What are the key opportunities in Biotech / University TTO deals? What are the key challenges? What are the terms that make these deals work?

2. David Tiemeier joined INVO as Senior Director in July 2012. He leads a team that is
responsible for building relationships with faculty, for helping to shape and prosecute
University intellectual property, and for commercial assessment and licensing of University
inventions into existing and start-up companies. The team looks for ways to build value in
early-stage projects and draws heavily on internal and external experts to catalyze the
translation of basic science into innovative products and services.
Mr. Tiemeier brings over twenty-five years of industry experience to INVO including
leadership positions in research and business development with Monsanto, Searle, Pharmacia
and Pfizer. After retiring from Pfizer in 2004, he work with the biotech companies NeoPharm,
Immtech, and Kalypsys before joining UChicagoTech, the University of Chicago’s Office of
Technology and Intellectual Property, as Deputy Director in 2006.
Mr. Tiemeier holds a B.S. in Chemistry from the University of Notre Dame and a Ph.D. in
Biochemistry from the University of California, Berkeley. He completed postdoctoral studies
in Molecular Genetics at the National Institutes of Health and served on the faculty of the
University of California, Irvine, Medical School for three years before joining Monsanto.

3. Edward Lanphier, the founder of Sangamo BioSciences, Inc., has served as
President, Chief Executive Officer and as a member of the Board of Directors
since Sangamo's inception in 1995. Mr. Lanphier has over twenty-five years of
experience in the pharmaceutical and biotechnology industry.
From June 1992 to May 1997, he held various positions at Somatix Therapy
Corporation, a gene therapy company, including Executive Vice President,
Commercial Development and Chief Financial Officer. Prior to Somatix, he
was President and Chief Executive Officer of BioGrowth, Inc., a
biotechnology company that merged with Celtrix Laboratories to form Celtrix
Pharmaceuticals, Inc. in 1991.
From 1986 to 1987, he served as Vice President of Corporate Development at
Biotherapeutics, Inc. From 1984 to 1986 Mr. Lanphier served as Vice President
of Corporate Development at Synergen Inc. Prior to Synergen, he was
employed by Eli Lilly and Company, a pharmaceutical company, in the
strategic business planning biotechnology group. He currently serves on the
board of directors of the Biotechnology Institute. Mr. Lanphier holds a B.A. in
biochemistry from Knox College.

4.  Marie Powers served as a contributing writer for BioWorld Today before
joining the staff in 2011. With more than 20 years on the health care beat,
Ms. Powers has contributed to a variety of industry publications,
including ENT Today, Managed Care Contracting & Reimbursement Advisor,
Orthopaedic Practice Management, Neurology Practice Management, Capitation
Management Report, Capitation Rates & Data, Physician Profiling & Behavior
Change Report, and Women's Health Center Management. She's also served
as a Contributing Editor to Technology Transfer Tactics.
 BioWorld Today delivers actionable intelligence on the biotech science
that drives the business, which funds the means to heal disease. With
writers and editors stationed around the globe, BioWorld Today reports
the breaking news -- and provides key perspective -- on hundreds of
medicines in development, the companies behind those therapeutic
candidates, the business development transactions that evolve the
market, and the regulatory hurdles that both challenge and guard the
process.

5.  What are the key opportunities in Biotech / University TTO deals?
 How to establish and nurture relationships on both sides of the table
 How to build value and de-risk emerging technologies
 How to improve the reproducibility hit rate
 What are the key challenges?
 How to develop rational start-up operational structures
 How to identify potential partners
 How to market technologies to potential partners
 How to develop internal or attract external funding to move university technologies
across the Valley of Death
 The role of preclinical and other studies in building value for a technology
 What are the terms that make these deals work?
 Perception of value
 Exclusive vs. non-exclusive rights
 Up-front fees
 Equity
 Ongoing research funding
 Objectives/interests of inventors
 Milestones
 Royalties

6. Opportunities and Challenges in Designing
Deals Between Biotech Companies and
University TTOs
David C. Tiemeier, Ph.D.
Senior Director
Innovation and New Ventures Office
Northwestern University
December 11, 2012

