Johns Hopkins Technology Transfer Bringing the benefits of discovery to the World. Wesley D. Blakeslee, B.S., J.D. Johns Hopkins Technology Transfer Medical School Council March 21, 2007 Technology Transfer At JHU: Myths, Misconceptions, and Things You Never Knew

Technology Transfer Office Technology Transfer Office converts JHU inventions to real world products by: Technology Transfer Office converts JHU inventions to real world products by: Licensing to companies that can advance the technology, or Licensing to companies that can advance the technology, or Assisting in creation of new companies to develop the products Assisting in creation of new companies to develop the products

Emergence Of Technology Transfer As A Priority For The University

In the beginning... … prior to 1980, all inventions conceived or reduced to practice in the performance of federally funded research … were owned by the federal government.

So... Technology developed at Universities based upon federally funded research, for the most part went nowhere. Technology developed at Universities based upon federally funded research, for the most part went nowhere. WHY? - because most federally funded research is basic, early stage, and requires a serious investment in capital and time to convert to a marketable product.WHY? - because most federally funded research is basic, early stage, and requires a serious investment in capital and time to convert to a marketable product. Drugs – 7 to 10 years, $50 to $100 million. Drugs – 7 to 10 years, $50 to $100 million.

Bayh-Dole Act of 1980   Stimulate the US economy and facilitate technology transfer   Universities granted the right to elect to take title to inventions conceived or reduced to practice in the performance of a federal grant, contract, or cooperative agreement   and are obligated to...

Obligations of Bayh-Dole   Disclose each new invention   File US & international patent applications   Attempt to license inventions to develop the technology   Share license revenues with inventors   Use remainder to support research & education

AUTM Licensing Survey of 2005 $42 billion in research expenditures 10,270 new US patent applications 3,278 US patents issued 4,932 new licenses and options 628 new companies formed

JHU IP Policy As a condition of employment, Hopkins faculty and staff are obligated to report inventions made with university resources (to JHTT) and to assign title to the University in exchange for a share of net income from licensing the inventions.

Revenue sharing 35% inventor’s personal share 35% inventor’s personal share 15% inventor’s research share 15% inventor’s research share 15% inventor’s department 15% inventor’s department 30% school, 5% university 30% school, 5% university with 25/10 to school and university for royalties exceeding $300K with 25/10 to school and university for royalties exceeding $300K

Recent Example Started a new JHTT effort 6 Months: Compliance 1 technology, 3 inventors:1 technology, 3 inventors: $900,000 brought in thus far $900,000 brought in thus far Inventors share $315,000 Inventors share $315,000

How to Report an Invention Report of Invention Disclosure Form (ROI) Word and.pdf downloadable formats Soon will use online submission Enables JHTT to evaluate the invention

Why think about IP? Convert knowledge and research results to products for the benefit of the world Convert knowledge and research results to products for the benefit of the world Create value, monetary and non- monetary, for authors, inventors and academic units which support them Create value, monetary and non- monetary, for authors, inventors and academic units which support them

Myths, Misconceptions, and Things You Never Knew

Myth: JHTT is “Paid for” by F & A Myth: JHTT is “Paid for” by F & A JHTT expenses are not included in F & A calculations for Federal funding purposes (per the Controller) JHTT expenses are not included in F & A calculations for Federal funding purposes (per the Controller) Not a direct expense in support of the research missionNot a direct expense in support of the research mission JHTT is in fact paid for by the schools from their Dean’s office budgets JHTT is in fact paid for by the schools from their Dean’s office budgets

Myth: JHU Tech Transfer Does Not Make Money

FY06 Invention Accounting ($000) FY05ActualFY06ActualFY07Plan Agr. Income $8,512$10,734$9,720 Patent Exp ($5,090)($5,011)($5,020) Reimbur.$3,448$2,553$3,263 Office Exp. ($3,279)($3,379)($4,339) Net Income $3,591$4,897$3,624 Figures include extraordinary income of $292K FY05 and $3M FY06

Hollywood Accounting 40% net profit would be considered good in most businesses 40% net profit would be considered good in most businesses But Schools pay the costs and receive only small part of the revenues But Schools pay the costs and receive only small part of the revenues Distributions to inventors, research accounts and departments made “off the top” from gross receipts less only direct unreimbursed patent expenses Distributions to inventors, research accounts and departments made “off the top” from gross receipts less only direct unreimbursed patent expenses

Myth: JHTT Is Not As Good As Other Top Schools

Licenses Per Licensing Associate SchoolLicensing AgtsAgts/TLA U. Wisc MIT JHU Cornell Stanford U. Ill. Chi U. Cal U. Wash JHU actual 2005

