Technology Transfer Best Practices - Georgia Tech


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Technology Transfer Best Practices - Georgia Tech

  1. 1. TECHNOLOGY TRANSFERBEST PRACTICES-GEORGIA TECHPatrick E. ReedDirector, Office of Technology ManagementLSU Health Sciences Center – New Orleans
  2. 2. • Ranked 8th in ‘09 on The University PatentScorecard™• Ranked 3rd in “Pure” software patentsand 8th in software patents overall in theDuke Law School Science, Technology, andInnovation Research Paper Series• Ranked 11th overall for tech transfer andcommercialization in the Milken Institutereport Mind to Market, 9/20/06• Inc. Magazine named Georgia Tech amongits list of the five U.S. universities knownfor turning campus-based innovations intostart-upsMENTIONS
  3. 3. FY2011•16 FTEs (5 in licensing positions)•$714M in Research Expenditures ($45Mfrom industry)•384Technology Disclosures•246 Patents Filed•79 Patents Issued•78 Licenses/Options Executed•5 Startups, over 100 since 2000•$3.8M Licensing RevenueTHENUMBERS
  4. 4. • Flexibility• Accountability• Transparency• Efficiency• Cater to IndustryBESTPRACTICES
  5. 5. • Georgia Tech Research Corporation– Separate 501(c)(3)• Performs financial, contracting, andsome personnel functions for Tech• Patent holder for Tech inventions• Faster/more flexible negotiationsFLEXIBLE
  6. 6. • Georgia Tech is bound by state law, butGTRC is not a state institutionHOWEVER…• GTRC must stand ready to assign all ofits obligations to Tech if it was dissolved–Can argue both ways in negotiations–Assessment of riskFLEXIBLE
  7. 7. • Choice of IP counsel– ~$450 for partners and ~$300 forassociates– A wide range of technical expertiseand experience– Prompt service with the possibilityof 11thhour filings– Able to accommodate inventorrequests for specific counsel• Could not delay GTRC actionsFLEXIBLE
  8. 8. • Licensing Associates responsible for aportfolio of cases from cradle-to-grave:– Evaluate and determine patent filingstrategy• Work with outside legal counsel– Market– Negotiate licenses– Execute licenses– Post-licensing complianceACCOUNTABLE
  9. 9. • Signature authority• No outside review of agreements– No formal internal review• Education is important– University Policy and Procedure,Export control, IRS regulations,basic IP law, federal researchguidelines, negotiating skills, etc.• Associates given special topic areas inwhich to become the Office ExpertsACCOUNTABLE
  10. 10. • Avoid the Invention Disclosure BlackHole…..– Keep inventors up-to-date– Explain the logic behind thedecisions you make and take painsto have them agree– If the decision is made NOT topursue an invention, make it asquickly as possibleTRANSPARENT
  11. 11. Commercialization Roadmap•Scorecard used to review an invention– Allows for a more objective review– Used as a conversation starter•Serves as the document to lay bare thedecision making process•Ultimately allows for better filing decisions– This then leads to increased patentexpenditures reimbursementTRANSPARENT
  12. 12. • GT:IPS™- Georgia Tech IntegratedProgram for Startups– Core class requirements pluselectives– Successful on-time graduation ofthe program granted access to ano-negotiation license agreement• The recently approved ELFS- ExclusiveLicense for Startups- contains many ofthe GT:IPS™ license provisionsTRANSPARENT
  13. 13. • Timely triage of inventions precludesunwise use of resources• Make no blind filings• No foreign filings on technologies thatare not yet encumbered or without avery high probability of being so• Extensive use of Knowledge SharingSystems TechTracs (KSS)- IP andAgreements database– Used on LSU’s campusesEFFICIENT
  14. 14. • If our goal is to create relationships withcompanies…BE INDUSTRY FRIENDLY!• Office of Industry Engagement:– Office of Technology Licensing(now called InnovationCommercialization andTranslational Research)– Office of Industry Contracts (nowcalled Industry Collaborations andAffiliated Licenses)– International Contracts andTechnology Transfer (new group)• A one-stop-shop serving as the “frontdoor” for industryCATER TOINDUSTRY
  15. 15. • Complete redesign of website– Licensing– Sponsored Research Opportunities– Access to Equipment and Facilities– Corporate Giving– Recruit Students– Executive Education• Made sure not to lose sight of our mainconstituents- the faculty and studentshttp://industry.gatech.eduCATER TOINDUSTRY
  16. 16. Make it easy for industry to find what they need!
  17. 17. • Each of the three offices havepermanent staff, but are cross-trained– Consistency of message– Plug-and-Play– TRUE cradle-to-grave• No downtime on an agreement or otherissue if someone is out of the office– KSS heavily relied upon in order tomaintain this seamlessnessCATER TOINDUSTRY
  18. 18. • Primary focus was maximizing industrysponsored research dollars– The majority of license agreementsonly bring in ~$10,000 over the lifeof the agreement• TTOs talk to companies all the time– LEVERAGE THIS FOR OTHEROPPORTUNITIES• Licensing is not neglected, it simply isn’trelied upon as a money makerCATER TOINDUSTRY
  19. 19. FY2011•16 FTEs (5 in licensing positions)•$714M in Research Expenditures ($45Mfrom industry)•384Technology Disclosures•246 Patents Filed•79 Patents Issued•78 Licenses/Options Executed•5 Startups, over 100 since 2000•$3.8M Licensing Revenue ($1.3M was a one-time bump from cashed in equity)THENUMBERS
  20. 20. • Updated Technology Disclosure Form– Transparent/Efficient• Website Redesign– Cater to Industry/Transparent• Created an Inventor’s Guide– Transparent• Developing a strong marketing presence– Cater to industry• Invention inventory review and triage– Efficient• Entered all information into KSS– Efficient• Hired an LSUHSC PhD as LicensingAssistant– Accountable• FACULTY OUTREACH!IMPLEMENTINGBESTPRACTICES ATLSUHSC-NEWORLEANS
  21. 21. • More than doubled disclosures over thethree previous years (individually)• Solid leads from marketing efforts• Decreased office’s expenses throughtriage and drafting provisionals in-house• Identified a manageable subset oftechnologies that are truly “active”• Re-engaged faculty in the process• Making good use of KSS and otheravailable resourcesRESULT?
  22. 22. QUESTIONS?Patrick E. Reed, DirectorOffice of Technology ManagementLSU Health Sciences Center – New