Executive Director, James G. Baxendale, MS, MBA SOM KUMC March 30, 2009 A New Model for Technology Commercialization at The University of Kansas KU Center for Technology Commercialization (KUCTC)
2 Why Combine Tech Transfer Offices? Unify and standardize tech transfer processes and policies across the University Leverage best practices of both organizations Coordinate interactions with business, economic development and government leaders Reduce duplication of resources and better leverage resources Support research collaboration across campuses Create additional funds for investment in university research and graduate education initiatives
3 What is the KUCTC? The new technology commercialization entity for all KU campuses A separate 501(c)(3) non-profit organization Jointly controlled by the KU Center for Research and the KU Medical Center Research Institute Has its own Board with the Provost as the Chair Thirteen members on the Board consisting of University administration, KUMC and Lawrence faculty, and Lawrence and Kansas City community leaders Offices on the Lawrence and KUMC campuses Executive Director and Licensing Associates travel to both campuses Has its own corporate counsel
4 KUCTC: Mission Statement Mission: To maximize the impact of University intellectual property for the benefit of the University and society
5 KUCTC: Goals Ensure public benefit through commercialization of inventions created at KU Ensure inventor satisfaction with technology commercialization process Enhance recruitment and retention of faculty, staff and students by providing top quality technology commercialization services Provide educational opportunities for students, staff and faculty about the commercialization of intellectual property Participate in regional and state economic development Facilitate collaborative research projects Generate revenue to support research and graduate education
6 KUCTC: Board Structure and Composition Establish overlapping board from functional RI and KUCR Boards »Chair of the Board = Provost »Membership includes: KUMC Vice Chancellor for Research and the KU Vice Provost for Research and Graduate Studies Representation from business people on RI and KUCR boards »Bi-campus faculty representation »Bi-campus community representation
7 KUCTC: Reporting Structure Executive Director reports to Provost who is responsible for KU technology commercialization Operational reporting to KUMC Vice Chancellor for Research and KU Vice Provost for Research and Graduate Studies Licensing Associates & Licensing Assistants »Report to Executive Director »Co-located on both campuses »Deployed across campuses as needed Interns and Externs on both campuses
8 Tech Transfer Website
9 Technology Commercialization Process Disclosure of invention Initial evaluation and market research Patentability Search Commercialization strategy File patent/copyright/trademark Potential enhancement of technology Material Transfer/Research Agreements Out licensing or Company spin-off
10 Functions of Technology Commercialization Ensure public benefit from KU research through commercialization of inventions created at KU Negotiate various contracts/agreements Promote collaborative research Facilitate the protection of intellectual property Educate faculty and students in intellectual property Assist with retaining and recruiting faculty Generate revenue to support research and graduate education Participate in regional and state economic development
11 Technology Commercialization Activities Facilitate Proof of Concept Collaborations with Industry Perform Economic Development Outreach Assist with Faculty Retention and Recruitment Market Technologies to Out-license Coordinate Intellectual Property Protection Prepare/Negotiate License Agreements Prepare/Negotiate Option Agreements Education of Faculty/Staff/ Students Review of Faculty Conflict of Interest Management Plans Interpret and Assist in the Development of IP Policy Consult on IP Clauses in Research Agreements Facilitate Invention Disclosure Meetings and Assess Technology for Commercial Potential Review Start-up Company Business Plans Promote Entrepreneurship Across Campus Prepare/Negotiate Material Transfer Agreements Prepare/Negotiate Inter-Institutional Agreements Prepare Internal Royalty Distribution MOU Prepare/Negotiate Company Formation Documents and Securities Agreements Diligence Review of Licensees Public Education and Relations Prepare/Negotiate Term Sheets Prepare/Negotiate Confidentiality Agreements 09/08 Assist with Development of Consortia Agreements
12 Current Statistics 640+ faculty/staff/students participated in invention disclosures during past 10 years Cumulative revenue of over $16M in the last 10 years 19 active equity positions 20 active start-up companies 92 licenses signed during past 10 years, 32 with Kansas-based companies annual invention disclosures on average
13 Issues for KU Start-ups Management Capitalization Market Product/Services KU Equity/Royalty License Agreement Business Incubator Needs
