otl 2016 2017

© 2016 University of Florida

University of Florida Office of Technology Licensing

Where Science Meets Business

www.otl.ufl.edu


Meet the OTL Staff


• Sentricon® is a colony elimination technology for termite control, developed at UF, introduced to the market in 1995

• Saved the Statue of Liberty from a termite infestation

• Has also led to a 300-metric-ton reduction in chemical use in homes nationwide

Sentricon®


Gatorade™ is the most well-known product from UF

Gatorade™ has maintained an 80%market share throughout the betterpart of the drink’s existence

Gatorade™


• RTI Surgical™ is a UF spin-off that processes donated human tissue into allograft implants

• In many cases enabling patients to walk again

RTI Surgical™


How Did They Move From Lab to Market?

• Further development/testing

• Commercial partner with $$$

• Protected intellectual property & effective technology transfer services


Bayh-Dole Act of 1980

• Gave universities/researchers the opportunity to patent and reap financial rewards from technologies

• Gave industry a way to generate ROI for developing, marketing university technologies

• Strong incentive for industry-university research collaborations and industrial investment

• Academic research is critical to the nation’s innovation and R&D

• More than 260 university TLOs created


How Does It Work at UF?

Idea

InventionDisclosure

Form

WrittenDisclosure

OralDisclosure

Exert

WaiveOTL Explores Patentability & Marketability

OTL Seeks Licensee &

Makes Patent Decisions

(120 Days)


UF Patents & Licensing

Research Awards

Invention Disclosures

Issued U.S. Patents

Licenses/ Options

Executed 2015/16 $724 M 331 115 1222014/15 $707 M 337 117 852013/14 $702 M 296 112 872012/13 $641 M 294 106 842011/12 $644 M 324 60 792010/11 $619 M 298 86 782009/10 $678 M 279 59 672008/09 $574 M 271 73 722007/08 $562 M 299 52 752006/07 $583 M 327 77 742005/06 $519 M 260 78 73


A National Leader in Startups• Since 2000, UF OTL helped create more than 190 biomedical

and tech startups• Ranked #3 in startup launches (14) in 2014 Association of

University Technology Managers survey• #5 in licenses and options granted• #5 in US patents issued


Benefits of Technology Licensing

• Attracts research funding

• Forms industrial partnerships

• Places graduate students in rewarding jobs

• Earns royalty income

• Moves your discovery to market


What/When to Disclose

• WHAT: Disclose novel ideas, discoveries, inventions that are timely and useful to the marketplace

• WHEN: Disclose with sufficient notice before any publication (prior to submission) or enabling public disclosure

• Don’t know if you should disclose?Call OTL!(352) 392-8929


Disclosing an Invention

• Use our web-based invention disclosure module accessible from the main OTL website (www.otl.ufl.edu).

Direct link: http://www.research.ufl.edu/otl/newdiscovery.html

• Enter your Gatorlink login and password at the prompt

• On the form, describe in detail the different aspects of your invention

• Submitting the form to us initiates your interaction with OTL, but does NOT provide patent protection

• Invention Disclosure Submission ≠ Patent Filing

http://www.research.ufl.edu/otl/newdiscovery.html




Your Partnership with OTL

• Provide us with industry contacts who might be licensing partners:

• Scientific colleagues/collaborators• Conference attendees• Grant review panel members• Scientific journals• Students/post docs now working in industry

• Explain and promote the technical benefits of your invention to potential licensees


UF Owns Employee Inventions When:

• The invention was made while you were employed at UF• AND

• The invention is in the field/discipline in which you are/were employed

• OR

• The invention was made with university resources


Types of Intellectual Property

• Patents- Enable you to exclude others from using your ideas for a

limited period of time

• Copyrights- Grant you the right to exclude others from reproducing

your work without permission

• Know-how- Expertise required to reproduce a patent, licensed in

conjunction with the patent


Types of Intellectual Property

• Trade secretsMethod, formulation, or process not disclosed to the public and not covered by a patent (ie recipe for Coca-Cola®)

• Trademarks A distinguishing symbol, design, mark or word used by a manufacturer to identify its product from a competitor’s (ie Gatorade™)


Tips for Protecting Your Intellectual Property

• Keep accurate lab notebooks• numbered and bound + document date of conception

• Use a Material Transfer Agreement (MTA) when transferring or receiving materials from an outside entity

• Always complete a Confidential Disclosure Agreement (CDA) prior to discussing enabling aspects of your research with an outsider

• Protect your intellectual property before publicizing your discovery in any way


Criteria for Patentability

• Novel- New, never before used

• Useful- Must have a purpose or intended use

• Non-obvious to someone “skilled in the art”- Peers and/or patent examiner would not

readily identify the improvement or new application


Events Impacting Patentability

• First publication- Includes providing information to others without a

confidentiality agreement/poster, sessions or presentations at conferences

• First public use

• First offer for sale


Public Disclosure

• Public disclosure can include:

- Publication in open literature

- Poster sessions and abstracts (postings to the web)

- Presentations to an open forum (thesis defense)

- Personal communications without a confidentiality agreement

- Catalogues and libraries


Avoid Public Disclosure

Check Box 3: “Is proprietary/privileged information included in the application?

Check this Box on Grant Applications:


Office of Technology Licensing

Bridging the Technology Transfer Gap


Large Company

Startup Company

Medium Size Company Jobs

Profits &Tax Revenue

Products &Services

• % of Revenue• Securities• Combination

The University

US, State and Local Governments

A Very Virtuous Cycle

Lab to Market – It Works !

http://www.50states.com/florida.htm

http://upload.wikimedia.org/wikipedia/commons/a/a4/Flag_of_the_United_States.svg


Critical Elements for Creating Tech Startups

• Strong, diverse research programs that generate innovations

• Technology transfer expertise

• Business startup facilities

• Capital

• Management


Mill

ions

Fiscal Year

Source of Innovation

03/04

04/05

05/06

06/07

07/08

08/09

09/10

10/11

11/12

12/13

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0100200300400500600700800

Non-Fed-eral

UF Research Awards 2003-2016


• UF Tech Connect® program fosters new business creation

•Match researchers with potential management

• Assist in business plan creation and market feasibility studies

• Provide training for “wanna be” entrepreneurs

• Introduce funding opportunities through VC & angel network introductions

•Measured based on jobs & private investment

Technology Transfer Expertise


• Opened 2011• 760 jobs, $50M investment• OTL offices located inside

Incubator Facilities: Florida Innovation Hub

• Blocks from campus, downtown • Startups and service providers• 48,000 square feet of labs and offices• Phase II construction under way


Sid Martin Biotechnology Development Institute#1 biotech incubator in the world, 2013

Incubator Facilities: BDI

• Opened 1995

• 42,000 sq ft; 19 labs, 13 offices

• Small and large animal facilities


Capital• Funding follows

opportunity appropriately matched with an experienced entrepreneur

• Seed Grant Program: Florida Institute for the Commercialization of Public Research

• Venture capital firms in Gainesville• Sofinnova• Harbert


• Two approaches:

– Recruit

– Grow Your Own• The Hatchery• Start Up Quest• Empowering Women in Tech Startups

Management Talent


OTL Can Help You To:

• Take the steps necessary to get your discovery into the marketplace where it can benefit society

• Find innovative approaches to commercializing your discoveries by facilitating mutually beneficial working relationships


University of Florida Office of Technology Licensing

Where Science Meets Business

www.otl.ufl.edu

otl 2016 2017

Education