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LSU System Technolgy transfer history, activity & oppty

LSU System Technolgy transfer history, activity & oppty






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    LSU System Technolgy transfer history, activity & oppty LSU System Technolgy transfer history, activity & oppty Presentation Transcript

    • Nicole Baute HonoréeLSU System Director of Research & EconomicDevelopment InitiativesPresented to:LSU Transition Advisory Team – Commercialization &Technology Transfer Task Force MeetingMay 8, 2013
    • Overview Organizational Structure and Responsibilities Research & Tech Transfer Activity Metrics Key Areas for Improvement in Campus TTOs Enhancing Future Capacity and Opportunity5/8/2013 2
    • Current Organizational Structure Tech transfer offices established separately on variouscampuses, beginning in 1985 at LSU A&M Each Chancellor determines how to fund, staff, manageand evaluate tech transfer operation on that campus No centralized management of tech transfer at the Systemlevel or the R&T Foundation Campuses function separately except when sharedinvention disclosures are received5/8/2013 3
    • How does an LSU Invention Get Licensed?Campus TTOreceives InventionDisclosure fromFaculty/StaffCampus TTO reviewspatentability &marketability ofinvention, decides howto proceedCampus TTO marketsinvention, filespatents, identifiespartners, conductsdue diligenceCampus TTO negotiateslicense terms withbusiness partner, usingtemplate agreementsSystem staff reviewslicense materials forcompliance, preparesmaterials for Boardapproval andPresidential signatureCampus TTOmanages thelicense and therelationship withthe company5/8/2013 4
    • Roles & Responsibilities for Technology TransferCampus SystemChancellor defines the mission and objectives of thecampus Tech Transfer Office (TTO)Develop template agreements for campus TTOsChancellor/designee hires TTO personnel, establishesbudgets and sets performance expectationsReview proposed licenses for compliance with BoSregulations, policy and standard template language andprepares materials for BoS considerationTTO evaluates invention disclosures to determine nextsteps in commercializationManage PM-67 Process on behalf of President, for allmatters including licensesTTO retains patent counsel and manages the patentprosecution processOffer professional development & resources to campusTTOs and Research OfficesTTO markets the invention to identify potentialcommercial partnersProvide assistance to campus TTOs during staff vacanciesor upon campus requestTTO conducts due diligence to assure that the partner iscapable of bringing the invention to the marketParticipate in national organizations, provide input on keyissues and share policy information with campus TTOsTTO negotiates all types of commercialization-relatedagreementsCollect, report and distribute annual activity metrics toAUTM and other interested entitiesTTO should use standard template agreements tofacilitate the negotiation process, assure consistencywith laws & policiesTTO prepares proposed license materials for Systemreview, Board approval and Presidential signatureTTO implements, monitors and maintains the licenseagreement terms and obligationsTTO conducts outreach to faculty for continueddevelopment of disclosures and awareness of IP issues5/8/2013 5
    • LSU System Support of Technology Transfer Developed multiple templateagreements (10) for all types oflicensing transactions Licensed relational database for use byall campuses TTOs in 2006 Launched LSU Council of TechTransfer Officers Negotiated statewide license of keymarketing research tool for use byevery university in LA Engage external consultants to provideprofessional development andassistance on key issues Proposed revisions in 2010 to Bylawsand PMs relative to tech transfer Manage consolidated annual AUTMmetrics reporting Streamlined and expedited Board ofSupervisors license review process: Shifted proposed licenseagreements from Academic AffairsAgenda to the Consent Agenda Eliminated Board approval of non-exclusive license agreements Eliminated Board approval of anyproposed license which issubstantially similar to one alreadyapproved (i.e. crop varietals) Allowed campus submission toBoS of proposed agreements ifnegotiations are substantiallycomplete but not finalized5/8/2013 6
    • Significant Board Matters: Why Licenses?? In 2005, Board of Supervisors revised its Bylaws, defined licenses as“Significant Board Matters” Concern over campus TTO failure to adhere to national bestpractices, entering into agreements which created unreasonable universityliability or which did not contain due diligence for development orpayments In 2007, Board again revised its Bylaws, requested development of astandard uniform process for licensing with template agreements andanticipating less Board review In 2010, proposed draft policy revisions, developed in conjunction withSystem staff, campus tech transfer directors and the General Counsel, wererejected by three campuses and not submitted to the Board Proposed revisions update Chapter VII of Bylaws, incorporate /eliminatePM-64, revise PM-16 as a vehicle for delegating signature authority(handout)5/8/2013 7