7. Academic Mission: Impact the world
• Increase knowledge through research and
publication
• Develop leaders through education
• Deliver healthcare through clinical care and
practice
• Mobilize people and organizations to address
unmet needs through its convening function
• Impact, primary; income, secondary…in general

8. A “disclaimer”…
In general…
Universities—within and between—
are not homogeneous organizations!

9. NU Sponsored Research Awards (Dollars in Millions)
Federal/Nonfederal Awards
$600
Nonfederal
Federal
$500
$400
$300
$200
$100
FY2007 FY2008 FY2009 FY2010 FY2011

10. In wake of Bayh-Dole, TTOs generally focused
on the front-end IP work
Discovery Concept Asset Marketing
and Licensing
Sponsored Disclosures
Research Existing Co Start-up
Election
Unmet Need
IP Management
One of the results: a mindset that “our assets have enormous value”

11. Value must be built, early “market” input is critical
Prioritize: Science, Unmet Need,
Competitive Landscape External
Networks
Discovery Concept Asset Marketing
and Licensing
Sponsored Disclosures
Research Build Value Existing Co Start-up
Election
Unmet Need
IP Management

12. Academic Approaches to “Building Value”
1) Commercialization experts embedded in departments work
with faculty (Executives- and Entrepreneurs-in- Residence)
2) Prospective partners and external experts engaged ad hoc to
shape specific discoveries and set the commercial trajectory
3) Team mentoring provided to budding faculty entrepreneurs
(Chicago Innovation Mentors)
4) Corporate relation groups and Board of Trustees leveraged
5) Innovation or Gap Funds, guided by external advisory
boards, fund proof-of-concept (POC) studies
6) Technology embedded in start-ups with business leadership
and non-dilutive funding (SBIR, STTR)
7) Complementary skill sets leveraged in earlier-staged
academic:corporate collaborations

13. “Building Value” Examples
1) Novel peptide synthesis technology developed
• Gap funding leveraged 5x investment by collaborative partner to
complete successful POC. In turn, this led to successive rounds of
investment.
2) Investigator pursuing most potent of 12 hits from screen
• A panel of three experts, including a medicinal chemist, pointed
out its potential toxicity and redirected the faculty member to one
of the other structures.
3) Novel molecule found to be active in mouse xenograft model
• Gap Fund Advisory Board recommended testing in second lab.
CRO failed to reproduce results, reshaping the direction and
subsequent funding.

14. Opportunities for Prospective Biotech Partners
1) Nurture personal contacts
2) Help shape discovery in areas of interest
3) Sponsor research emphasizing complementary expertise
4) Help identify sources and cooperate in securing gap funding
5) Consider contingent gap funding, with option
6) Define data that is critical to direct engagement
7) Clearly distinguish “must-haves” early in negotiations, define
an “upside” for the academic partner
8) Get behind proposed numbers to identify term options
9) Actively manage post-agreement
10) Track academic start-ups and help shape direction

15. Challenges for Prospective Biotech Partners
1) “Valley of Death” separates “what I have” from “what you
want”
2) Matching interests by indication and by stage
3) Managing expectations during engagement
4) Agreeing on the value proposition
5) Indirect costs associated with sponsored research
6) Data publication
7) IP policies: data ownership, patent prosecution
8) Tax and private-use issues: co-mingling private, public funds
9) Data reproducibility
10) Managing expectations post agreement

16. License directly into Biotech/Pharma or via Start-up?
Why an existing company? Why start-up?
Sponsored research with option Asset too early
Master Agreement in place Perceived long-term value
Asset attracts interest Licensing Asset Feasible path to POC
Complementary expertise Inventor preference
Selected Key terms Selected Key terms
Publication rights Biotech/Pharma Start-up Publication rights
IP reimbursement Equity
Ongoing IP costs paid No upfront
Upfront, milestones Milestones, fees delayed
Royalties IP reimbursement deferred
Retrieval rights Unmet Need Ongoing IP costs paid
Royalties with COC buy-out
Strongly prefer Retrieval rights
Retaining control of IP Sub-licensing rights
Collaborative arrangement

