Global Nano Conference at NASA

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Dec 5, 2012 (5 years and 10 months ago)

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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