    • Research and TechnologyTransfer Activity Metrics5/8/2013 8Inputs Outputs
    • National University Research LandscapeALL U.S. Universities 63% federally funded Total R&D $$ change One year (FY10-11): 6% Five year (FY06-11): 31% Federal R&D $$ change One year (FY10-11): 9% Five year (FY06-11): 32%LSU System 42% federally funded Total R&D $$ change One year (FY10-11): -1% Five year (FY06-11): 14% Federal R&D $$ change One year (FY10-11): 1% Five year (FY06-11): 21%NSF HERD FY2011: $65 billion academic R&D expenditures$41 billion from federal sources5/8/2013 9
    • National Commercialization LandscapeBenchmarks for Technology Transfer Activity 1 invention disclosure per ~$2.5 million in R&D Patent apps filed on ~60% of new disclosures ~25% of disclosures eventually get licensed 1 start-up company per ~$100 million in R&D ~47% of legal expenses reimbursed ~0.5% of licenses generate >$1 million Average ROI for Universities ~ 3.3%Source: Speaker Analysis of AUTM FY2011 Repot5/8/2013 10
    • $0$50,000$100,000$150,000$200,000$250,000$300,000$350,000$400,000$450,000LSU System Annual R&D Expenditures(without UNO, dollars in thousands)TotalFederalLSU AverageFed as % ofTotal : 38%5/8/2013 11
    • LSU System Invention Disclosures0204060801001201401601802002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012Actual vs. Expected Invention Disclosures(expect 1 per every $2.5 million in R&D expenditures)ActualDisclosuresExpectedDisclosures5/8/2013 12
    • LSU System Invention Disclosures, By Campus010203040506070802002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012LSU A&MAg CenterPenningtonHSC-NOHSC-SLSU-S5/8/2013 14
    • LSU System Licenses & Options Signed, by Campus051015202530352002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012HSC-SHSC-NOPenningtonAg CenterLSU A&M5/8/2013 15
    • Start-up Companies based uponLSU System Inventions012345672002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012Actual Start-upsExpected Start-upsExpect 1 start-up company for each ~$100 Million R&D5/8/2013 16Express License forFaculty Start-ups(ELFS) templateagreement launched12/2012 to furtherincrease start-ups
    • LSU System License Income & ROI(licensing income as % of R&D expenditures)0.00%0.50%1.00%1.50%2.00%2.50%3.00%3.50%$0$2,000,000$4,000,000$6,000,000$8,000,000$10,000,000$12,000,000$14,000,000ROILicensingIncomeAvg. University ROI: 3.3%5/8/2013 17
    • LSU System License Income, By Campus$0$1,000,000$2,000,000$3,000,000$4,000,000$5,000,000$6,000,000$7,000,000$8,000,000$9,000,000$10,000,000$11,000,000$12,000,0002002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012LSU A&MAg CenterPenningtonHSC-NOHSC-SHome Run: AgClearfield RiceHome Run: Ag Cotton5/8/2013 18
    • LSU System License Income, without “Homeruns”:Scale Changes Entirely-$200,000$0$200,000$400,000$600,000$800,000$1,000,000LSU A&MAg, w/o HomerunsPenningtonHSC-NOHSC-S5/8/2013 19
    • LSU System Campuses:Tech Transfer Office Staffing Levels(System total FTE in white box, year office launched in legend)0123452008 2009 2010 2011 2012LSU A&M (1985)Ag Center (1986)Pennington (2000)HSC-NO (1999)HSC-S (2001)LSU-S (2006)5/8/2013 21
    • Looking to the Future5/8/2013 22
    • Key Areas for Improvementin Campus TTOs Implement best practices in operations, agreements andaccounting (address common audit findings, next slide) Maintain coordinated and consistent data management Enhance faculty outreach to increase activity Consistently use template agreements Rely on legal expertise for complex arrangements Hire trained staff with significant experience Establish better linkages with industryrelations, sponsored research and economic developmentoffices5/8/2013 23
    • Internal Audit Findings:Campus Tech Transfer Office IssuesCommon, pervasive deficiencies found in all campus techtransfer offices include: Lack of proper due diligence regarding the suitability ofpotential licensees and of proposed agreements Lack of adequate intellectual property valuation practices Lack of licensee performance monitoring to ensure adequateprogress in commercialization Lack of invoicing and collection of amounts due to university inaccordance with the terms of executed contracts Lack of proper management of conflicts of interest andconflicts of commitment Lack of sufficient campus attention to key performancemetrics5/8/2013 24
    • Potential Organizational, Policy & Procedural Changes Implement key changes in Bylaws, as per 2010 proposal, including approval ofagreements at a level below the Board of Supervisors More effectively use R&T Foundations, university research parks and incubatorsaround the state Inventory current campus TTO expertise and resources to determine potential forgreater sharing and identify additional needs Obtain access to expanded and specialized legal expertise Require regular and consistent use of all aspects of KSS database- Data tracking - Financial Accounting - Marketing- IP bundling - Agreement monitoring - Faculty contacts Provide enhanced educational opportunities and/or mentoring of new staff andgreater involvement in AUTM5/8/2013 25
    • LSU Must Expand Commercialization EcosystemSource: Malakoff, D. “The many ways of making academic research pay off”. Science, February 15, 2013.5/8/2013 26
    • Discussion & Questions5/8/2013 27