17. Bridging the “Valley of Death” requires
that individuals on both sides build relationships
and look to leverage complementarity
Yes…So, what’s different?
Growing number of institutions
are recognizing that as the key element
in the value proposition that drives deals

18. Opportunities and Challenges in Designing
Deals Between Biotech Companies and
University TTOs
Edward Lanphier
President & CEO
Sangamo BioSciences, Inc.
December 11, 2012

19. Sangamo BioSciences
• Focused on the development of a new class of human therapeutics
that function at the DNA level
• Driven by a robust ZFP product development platform
– Zinc finger proteins (ZFPs) can be designed to bind to any DNA
sequence with singular specificity
– Targeted gene regulation and gene modification
• Broad commercial applications in research reagents, transgenic
animals, agriculture, manufacturing and human therapeutics
• Significant partnerships and strong balance sheet
• Dominant intellectual property position
1/8/2013 19

20. Sangamo In-licensing
Scope of Discussion
• Early Platform Technology Licenses
• Mid Stage Platform Expansion
• Enabling / Delivery Technology Licenses
• Observations
1/8/2013 20

21. Sangamo In-licensing
Early Platform Technology License
• Large Mid Atlantic University
– Grant: Exclusive world-wide right for use with reserved right for research
– Financials
 Upfront license fee in low 5 digits, annual license maintenance fee in low 5 digits
 Mid single digit royalty on Net Sales
 Milestones, low 6 figures PI trial, mid low 6 figures PIII, mid 6 figures for BLA
approval, low 6 digits for ex-US approval
– Sublicensing
 Rights to sublicense, single digit sublicensing royalty on any up fronts received
– Intellectual Property
 Sangamo reimburses patent prosecution costs, licensor prosecutes
– Obligations
 Obligation for commercial development, penalty payments for not meeting
development milestones
– Term
 Last to expire patent rights.
1/8/2013 21

22. Sangamo In-licensing
Early Platform Technology License
• Research Institute (SD-based Medical and Research Clinic)
– Grant: Exclusive, Worldwide with right to sublicense
– Financials
 Upfront of company common stock (in the 10s of thousands of dollars value)
 Royalties: low single digit of net sales, p% of royalty on combination products
 Minimum Royalty: 10s of thousands of dollars per year
– Sublicensing
 Rights to sublicense, sub licensee has same royalty obligations
– Intellectual Property
 Institute prosecutes, licensee pays pro rated portion of fees
– Obligations
 Obligation for commercial development
– Term
 Expires when last of royalty obligations has expired.
1/8/2013 22

23. Sangamo In-licensing
Early Platform Technology License
• Research Institute (Boston-based Major Institute of Technology)
– Grant: Exclusive (except for retention of University research rights),Worldwide with
right to sublicense for all fields of use for commercial use
– Financials
 Upfront license fee: low $10s of thousands . Yearly maintenance fees - 4 digits.
 Royalties: single digit of net sales, percentage royalty on combination products
 Milestone payment of low six digits for first clinical trial
 Milestone payment of six digits for FDA approval
– Sublicensing
 Rights to sublicense, sublicense fee of low five figures, maintenance fee of mid
four digits
– Intellectual Property
 Sangamo prosecutes
– Obligations
 Obligation for commercial development
– Term
 Last to expire patent rights.
1/8/2013 23

24. Sangamo In-licensing
Early Platform Technology License & Subsequent M&A
• European Research Institute
– Grant: Non-exclusive world-wide right for use with reserved right for research
– Financials
 Upfront license issue fee in low 5 digits, license maintenance fee in low 5 digits
 Mid single digit royalty on Net Sales
 Milestones, low 5 figures PI trial, mid 5 figures PIII, low 6 figures for BLA
approval, low 6 digits for ex-US approval
• Remaining non-exclusive IP rights plus additional new IP spun out into a new commercial
entity 3 years after initial license (Gendaq)
– Sangamo purchased company in 2001 (asset purchase)
– Purchase price was ~$20M in Sangamo stock
– Sangamo has residual royalty and fee obligations on original IP grant from Research
Institution as above
1/8/2013 24

