Presented as part of the session, "Best Practices in Launching a University Start-Up" for the Division of Small Chemical Business, ACS.

1. Tech Transfer From the Eye
of the Investor
Thomas M. Loarie
Executive Chairman
eMedonline
Best Practices in Launching a University Start-Up
American Chemical Society 248th Annual Meeting
San Francisco, August 10, 2014

8. Retained Rights
Clear articulation of scope is critical
▪ Publication of Research
▪ Broad or narrow, reserving
rights in other fields

9. Development and Use
Predicting the future
▪ Exclusivity
– Broad or narrow
▪ Encourage development and
use
– Milestones, progress payments
– Sublicense
▪ Breaches

10. Licensing of “Future Improvements”
▪ Enslaving a faculty member –
the licensor
▪ Vulnerability to future
competition – the licensee]
▪ Rare

11. Conflicts of Interest
▪ Student, faculty joining
company
▪ In each of my two companies

12. Broad Access to Research Tools
Advancing research
▪ Available to others for
verification and advancing
research
▪ Tools need to specified in
license
– Cell lines, reagents, animal
models, compounds

13. Enforcement Action
▪ Infringement suit - licensor

14. Export Regulations
▪ Confidential information
▪ Federal export control laws

15. Patent Aggregators
Majority of university patents are unlicensed
▪ Added value model – tech
specific
▪ Patent troll model – holds
those innovating hostage

16. Addressing Unmet Needs
University view is to improve social good
▪ Neglected patient populations
▪ Geographic areas
▪ Developing world

17. Other
▪ Royalties and future
competition
▪ Sale to dealers – royalty on
sales
▪ Pre-paid royalties
▪ Stock
▪ Flexibility
– To raise capital
– To compete and gain ROI

19. Iterate
Steve Blank’s Lean Start-up

21. Key Takeaways
▪ Global competition
▪ No cookie cutter solutions
▪ Experience ofTech & Licensing Office
– History
– Creative?
▪ Paramount considerations
– Business use and flexibility
– Institutional values
– Societal, policy, legislative issues