tech transfer in birmingham
DESCRIPTION
Dr. David Winwood speaks to Birmingham Venture ClubTRANSCRIPT
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David Winwood
The UAB Research Foundation
16 July 2009
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The UAB Research Foundation
The What Why & Howof
University Technology Transfer
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UAB Research Foundation &UAB Research Fundamentals• 501 c. 3 established in 1987 to provide services to the research
enterprise at UAB
• The research enterprise at UAB is significant –
• UAB’s research expenditures have doubled every decade since its founding:
• Research expenditures last year were >$420 MM
• Of which >$200 MM is from federal awards that is – money being sent here from D.C. and spent in our community
• Of the $420 MM, ~ half is salaries – again, mainly spent very close to where we are sitting today
• Every external $ spent on research at UAB has an additional $.84 impact on the local economy
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UABRF Role
• The RF completes almost 1,000 transactions a year
• Mainly service-oriented, ‘zero-revenue’ agreements:
• Material Transfer Agreements, Confidentiality
Agreements, inter-university agreements, consortium /
collaboration agreements….
• Not ‘newsworthy’ or exciting….but crucial components
of the research enterprise
• At core, UABRF is a service provider for UAB research
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The Meat…..
• The reason most here are interested in the RF:
• We own and manage intellectual property created at UAB
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Why?
• Fundamentally – if we accept federal support - we have to…
• Must provide administrative entity to manage resulting intellectual property – whether (potentially) patentable or research tools or biological materials; at UAB this entity is UABRF
• Bayh-Dole Act, 1980
• Provides mechanism for university ownership and commercialization of federally-supported inventions
• Described as ‘Possibly the most inspired piece of legislation to be enacted in America over the past half-century…*)
*”INNOVATION'S GOLDEN GOOSE”, The Economist, Dec 12th 2002
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Bayh-Dole Act Basics……
• Obligation to make developments available in
exchange for receipt of government grants
• Universities must file patents on inventions they
elect to own
• Encourage collaboration with industry to promote the
utilization of inventions
• Must give preference to small businesses
• Manufacturing in U.S.
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Patents…………
• Typically the UABRF licenses rights to patents
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Real Patents…..
“ANNUNCIATOR FOR THE SUPPOSED DEAD”Inventor: WILLIAM H. WHITE
U.S. Patent 465,548 Patented December 22, 1891
“ for preventing the commission of "grave errors"
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Results, 2006-2007
• In the U.S., University-licensed technologies resulted in:
• 686 new products being introduced into the market
• 555 new startup companies launches
• 19,827 new invention disclosures were received by universities
• A total of 5,109 licenses and options were signed
• 3,622 patents were issued to universities
• 3,388 startup companies based on university-created technologies were still operational (from the beginning of record keeping on such matters, in the late 1980s)
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UABRF Metrics (1987-2009)
• Total inventions received:
>1,900
• U.S. Patents issued: >467
• Total Option/License agreements: >350
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UABRF Metrics (1987-2009)
• License revenues collected to date: >$47MM
• Licenses with equity: 39
• Distributions to inventors: $13.2MM
• As personal income
• Distributions to UAB& UABRF $32MM
• Used to support research activities
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Technology Transfer vs. Knowledge Transfer
“Of course there's a lot of knowledge
in universities: the freshmen bring a
little in; the seniors don't take much
away, so knowledge sort of
accumulates.”
Abbott Lawrence Lowell, Harvard president 1909-1933
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Technology Transfer Process - Simplified
Invention disclosed to TT office
Review / triage:
completeness; technical aspects; obligation to funding entity(federal agency or private industry?)
Patentability
Marketability
Seek patent protection
Identify potential licensee(s)
Market
Negotiate terms:
Option period
Internal review: Conflicts of interest?
Execute license agreement
Monitor compliance/diligence terms
Maintain patent portfolio
Invoice
Distribute revenues to happy inventors…….
(and even to unhappy inventors, as well…..)
