The US Technology Transfer Scene: A view from California ... - JUNBA

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The US Technology Transfer Scene: A view from California ... - JUNBA

The US Technology Transfer Scene:

A view from California

William Tucker

Executive Director

Research Administration and Technology Transfer

University of California, Office of the President

January 10, 2008 JUNBA Summit, Hyatt Santa Clara


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

Outline

• 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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 2


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

UC is a large, complex system of campuses

and administrative units

�� 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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 3


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

UC Technology Transfer is

UCI

UCM

Decentralized

UCR

UCSF

UCB

OTT

UCD

UCLA

UCSD

UCSB

UCSC

• Each campus office reports through is own management structure

• OTT “advises” campuses but can rarely mandate actions

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 4


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

Decentralized responsibilities

• 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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 5


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 6


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

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

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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 7


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

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

• 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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 8


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

UC 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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 9


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

“Nine Points to Consider”

• 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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 10


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

The Pyramid of Disappointment

1 license generates > $1M

15 licenses generate < $1M

34 licenses generates

license issue fees

16 licenses

generate royalties

50 inventions not licensed 50 inventions licensed

300 inventions 400 inventions rejected disclosed

100 patent

applications filed

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 11


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

FY 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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 12


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

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)

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)

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 13


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

The US Technology Transfer Scene:

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.

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 14


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

Economic 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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 15


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

Economic Development Initiatives

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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 16


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

Economic Development Initiatives

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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 17


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

University-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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 18


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

PRESIDENT

OFFICE OFFICE OF OF TECHNOLOGY TECHNOLOGY TRANSFER

TRANSFER

International 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

January 10, 2008 JUNBA Summit, Hyatt Santa Clara 19


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/

January 10, 2008 JUNBA Summit, Hyatt Santa Clara

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