25. Sangamo In-licensing
Mid-Stage Platform Expansion
• Mid-sized Western University
– Grant: Exclusive Worldwide with right to sublicense for all fields of use
– Financials
 Upfront issuance of low 5 digit shares of Sangamo stock ($10s of thousands)
 Reimbursement of 50% of past patent costs
 Royalty of single digit of net Sales, if orphan drug states, lower single digits
 Annual maintenance fee of low 5 digits
 Mid 5 digit milestone for first patent issuing, mid 5 digit milestone for start of
PIII. Mid 5 digit milestone for BLA application.
– Sublicensing
 Rights to sublicense, sublicense fee in low 5 figures, annual sublicense fee in low
5 digits.
– Intellectual Property
 Sangamo prosecutes
– Obligations
 Obligation for commercial development. Sangamo must spend low 6 digits in
research during first 2 years.
1/8/2013 25

26. Sangamo In-licensing
Mid-Stage Platform Expansion
• Major Southern California-based Institute of Technology
– Grant: Exclusive Worldwide with right to sublicense for all fields of use except for
retained right to offer co-exclusive license to unrelated third party for Research Tools
and Diagnostics
– Financials
 Upfront issuance of low 5 digit shares of Sangamo stock
 Reimbursement of 90% of past patent costs
– Sublicensing
 Rights to sublicense
– Intellectual Property
 Sangamo prosecutes
– Obligations
 Obligation for commercial development
– Term
 Last to expire patent rights.
1/8/2013 26

27. Sangamo In-licensing
Enabling Technology License
• Government Institute of Health
– Grant: Nonexclusive world-wide right to sublicense when also licensing Sangamo’s
own IP with licensor’s approval (delivery technology)
– Financials
 Upfront license issue fee in low 5 digits, minimum annual royalty of mid 4 digits
 Single digit royalty on Net Sales
 Milestones, low 5 figures PI trial, mid low 5 figures PII, High mid 5 figures for PIII,
Low 6 digit for BLA approval, low 5 figures for annual net sales of low mid 8
figures. Mid 5 figures for annual net of mid 8 figures.
– Sublicensing
 Rights to sublicense, single digit sublicensing royalty on any upfronts received
– Intellectual Property
 Sangamo reimburses patent prosecution costs, licensor prosecutes
– Obligations
 Obligation for commercial development
1/8/2013 27

28. Sangamo In-licensing
Enabling Technology License
• Pacific Coast University
– Grant: Exclusive US-based right to sublicense for all fields of use (delivery
technology)
– Financials
 Up front licensee fee of low 5 digits, annual licensee fee of low 5 digits.
 Reimbursement of 90% of past patent costs
 Royalty: low single digit on Net Sales.
 Minimum Annual Royalties of low 5 figures
 Milestones of low 5 digits for phase 2 trail, low 5 digits for first patient in pIII.
Approval of a BLA of low 6 digits.
– Sublicensing
 Rights to sublicense but have to give University single digit percentage of
upfront consideration received
– Intellectual Property
 Sangamo pays for prosecution, institute prosecutes
– Obligations
 Obligation for commercial development
1/8/2013 28

29. Sangamo In-licensing
Enabling Technology License
• Government Institute of Health
– Grant: Exclusive Worldwide with right to sublicense for all fields of use except for
retained right for research (manufacturing technology)
– Financials
 Upfront issuance fee of low 5 digits, yearly minimum royalty in mid 4 digits
 Single digit royalty on net sales
 Reimbursement of 90% of past patent costs
 Milestones- low 5 digits on low 8 figures from P1 thru sales
– Sublicensing
 Rights to sublicense, single digit royalty on upfront
– Intellectual Property
 Sangamo prosecutes
– Obligations
 Obligation for commercial development
– Term
 Last to expire patent rights.
1/8/2013 29