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Technology Transfer Process - Simplified
What could possibly go wrong?
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UNIVERSITY INDUSTRY
Research Partner-ships, Tech Transfer =Economic Development
Teaching
Research
Service
EconomicDevelopment
R&D, products
Profits
Knowledge for Knowledge’s Sake
Academic FreedomOpen Discourse Time = Semester
Management ofKnowledge for Profit
ConfidentialityLimited Public Disclosure Time = Money
UNIVERSITY INDUSTRY
Research Partnerships, Tech Transfer =Economic Development
Teaching
Research
Service
EconomicDevelopment
R&D,
Products
Profits
Knowledge for Knowledge’s Sake
Academic FreedomOpen Discourse: Time = Semester
Management ofKnowledge for Profit
ConfidentialityLimited Public Disclosure Time = Money
Eg
o a
nd
en
vyF
ear and
g
reed
From Louis Berneman
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Challenges?
• By definition, the technologies managed by the RF
are very early stage
• Necessary to seek patent protection very early
• Result – UABRF is almost always the first ‘investor’ in
a UAB technology
• Patent investments made by UABRF in a single
portfolio often reach tens or hundreds of thousand $
before (if!) a licensee is found – whether an existing
company or a startup
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Finding a Licensee…
• Strong preference to do business locally to support local economic growth, however –
• Most UAB technologies are licensed out of state or overseas
• Exception is licenses to UAB startups
• Local industry clusters don’t yet match the technology base generated at UAB – strong life sciences portfolio
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Observations
• Most of our technologies / inventions are not candidates for
startup company formation; rather, they will best be
introduced into the market place by licensing to an existing
company for development as a new product or service
• Many times that company will be out of state
• Wealth is eventually created here as licensing revenues are
returned to UABRF, the inventors and UAB
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Expectations
• Alignment of priorities with performance metrics-• (e.g., create startup companies and wait for revenues that
may never materialize….or license to existing companies for up-front money?)
• How is success measured?• By the university?• By the inventor?• By the community?• By the federal government?
• Depending on the answer to this question, management styles for university technology transfer vary considerably across the nation
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Goals at UABRF
• Help build an environment that is supportive of the activities in
our realm to build an Entrepreneurial Ecosystem:
• At the university:
• support at all administrative levels – faculty, department,
school, university…..trustees
• Local investors
• Serial entrepreneurs – we have some, and they are well
represented here – but we need more
• Service providers
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Progress
• New staff positions added• RF staff now includes 5x Ph.D.’s, 3x MBA’s & 3x J.D.’s…
• Better business practices
• Outreach – to faculty & community
• Collaborations• Across campus
• With other UA system schools
• With local & regional economic development agencies
• Participation in national & international professional organizations
• Visibility
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Successes – Diverse Portfolio
• Commercializing a therapeutic technology is expensive and time
consuming – but rewards are significant
• Life science service / discovery companies present different
paths to commercial success:
• Discovery BioMed, Vivo BioScience
• IT and bioinformatics based companies from UAB have enjoyed
success:
• Emageon
• MedMined
• DefiniCare
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A Life Sciences Campus-With Engineering
• Alabama Launchpad, 2009:
• UAB teams – took 3 out of the 8 final places
• Won first and second place
• $100K 1st place prize – Innovative Composite Solutions,
from UAB’s Materials Sciences (School of Engineering)
• $50K 2nd place prize, Spectrum PhenomX, Genetics,
(School of Medicine)
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Summary
• Work in close collaboration with local, state and regional entities; leverage intellectual and physical assets
• Sometimes this means licensing a technology to a company; but often it may mean providing access to expertise or to one of a kind instrumentation.
• If this is done properly -
• Discoveries become beneficial products and services, medicines, improved electrical and computer equipment, plants, safer food, etc.
• Public benefits include employment, commerce, generating state and federal taxes
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Questions?
UAB Research Foundation
205 934 9911