Percent Of Inventions Converted To Licenses Comparison To Peers AUTM 2004 School RS $$ROI’sAgts.% U. Wisc Cornell U. Ill. Chi U. Wash JHU MIT Stanford U. Cal JHU actual 2005

Income leaders Columbia - $220 M (90% from 4 technologies, no longer participating in AUTM survey) New York University - $109 M Stanford - $47 M University of Minnesota - $45.5 M WARF - $47 M Florida State - $14 M - royalties down from $52 M in 2002 from Taxol MIT - $25.8 M

JHU Knowledge Transfer Results for FY04 First in country in federal funding (second to entire system of California), $1.016B First in country in federal funding (second to entire system of California), $1.016B First among peers* in filing for patents on inventions disclosed First among peers* in filing for patents on inventions disclosed 4 th (last) quartile among peers in average royalty revenue per license and total revenue earned per research dollar 4 th (last) quartile among peers in average royalty revenue per license and total revenue earned per research dollar * Top 15 universities in U.S. with research expenditures over $500M and with medical schools

Reasons for relatively low $$$ Chronic under funding of Johns Hopkins Tech Transfer

Staffing: Comparison to Peers AUTM 2004 SchoolLicensing SupportResearch $$ JHU Billion U. Cal MIT U. Wash U. Ill. Chi U. Wisc Stanford Cornell JHU Current 2006

Staffing: Comparison to Peers AUTM 2004 SchoolTLA RS $$$$/TLATT $$ Bill’sMillions Millions U. Cal JHU MIT U. Wash U. Ill. Chi U. Wisc Stanford Cornell JHU Current 2006

Reasons for relatively low $$$ Basic research. Basic research. JHU/APL federal funding $1.43 Billion.JHU/APL federal funding $1.43 Billion. Nearly twice as much as next highest.Nearly twice as much as next highest. Federal dollars generally applied to basic research with no immediate commercial value.Federal dollars generally applied to basic research with no immediate commercial value.

Reasons for relatively low $$$ Low number of Reports of invention relative to research $$ (AUTM 2004) Low number of Reports of invention relative to research $$ (AUTM 2004) School RS $$ROI’sRS $$$/ MillionsROI MillionsROI U. Wisc Stanford MIT 1, U. Cal. 2, Cornell U. Ill. Chi U. Wash JHU

Reasons for relatively low $$$ Early stage inventions. Early stage inventions. Nature of research results in inventions that are basic science, far removed from a commercial product.Nature of research results in inventions that are basic science, far removed from a commercial product. Less interest by licensees.Less interest by licensees.

Reasons for relatively low $$$ Primary interest in advancing technology, not revenue Primary interest in advancing technology, not revenue Benefits of commercialization not fully understood by all faculty Benefits of commercialization not fully understood by all faculty Entrepreneurship not internally encouraged or rewarded Entrepreneurship not internally encouraged or rewarded

Increasing activity and revenue JHTT now fully open to business JHTT now fully open to business Entrepreneurial benefits recognized by increasingly larger percentage of faculty Entrepreneurial benefits recognized by increasingly larger percentage of faculty Schools understand benefits in encouraging inventive faculty Schools understand benefits in encouraging inventive faculty

JHTT Goals Improve faculty service Improve faculty service More licensing staff neededMore licensing staff needed Implement standard processesImplement standard processes Transparency for facultyTransparency for faculty Advisory services on various mattersAdvisory services on various matters

JHTT Goals Increase deal flow Increase deal flow Expand licensing staffExpand licensing staff Add flexibility to negotiationsAdd flexibility to negotiations Emphasize deals over maximum profit from each dealEmphasize deals over maximum profit from each deal Outreach to industry/licenseesOutreach to industry/licensees

JHTT Goals Increase Net Revenue Increase Net Revenue Better and quicker market/value assessmentBetter and quicker market/value assessment Increased MarketingIncreased Marketing Value per license/increased deal flowValue per license/increased deal flow Reduce expensesReduce expenses

JHTT Goals Increase Reports of Invention Increase Reports of Invention Licensing associates interact with facultyLicensing associates interact with faculty Benefits of inventions publicizedBenefits of inventions publicized On-line systems make process easierOn-line systems make process easier Customer service is a central focusCustomer service is a central focus

JHTT Goals Start ups (new ventures) Start ups (new ventures) Raise funding to advance early stage inventions to licensable status.Raise funding to advance early stage inventions to licensable status. Create companies to either develop and market product, or to be sold to larger entity.Create companies to either develop and market product, or to be sold to larger entity. Be a part of the Angel/Venture communityBe a part of the Angel/Venture community

Wesley D. Blakeslee, B.S., J.D. Johns Hopkins Technology Johns Hopkins Technology Transfer Bringing the benefits of discovery to the World.