue, But are Rare

% of active licenses

0.6%

39.3%

0%

25%

50%

75%

100%

Active Licenses Revenue-GeneratingLicenses

Licenses >$1MAnnually

Less than 1% of licenses generate >

$1M / year

Less than 1% of licenses generate >

$1M / year

Source: AUTM Licensing Survey (FY04)

(1)

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And “Big Winners” Take Many Years To Develop ... And Aren’t Always Obvious at the Time

Columbia’s Four Biggest Revenue Producers(Revenue per Year)

1717 CONFIDENTIAL

Additionally, Patent Costs are Large and Incurred Early

Source: Columbia University, Patent & Licensing Group

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Columbia’s Tech Transfer Mission

• To facilitate the translation of academic research into practical applications, for the benefit of society on a local, national and global basis

• To support the research of Columbia faculty by generating funding for the University and facilitating partnerships with industry where appropriate

• To educate and serve as a resource for the Columbia community on matters relating to entrepreneurship, intellectual property, and technology commercialization

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Columbia Technology Ventures Key MetricsFY08 – FY13

2008 2009 2010 2011 2012 20130

50

100

150

200

250

300

350

400

Inventions

2008 2009 2010 2011 2012 20130

102030405060708090

100

Licenses & Options

2008 2009 2010 2011 2012 201302468

1012141618

Start-ups

+24% vs. 2008 +68% vs. 2008

+60% vs. 2008

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Columbia Technology VenturesAnnual Activity Metrics

Columbia Technology

Ventures

~350 new inventions from University research

~70 licenses & options

~15 start-up companies

~$140M in gross IP revenues

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Wait, Does the University Own Student Inventions?http://bit.ly/TDZoiy

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Good Start… But Lots More to Do!

~400 technologiesare currently

licensed

But ~1400 technologies

are still available!

Source: CTV database, Fall 2013

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The Path to The Deal

Researchdiscovery

Invention report

filed

Patentprosecution

Marketing License negotiation

Patentability analysis

Commercial analysis

Prioritization

Post-contractcompliance

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Products Using Columbia Technology

Arrow Catheter

DISCOVERY STUDIO

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Where Does the Money Go?University Policy On Distribution of License Revenues

Gross RevenueFirst $125K

Gross RevenuesOver $125K

20%

20%

20%

26%

7%7%Inventor

Inventor's Lab

Tech Ventures

University

School

Department

40%

20%

20%

20%20%

20%

20%

26%

7%7%

Note: Certain caps and deductions may apply. Please refer to Appendix D of the Faculty Handbook for details.

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Many Different Levers to Customize Deal Structure

Equity

Royalties

Sublicensing

MilestonesUpfront fee

Minimum annuals

Patent expenses

Sample Deal A

Sample Deal B

Remember, IP licensing is a “repeated game”… so treat people as you will want them to treat you next time!

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Columbia’s License Boilerplate Has Evolved Over Time

• ~18 pages long

• Multiple versions for different situations

• Combination of legal and business issues

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150+ Startups Spun Out of Columbia in 20 YearsOf those, 90+ still active, 40+ VC-backed, 9 gone public, 18 acquired

System Management ARTS (SMARTS)

Health Analytics Communications

Cybersecurity & Corporate Computing

Cleantech

Media & Fashion

Pharma & Devices

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Entrepreneurship@Columbia: Many Resources Available!

Columbia DepartmentsColumbia Tech Ventures

Columbia Business SchoolColumbia Engineering

Center for Advanced TechnologyColumbia Journalism

Student & AlumniColumbia Venture Community

Application Development Initiative

http://entrepreneurship.columbia.edu

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# of Columbia Start-ups Launched Involving CTV

FY98FY99

FY00FY01

FY02FY03

FY04FY05

FY06FY07

FY08FY09

FY10FY11

FY12FY13

0

2

4

6

8

10

12

14

16

18

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Thank you!@Columbia_Tech

Columbia Technology Ventures

Columbia Technology Ventures

http://techventures.columbia.edu

techventures@columbia.edu