LSU System Tech Transfer History, Activity & Opportunity

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LSU System Tech Transfer History, Activity & Opportunity

  1. 1. Nicole Baute Honorée LSU System Director of Research & Economic Development Initiatives Presented to: LSU Transition Advisory Team – Commercialization & Technology Transfer Task Force Meeting May 8, 2013
  2. 2. Overview  Organizational Structure and Responsibilities  Research & Tech Transfer Activity Metrics  Key Areas for Improvement in Campus TTOs  Enhancing Future Capacity and Opportunity 5/8/2013 2
  3. 3. Current Organizational Structure  Tech transfer offices established separately on various campuses, beginning in 1985 at LSU A&M  Each Chancellor determines how to fund, staff, manage and evaluate tech transfer operation on that campus  No centralized management of tech transfer at the System level or the R&T Foundation  Campuses function separately except when shared invention disclosures are received 5/8/2013 3
  4. 4. How does an LSU Invention Get Licensed? Campus TTO receives Invention Disclosure from Faculty/Staff Campus TTO reviews patentability & marketability of invention, decides how to proceed Campus TTO markets invention, files patents, identifies partners, conducts due diligence Campus TTO negotiates license terms with business partner, using template agreements System staff reviews license materials for compliance, prepares materials for Board approval and Presidential signature Campus TTO manages the license and the relationship with the company 5/8/2013 4
  5. 5. Roles & Responsibilities for Technology Transfer Campus System Chancellor defines the mission and objectives of the campus Tech Transfer Office (TTO) Develop template agreements for campus TTOs Chancellor/designee hires TTO personnel, establishes budgets and sets performance expectations Review proposed licenses for compliance with BoS regulations, policy and standard template language and prepares materials for BoS consideration TTO evaluates invention disclosures to determine next steps in commercialization Manage PM-67 Process on behalf of President, for all matters including licenses TTO retains patent counsel and manages the patent prosecution process Offer professional development & resources to campus TTOs and Research Offices TTO markets the invention to identify potential commercial partners Provide assistance to campus TTOs during staff vacancies or upon campus request TTO conducts due diligence to assure that the partner is capable of bringing the invention to the market Participate in national organizations, provide input on key issues and share policy information with campus TTOs TTO negotiates all types of commercialization-related agreements Collect, report and distribute annual activity metrics to AUTM and other interested entities TTO should use standard template agreements to facilitate the negotiation process, assure consistency with laws & policies TTO prepares proposed license materials for System review, Board approval and Presidential signature TTO implements, monitors and maintains the license agreement terms and obligations TTO conducts outreach to faculty for continued development of disclosures and awareness of IP issues 5/8/2013 5
  6. 6. LSU System Support of Technology Transfer  Developed multiple template agreements (10) for all types of licensing transactions  Licensed relational database for use by all campuses TTOs in 2006  Launched LSU Council of Tech Transfer Officers  Negotiated statewide license of key marketing research tool for use by every university in LA  Engage external consultants to provide professional development and assistance on key issues  Proposed revisions in 2010 to Bylaws and PMs relative to tech transfer  Manage consolidated annual AUTM metrics reporting  Streamlined and expedited Board of Supervisors license review process:  Shifted proposed license agreements from Academic Affairs Agenda to the Consent Agenda  Eliminated Board approval of non- exclusive license agreements  Eliminated Board approval of any proposed license which is substantially similar to one already approved (i.e. crop varietals)  Allowed campus submission to BoS of proposed agreements if negotiations are substantially complete but not finalized 5/8/2013 6
  7. 7. 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 best practices, entering into agreements which created unreasonable university liability or which did not contain due diligence for development or payments  In 2007, Board again revised its Bylaws, requested development of a standard uniform process for licensing with template agreements and anticipating less Board review  In 2010, proposed draft policy revisions, developed in conjunction with System staff, campus tech transfer directors and the General Counsel, were rejected by three campuses and not submitted to the Board  Proposed revisions update Chapter VII of Bylaws, incorporate /eliminate PM-64, revise PM-16 as a vehicle for delegating signature authority (handout) 5/8/2013 7
  8. 8. Research and Technology Transfer Activity Metrics 5/8/2013 8 Inputs Outputs
