Global Nano Conference at NASA

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