30. Sangamo In-licensing
Observations
• Early stage technology licenses – determination of value /
probability of success / additional IP requirements
• Start up companies – access to capital requires exclusive licenses
• FTO / BTE / …access to capital, partnerships, M&A
• Exclusive vs. non-exclusive licenses
• Terms
• Relationship with inventors
• Patents vs. publications – authorship vs. inventorship
1/8/2013 30

32.  How to establish and nurture relationships on
both sides of the table
 How to build value and de-risk emerging
technologies
 How to improve the reproducibility hit rate

33. Academic Approaches to “Building Value”
1) Commercialization experts embedded in departments work
with faculty (Executives- and Entrepreneurs-in- Residence)
2) Prospective partners and external experts engaged ad hoc to
shape specific discoveries and set the commercial trajectory
3) Team mentoring provided to budding faculty entrepreneurs
(Chicago Innovation Mentors)
4) Corporate relation groups and Board of Trustees leveraged
5) Innovation or Gap Funds, guided by external advisory
boards, fund proof-of-concept (POC) studies
6) Technology embedded in start-ups with business leadership
and non-dilutive funding (SBIR, STTR)
7) Complementary skill sets leveraged in earlier-staged
academic:corporate collaborations

34. “Building Value” Examples
1) Novel peptide synthesis technology developed
• Gap funding leveraged 5x investment by collaborative partner to
complete successful POC. In turn, this led to successive rounds of
investment.
2) Investigator pursuing most potent of 12 hits from screen
• A panel of three experts, including a medicinal chemist, pointed
out its potential toxicity and redirected the faculty member to one
of the other structures.
3) Novel molecule found to be active in mouse xenograft model
• Gap Fund Advisory Board recommended testing in second lab.
CRO failed to reproduce results, reshaping the direction and
subsequent funding.

35. Opportunities for Prospective Biotech Partners
1) Nurture personal contacts
2) Help shape discovery in areas of interest
3) Sponsor research emphasizing complementary expertise
4) Help identify sources and cooperate in securing gap funding
5) Consider contingent gap funding, with option
6) Define data that is critical to direct engagement
7) Clearly distinguish “must-haves” early in negotiations, define
an “upside” for the academic partner
8) Get behind proposed numbers to identify term options
9) Actively manage post-agreement
10) Track academic start-ups and help shape direction

36.  How to develop rational start-up operational structures
 How to identify potential partners
 How to market technologies to potential partners
 How to develop internal or attract external funding to move
university technologies across the Valley of Death
 The role of preclinical and other studies in building value for a
technology

37. Challenges for Prospective Biotech Partners
1) “Valley of Death” separates “what I have” from “what you
want”
2) Matching interests by indication and by stage
3) Managing expectations during engagement
4) Agreeing on the value proposition
5) Indirect costs associated with sponsored research
6) Data publication
7) IP policies: data ownership, patent prosecution
8) Tax and private-use issues: co-mingling private, public funds
9) Data reproducibility
10) Managing expectations post agreement

38. Bridging the “Valley of Death” requires
that individuals on both sides build relationships
and look to leverage complementarity
Yes…So, what’s different?
Growing number of institutions
are recognizing that as the key element
in the value proposition that drives deals

39. License directly into Biotech/Pharma or via Start-up?
Why an existing company? Why start-up?
Sponsored research with option Asset too early
Master Agreement in place Perceived long-term value
Asset attracts interest Licensing Asset Feasible path to POC
Complementary expertise Inventor preference
Selected Key terms Selected Key terms
Publication rights Biotech/Pharma Start-up Publication rights
IP reimbursement Equity
Ongoing IP costs paid No upfront
Upfront, milestones Milestones, fees delayed
Royalties IP reimbursement deferred
Retrieval rights Unmet Need Ongoing IP costs paid
Royalties with COC buy-out
Strongly prefer Retrieval rights
Retaining control of IP Sub-licensing rights
Collaborative arrangement

