Global Nano Conference at NASA
IP Panel, October 17, 2002
John Fraser
Director, Office of Technology Transfer
The Florida State University
Tallahassee, Florida
Copyright 2002, FSU
Three Points
–
Has anything of commercial value come
from a campus ?
–
How does the techtransfer system work ?
–
University / Corporate Issues
Has anything of commercial value
come from a campus ?
YES !
University inventions in daily use
FOOD
–
Pablum
-
U of T
–
Strawberries
-
U of Calif.
–
Vitamin D in Milk
-
Wisconsin
–
Gatorade
-
U of Florida
–
Hybrid Corn
-
U of Iowa
-
70%
HEALTH
–
Hepatitis B Vaccine
-
SUNY, U of Calif.
–
CEA
-
Cancer Diagnostic
-
Cancer of the Bowel
-
McGill
–
Nicotine Patch
-
U of Calif.
–
Insulin
-
U of T
–
MRI
-
Oxford
University inventions in daily use
BIG HITS
–
Netscape Browser
-
U of Illinois
–
Rat Poison
-
Warfarin
–
Biotechnology Patents
-
U of Calif. & Stanford
–
3TC
-
AIDS
-
McGill
–
Synthetic Taxol
-
Florida State U
How does the techtransfer system work?
AUTM Data FY1991
-
2000
Created by Lou Berneman (UPenn)/ altered by John Fraser (FSU)
100,000 disclosures
(discoveries)
$200B +
Research
Opportunity
Assessment
(Triage)
50,000
Patent Applications
25,000 Licenses
3.1 % of Research Base
50% < $ 10k cum
0.6% > $ 1 M/yr.
2,500 Start
-
ups
$2M : 1 disclosure
•
Commercial potential
•
Technical advantages
•
Protectability
•
Inventor profile
Only 50% of disclosures
Only 25% of disclosures
Positive exit (liquidation
)
2.5%
License Income
University / Corporate Issues
Learn from Biotechnology Industry Evolution
(also founded on university inventions)
1978
-
following
Stanford, UCalif. Patents issued
–
100’s of non exclusive Patent licenses
Enormous numbers of technology
-
driven, scientist
-
lead boutique
companies
Waves of VC funding
1st product in market from Eli Lilly (Humulin)
Partnerships with big Pharma
Consolidations/mergers
Patent battles
Learn from Biotechnology Industry Evolution
(also founded on university inventions)
25 years later
$ 18 billion in biotech product sales ( = one big Pharma)
market driven
array of small, medium, large firms
foundation for new technologies / markets
–
proteomics, genomics,
–
personalized pharmaceuticals
University / Commercial Issues
Cultural differences: Corporate setting
–
employee owns nothing, company owns inventions
–
successful commercialization, employee rarely shares
–
emphasis is on control of information, not publication and
diffusion
–
contract with third parties is a “Work for Hire”
University Setting: The opposite
University / Commercial Issues
The techtransfer deal
–
faculty member assigns so university owns
•
major issues around ownership
–
university patents / shares revenues with faculty
–
deal is for very early stage, untested technology with
possible commercial promise
•
license, with piece of upside, no downside, related R&D
contract, due diligence
•
start
-
up companies more common (<10% U equity)
University / Commercial Issues
The techtransfer deal (continued)
–
background IP (licensed),
–
foreground IP (ownership negotiated)
•
available to company for commercial purposes
•
available to university for educational/research
–
future IP (negotiable)
–
look upon it as a marriage with phases
-
courtship,
honeymoon, shared raising the kids, growth or divorce
-
always need flexibility
Wrap Up
Universities will contribute to Nano industry growth
University techtransfer process maturing
Learn from Biotech Industry
Small shared risk, small shared reward
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