University Intellectual Property Offices as Focal Point Dar es Salaam, Tanzania, June 2000 Sponsored by the World Intellectual Property Organization &

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Presentation transcript:

University Intellectual Property Offices as Focal Point Dar es Salaam, Tanzania, June 2000 Sponsored by the World Intellectual Property Organization & Government of Tanzania © Wayne H. Watkins 2000 Wayne H. Watkins Utah State University

Utah State University Office of Technology Commercialization MISSION STATEMENT THE MISSION OF THE UTAH STATE UNIVERSITY OFFICE OF TECHNOLOGY COMMERCIALIZATION IS TO BENEFIT THE PUBLIC, THE UNIVERSITY AND ITS FACULTY BY TRANSFERRING RESULTS OF UTAH STATE UNIVERSITY RESEARCH INTO SOCIETY VIA LICENSING AND NEW BUSINESS DEVELOPMENT.

Success Criteria for Exploiting Research Intellectual Property Research Capacity Vision Commitment Administration Support Organizations

Relationships with the Inventor Importance of Inventor Support Resource Materials for the Inventor Seminars Establishing a Presence Who Serves Who

Inventor Resource Materials Policies Brochures Patent Information Newsletters Disclosure Forms

Establishing a Presence Attend Faculty Meetings and Presentations Walking the Halls One on One Institutional Presence

Seeking Intellectual Property Protection Use of On-line Data Bases Use of Professionals/Attorneys Industry Networking Publication Factors Assessment of the Protection

Patent Attorney Relationships Role Selection Costs Communication

Assessing Commercial Viability of the Intellectual Property Industry Contacts Patent Review Committees Professional Services Common Sense

Commercial Exploitation Alternatives License to Mature or Startup Businesses Assignments Royalty vs. Equity

Licensing Issues Anatomy of a License Licensing Checklist Valuation, Royalties & Fees Benchmarking License Monitoring

AUTM Indices New Products Introduced 364 New Companies Formed $33.5 Billion Economic Activity/Licensing 280,000 Jobs $3 Billion Taxes Generated 17,088 Active Licenses and Options

Research Expenditures 1998 $24,4 Billion (up 7% from prior year) $15.3 Billion from U.S. Federal Government (5% increase) $2.4 Billion from Industry (9% increase)

Invention Disclosures ( )

AUTM Patent Related Activity ,784 Invention Disclosures (4% increase) 4,808 New U.S. Patents filed (13% increase) 3,224 U.S. Patents Issued (22% increase)

Number of Patents Issues

AUTM Start-up Activity Since 1980, 2,578 New Companies formed based on academic licenses (364 in 1998) Equity Interest acquired in 272 transactions in 1998 (up 8%)

Business With Utah State University Origins 81 PLUS COMPANIES EMPLOY APPROXIMATELY 1,250 ESTIMATED ANNUAL REVENUES OF $134,000,000

AUTM Licenses and Options ,668 new licenses and options (up 10%) – 63% with newly formed or small business – 37% with large companies – 54% exclusive - 46% nonexclusive – 92% to startups were exclusive – 50% to large companies were exclusive

License & Option Agreements

AUTM License Income ,460 License/options yielded income $725 Million in license revenue (19% increase from 1997) – 78% earned on product sales – Remainder from cashed in equity, milestones & fees

Royalty Income

AUTM Significant Technologies 1998 Storm Vision - storm predictor (MIT) Panretin - topical treatment for AIDS (Salk) Quad 7 - lower cost weed control (NDSU) Taxol - cancer drug - new synthesis reduces cost - (FSU) Genetic marker test to identify spider lamb syndrome in sheep (USU) Fast ForWord - courseware to remediate learning difficulties (Rutgers, UCSF)

Utah State University Key Commercial Technologies Image Compression (MRVQ) Ultra-High Temperature Treatment of Foods Genetic Marker for Lean Lamb Gene 23 different barley, grass and wheat varieties Over 100 instructional materials for children with disabilities Infant Hearing Impairment Assessment Systems Aggie Ice Cream

Related Agreements Options to License Agreements Confidentiality Agreements Material Transfer Agreements Research Agreements

Core Resources for a Technology Transfer Office Handout

Professional Organizations Association of University Technology Managers (AUTM) Licensing Executives Society (LES) Association of University Related Research Parks (AURRP) National Business Incubator Association (NBIA) Various Venture Capital and Financing Organization

Case Studies

The Challenge The Opportunity