40.  Perception of value  Ongoing research funding
 Exclusive vs. non-exclusive  Objectives/interests of
rights inventors
 Up-front fees  Milestones
 Equity  Royalties

41. Sangamo In-licensing
Scope of Discussion
• Early Platform Technology Licenses
• Mid Stage Platform Expansion
• Enabling / Delivery Technology Licenses
• Observations
1/8/2013 41

42. Sangamo In-licensing
Early Platform Technology License
• Large Mid Atlantic University
– Grant: Exclusive world-wide right for use with reserved right for research
– Financials
 Upfront license fee in low 5 digits, annual license maintenance fee in low 5 digits
 Mid single digit royalty on Net Sales
 Milestones, low 6 figures PI trial, mid low 6 figures PIII, mid 6 figures for BLA
approval, low 6 digits for ex-US approval
– Sublicensing
 Rights to sublicense, single digit sublicensing royalty on any up fronts received
– Intellectual Property
 Sangamo reimburses patent prosecution costs, licensor prosecutes
– Obligations
 Obligation for commercial development, penalty payments for not meeting
development milestones
– Term
 Last to expire patent rights.
1/8/2013 42

43. Sangamo In-licensing
Early Platform Technology License
• Research Institute (SD-based Medical and Research Clinic)
– Grant: Exclusive, Worldwide with right to sublicense
– Financials
 Upfront of company common stock (in the 10s of thousands of dollars value)
 Royalties: low single digit of net sales, p% of royalty on combination products
 Minimum Royalty: 10s of thousands of dollars per year
– Sublicensing
 Rights to sublicense, sub licensee has same royalty obligations
– Intellectual Property
 Institute prosecutes, licensee pays pro rated portion of fees
– Obligations
 Obligation for commercial development
– Term
 Expires when last of royalty obligations has expired.
1/8/2013 43

44. Sangamo In-licensing
Early Platform Technology License
• Research Institute (Boston-based Major Institute of Technology)
– Grant: Exclusive (except for retention of University research rights),Worldwide with
right to sublicense for all fields of use for commercial use
– Financials
 Upfront license fee: low $10s of thousands . Yearly maintenance fees - 4 digits.
 Royalties: single digit of net sales, percentage royalty on combination products
 Milestone payment of low six digits for first clinical trial
 Milestone payment of six digits for FDA approval
– Sublicensing
 Rights to sublicense, sublicense fee of low five figures, maintenance fee of mid
four digits
– Intellectual Property
 Sangamo prosecutes
– Obligations
 Obligation for commercial development
– Term
 Last to expire patent rights.
1/8/2013 44

45. Sangamo In-licensing
Early Platform Technology License & Subsequent M&A
• European Research Institute
– Grant: Non-exclusive world-wide right for use with reserved right for research
– Financials
 Upfront license issue fee in low 5 digits, license maintenance fee in low 5 digits
 Mid single digit royalty on Net Sales
 Milestones, low 5 figures PI trial, mid 5 figures PIII, low 6 figures for BLA
approval, low 6 digits for ex-US approval
• Remaining non-exclusive IP rights plus additional new IP spun out into a new commercial
entity 3 years after initial license (Gendaq)
– Sangamo purchased company in 2001 (asset purchase)
– Purchase price was ~$20M in Sangamo stock
– Sangamo has residual royalty and fee obligations on original IP grant from Research
Institution as above
1/8/2013 45

46. Sangamo In-licensing
Mid-Stage Platform Expansion
• Mid-sized Western University
– Grant: Exclusive Worldwide with right to sublicense for all fields of use
– Financials
 Upfront issuance of low 5 digit shares of Sangamo stock ($10s of thousands)
 Reimbursement of 50% of past patent costs
 Royalty of single digit of net Sales, if orphan drug states, lower single digits
 Annual maintenance fee of low 5 digits
 Mid 5 digit milestone for first patent issuing, mid 5 digit milestone for start of
PIII. Mid 5 digit milestone for BLA application.
– Sublicensing
 Rights to sublicense, sublicense fee in low 5 figures, annual sublicense fee in low
5 digits.
– Intellectual Property
 Sangamo prosecutes
– Obligations
 Obligation for commercial development. Sangamo must spend low 6 digits in
research during first 2 years.
1/8/2013 46