  9. 9. National University Research Landscape ALL 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 sources 5/8/2013 9
  10. 10. National Commercialization Landscape Benchmarks 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 Repot 5/8/2013 10
  11. 11. $0 $50,000 $100,000 $150,000 $200,000 $250,000 $300,000 $350,000 $400,000 $450,000 LSU System Annual R&D Expenditures (without UNO, dollars in thousands) Total Federal LSU Average Fed as % of Total : 38% 5/8/2013 11
  12. 12. LSU System Invention Disclosures 0 20 40 60 80 100 120 140 160 180 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 Actual vs. Expected Invention Disclosures (expect 1 per every $2.5 million in R&D expenditures) Actual Disclosures Expected Disclosures 5/8/2013 12
  13. 13. Evaluating the R&D Pipeline at LSU: Worrisome Trends 0 20,000 40,000 60,000 80,000 100,000 120,000 140,000 160,000 180,000 Federal Government State and local governments Industry Major Sources of LSU System R&D Expend. 2006-07 2007-08 2008-09 2009-10 2010-11 2011-12 0 20 40 60 80 100 120 140 160 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 LSU System Invention Disclosures 0 200 400 600 800 1,000 1,200 1,400 Professor Associate Professor Assistant Professor Research Associate LSU System Faculty Employment 2005-06 2006-07 2007-08 2008-09 2009-10 2010-11 2011-12 2012-13 The desired university outputs cannot grow when the fundamental R&D inputs are declining . . . But, there are actions TTOs can take to help. 5/8/2013 13
  14. 14. LSU System Invention Disclosures, By Campus 0 10 20 30 40 50 60 70 80 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 LSU A&M Ag Center Pennington HSC-NO HSC-S LSU-S 5/8/2013 14
  15. 15. LSU System Licenses & Options Signed, by Campus 0 5 10 15 20 25 30 35 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 HSC-S HSC-NO Pennington Ag Center LSU A&M 5/8/2013 15
  16. 16. Start-up Companies based upon LSU System Inventions 0 1 2 3 4 5 6 7 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 Actual Start-ups Expected Start-ups Expect 1 start-up company for each ~$100 Million R&D 5/8/2013 16 Express License for Faculty Start-ups (ELFS) template agreement launched 12/2012 to further increase start-ups
  17. 17. 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 $14,000,000 ROI LicensingIncome Avg. University ROI: 3.3% 5/8/2013 17
  18. 18. 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 $12,000,000 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 LSU A&M Ag Center Pennington HSC-NO HSC-S Home Run: Ag Clearfield Rice Home Run: Ag Cotton 5/8/2013 18
  19. 19. LSU System License Income, without “Homeruns”: Scale Changes Entirely -$200,000 $0 $200,000 $400,000 $600,000 $800,000 $1,000,000 LSU A&M Ag, w/o Homeruns Pennington HSC-NO HSC-S 5/8/2013 19
  20. 20. LSU System Campuses: Tech Transfer Legal Fees $0 $200,000 $400,000 $600,000 $800,000 $1,000,000 $1,200,000 Annual Legal Spent & Reimbursed Expended Reimbursed 0% 20% 40% 60% 80% 100% 120% 140% 160% 180% Annual Reimbursement Percentage LSU A&M Ag Center Pennington HSC-NO HSC-S National Average 5/8/2013 20
  21. 21. LSU System Campuses: Tech Transfer Office Staffing Levels (System total FTE in white box, year office launched in legend) 0 1 2 3 4 5 2008 2009 2010 2011 2012 LSU A&M (1985) Ag Center (1986) Pennington (2000) HSC-NO (1999) HSC-S (2001) LSU-S (2006) 5/8/2013 21
  22. 22. Looking to the Future 5/8/2013 22
  23. 23. Key Areas for Improvement in Campus TTOs  Implement best practices in operations, agreements and accounting (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 industry relations, sponsored research and economic development offices 5/8/2013 23
  24. 24. Internal Audit Findings: Campus Tech Transfer Office Issues Common, pervasive deficiencies found in all campus tech transfer offices include:  Lack of proper due diligence regarding the suitability of potential licensees and of proposed agreements  Lack of adequate intellectual property valuation practices  Lack of licensee performance monitoring to ensure adequate progress in commercialization  Lack of invoicing and collection of amounts due to university in accordance with the terms of executed contracts  Lack of proper management of conflicts of interest and conflicts of commitment  Lack of sufficient campus attention to key performance metrics 5/8/2013 24
  25. 25. Potential Organizational, Policy & Procedural Changes  Implement key changes in Bylaws, as per 2010 proposal, including approval of agreements at a level below the Board of Supervisors  More effectively use R&T Foundations, university research parks and incubators around the state  Inventory current campus TTO expertise and resources to determine potential for greater 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 and greater involvement in AUTM 5/8/2013 25
  26. 26. LSU Must Expand Commercialization Ecosystem Source: Malakoff, D. “The many ways of making academic research pay off”. Science, February 15, 2013.5/8/2013 26
  27. 27. Discussion & Questions 5/8/2013 27

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