January 2012 - Business Law & Order - James Deane


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This is the sequel to SPARK’s popular IP–1 session in October 2011. In this installment, we will provide the keys to technology licensing and university technology transfer. Mark Malven of Dykema Gossett PLLC will start by explaining the essentials entrepreneurs need to understand about technology licensing. Jim Deane from the UofM Tech Transfer Office will then talk about the many opportunities that exist for entrepreneurs to acquire cutting edge technology from universities, and how to work with university tech transfer offices.

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  • January 2012 - Business Law & Order - James Deane

    1. 1. Licensing University Technologies Jim Deane Senior Licensing Specialist University of Michigan jdeane@umich.edu 734 764 9429
    2. 2. Agenda• Tech Transfer Concepts• The University Tech Transfer Office• Denizens of a TTO• U of M’s Tech Transfer Mission• Standard Activities / Assessment• How to interact with Tech Transfer• Shopping for Technologies
    3. 3. Tech Transfer Concepts• Codified in Bayh-Dole Act (1980)• Federal Funding Drives Most University Research• Goal – Make Benefits Available to the Public• Nonprofits/Small Businesses Own Inventions Funded By NIH/NSF/DoD/NASA/etc• Obligation to Seek Commercial Partners• Enter Contracts to Launch New/Improved Products
    4. 4. Technology Transfer Offices• TTO, TTL, TLO, TMO, etc• Office of Vice President for Research• Identify, Protect and License Inventions• (Create New Startup Companies)• Manage IP-Related External Relations• Support Sponsored Contract Divisions• Educate Faculty & Staff• Professional, Experienced Staff• Accounting, Reporting Functions
    5. 5. Denizens of a TTO• Large – 25ppl, 5-8 “Professional Staff”• Small – 5 ppl, 1-2 “Professional Staff”• Licensing, (Startups), Marketing, Accounting, Legal, Support• Life or Physical Science Backgrounds• Technical, Business Experience• In-house legal review• Out-sourced patent counsel
    6. 6. U of M Tech Transfer’s Mission: “To effectively transfer Universitytechnologies to the market while generating and providing resources to encourage research, education and service for the University, the community and the general public.”
    7. 7. Standard Activities of a Tech Transfer Office Research•Written notice of invention Early contact w/TT to obtainto TT•Used for review of Assessment Pre-Disclosure guidanceprotection and Disclosurecommercialization options Assess commercial potential Assessment and protectionPatent, Copyright, Trademark, Intellectual PropertyOther Protection Decision based largely on Find or Form a Licensee market forces and dynamics Marketing/Business Planning Existing Company Marketing Find Form Business Planning Developing the License Business Formation Components Agreement in which U’s Startup rights are exchanged for License to Existing Licensing •Company develops & sells financial and other benefits Company Company research relationship Commercialization, Relationships, products •Potential Revenue, Reinvestment •Licensing revenue distributed to schools, colleges, departments, & inventors
    8. 8. Project AssessmentScience Business Licensing Specialist Legal
    9. 9. Why Work with a TTO?• Outstanding Innovations Awaiting Your Help• Patents, Copyrights, Designs, (Know-How)• Excellent Value For Money• Access to Expertise• Long-Term Relationships• Association with University Reputation• Experienced Business Professionals
    10. 10. How To Work with a TTO• Process: – Find Technology/Collaborators – Assess Readiness Level – Option (?) – Sponsored Research (?) – License! – Maintain Communication, Interaction During License Term – Launch Products – Profit!
    11. 11. Shopping for Technologies• Websites: – http://techfinder.techtransfer.umich.edu/ – http://www.ibridgenetwork.org/• Communicate with the Office – Introduce Yourself – Visit, Describe Areas of Interest – Periodic Followup Email/Calls• Monitor Patents and Publications• Target & Follow Researchers
    12. 12. Typical TTO Documents• Marketing Brochure• Nondisclosure Agreement• Patent Documentation• Option Agreement• License Agreement• Sponsored Research Agreement• SBIR/STTR Proposals/Contracts• Annual License Reports