47. Sangamo In-licensing
Mid-Stage Platform Expansion
• Major Southern California-based Institute of Technology
– Grant: Exclusive Worldwide with right to sublicense for all fields of use except for
retained right to offer co-exclusive license to unrelated third party for Research Tools
and Diagnostics
– Financials
 Upfront issuance of low 5 digit shares of Sangamo stock
 Reimbursement of 90% of past patent costs
– Sublicensing
 Rights to sublicense
– Intellectual Property
 Sangamo prosecutes
– Obligations
 Obligation for commercial development
– Term
 Last to expire patent rights.
1/8/2013 47

48. Sangamo In-licensing
Enabling Technology License
• Government Institute of Health
– Grant: Nonexclusive world-wide right to sublicense when also licensing Sangamo’s
own IP with licensor’s approval (delivery technology)
– Financials
 Upfront license issue fee in low 5 digits, minimum annual royalty of mid 4 digits
 Single digit royalty on Net Sales
 Milestones, low 5 figures PI trial, mid low 5 figures PII, High mid 5 figures for PIII,
Low 6 digit for BLA approval, low 5 figures for annual net sales of low mid 8
figures. Mid 5 figures for annual net of mid 8 figures.
– Sublicensing
 Rights to sublicense, single digit sublicensing royalty on any upfronts received
– Intellectual Property
 Sangamo reimburses patent prosecution costs, licensor prosecutes
– Obligations
 Obligation for commercial development
1/8/2013 48

49. Sangamo In-licensing
Enabling Technology License
• Pacific Coast University
– Grant: Exclusive US-based right to sublicense for all fields of use (delivery
technology)
– Financials
 Up front licensee fee of low 5 digits, annual licensee fee of low 5 digits.
 Reimbursement of 90% of past patent costs
 Royalty: low single digit on Net Sales.
 Minimum Annual Royalties of low 5 figures
 Milestones of low 5 digits for phase 2 trail, low 5 digits for first patient in pIII.
Approval of a BLA of low 6 digits.
– Sublicensing
 Rights to sublicense but have to give University single digit percentage of
upfront consideration received
– Intellectual Property
 Sangamo pays for prosecution, institute prosecutes
– Obligations
 Obligation for commercial development
1/8/2013 49

50. Sangamo In-licensing
Enabling Technology License
• Government Institute of Health
– Grant: Exclusive Worldwide with right to sublicense for all fields of use except for
retained right for research (manufacturing technology)
– Financials
 Upfront issuance fee of low 5 digits, yearly minimum royalty in mid 4 digits
 Single digit royalty on net sales
 Reimbursement of 90% of past patent costs
 Milestones- low 5 digits on low 8 figures from P1 thru sales
– Sublicensing
 Rights to sublicense, single digit royalty on upfront
– Intellectual Property
 Sangamo prosecutes
– Obligations
 Obligation for commercial development
– Term
 Last to expire patent rights.
1/8/2013 50

51. Sangamo In-licensing
Observations
• Early stage technology licenses – determination of value /
probability of success / additional IP requirements
• Start up companies – access to capital requires exclusive licenses
• FTO / BTE / …access to capital, partnerships, M&A
• Exclusive vs. non-exclusive licenses
• Terms
• Relationship with inventors
• Patents vs. publications – authorship vs. inventorship
1/8/2013 51

52. Questions?

53. David C. Tiemeier, Ph.D.
Senior Director Edward Lanphier
Innovation and New Ventures Office President & CEO
Northwestern University Sangamo BioSciences, Inc.
1800 Sherman Ave., Suite 504 501 Canal Blvd.
Evanston, IL 60201 Richmond, CA 94804
Phone: (847) 467-5467 510-970-6007 (direct)
Email: david.tiemeier@northwestern.edu 415-309-4412 (mobile)
Email: lanphier@sangamo.com

54. Thank you for reading!
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