14 Active Start-Up Companies Cadstone – Electronic design automation development tools Computerized Assessment and Learning – Online testing program Crititech – Particle-size reduction techniques for pharmaceuticals CyDex – Compounds that improve drug solubility DAR Corporation – Aeronautical design software e-Learning Creations – On-line certification for K-12 special education Flint Hills Scientific – Automated seizure detection and prediction Immunogenetix Therapeutics – Prevention / treatment of HIV infection ImmuPep – Modulating the immune and inflammatory responses to treat disorders of the immune response Institute for Community Health & Development – Internet-based community development tool
15 Active Start-ups Companies (Cont…) NephroGenex – Treatment of end stage renal disease Relive for Kids – Educational software to assist children in managing severe headaches Savara Pharmaceuticals – Platform technology with broad applications in respiratory medicine, vaccines and other therapeutics TerraMetrics – Large scale agricultural remote sensing research TVAX BioMedical – Method for mobilizing the human immune system to kill cancer cells and reject growing cancers XenoTech – Develop pre-clinical drug safety information (recently acquired by Sekisui Chemical Group) KCBioMedix – Neonatal medical device Kansas Analytical Systems – Compound analysis by nuclear magnetic resonance imaging Arcademia – Educational software games Neo Abacus – Software for tagging SEC financial reports
16 Nursing – Videotapes for addressing congestive heart failure rehab Chemistry – Compounds as anti-cancer drugs, glucose sensor Business – Software to tag financial data for customized reports Journalism – Software and web design for presenting the news Education – Distance education modules, software tools for teachers Biodiversity Resource Center – Predictive software for invasive species Civil Engineering – Energy-efficient wall panel Life Span Institute – Medical devices for premature infants Mechanical Engineering – Synthetic functional spine Aerospace Engineering – Fiber design software, UAV ITTC – Communication system for remote regions, RFID Higuchi Biosciences Center – Inhalation drug delivery technique Architecture – Copyrighted building plans Physics – Instrumentation to detect defects in semiconductor coatings Medicine – Software algorithm to predict epileptic seizures Occupational Therapy – Stroke rehab device Breadth of Invention Disclosures
17 Examples of Marketplace Products Abilify – antipsychotic drug CAL – Online testing/ assessments for teaching/ learning processes Captisol – improves solubility Cerebyx – antiseizure drug Community Tool Box – Internet based community development tool Distance Education – modules for special education certification Dual Diagnosis – training videos Force Plate Actimeter – records/ scores finer scale movement/ activities Geodon – antiseizure drug Hot Tip Catheter – device for sleep apnea, GERD, tissue ablation, etc. Implantable Glutamate Biosensor – enzyme based sensor for glutamate N-trainer System – teaches feeding in premature infants Profusion – Internet meta search engine QuizStar – software teaching tool Stroke Impact Scale – measure stroke rehab progress Swept-Step Radar – detection/range determination device Vfend – antifungal drug VidWatch – broadcast monitoring software
18 Educational Initiatives Co-hosted two (2) National Collegiate Innovators and Inventors Alliance (NCIIA) seminar events Technologies are supplied for Business Plan competitions to KU and UMKC Schools of Business Full year law externships for KU and UMKC law students KUCTC/OTDD Translational Research symposium Undergraduate and Graduate Engineering student IP presentations Teacher Tech 2008 internship, Uplink/Ewing Marion Kauffman Foundation Global Entrepreneurship Week, Ewing Marion Kauffman Foundation Technology showcases and IP/Commercialization seminars
19 Outreach KC 2009 Year of Innovation Steering Committee Student inventions i.e. graphic design External entrepreneurs i.e. Kansas State Trooper Science Pioneers Fair, Kansas City, MO; Oct. 25, 2008 Tomahawk Elementary School, Overland Park, KS; Nov. 17, 2008 Children’s Mercy Hospital Tech Transfer Director Search Committee NSF Partnerships in Innovation Grant participant
20 Protecting Intellectual Property Patents Copyrights Trademarks Trade Secrets under CDA’s (NDA’s)
21 What is Patentable? Products Processes Plants Designs Applications not just ideas
22 Patent Basics Demonstrate novel Demonstrate utility Demonstrate nonobviousness Prevent others from making, using and selling invention Costs
23 Patent Process Original and authentic inventor Duty of candor Enabling disclosure Specifications Claims Response to rejection
24 Lab Books/Inventor Records Keep complete, detailed recordsKeep complete, detailed records first idea through commercial products Describe the invention clearly-Describe the invention clearly- words, photos, graphs, drawings, etc. Explain operation or use fullyExplain operation or use fully WitnessedWitnessed by trustworthy colleague “Read and understood by…” Dates noted, signed in inkDates noted, signed in ink
25 Copyright Protect the work not the ideas Ownership i.e.; work for hire, payment Licensable as intellectual property Length of protection Original works of art, manuscripts, etc. KU property, within scope, except scholarly works
26 Copyright (2) Informs the public that works are copyrighted Identifies the copyright owner Determines the date work was published Emblem C, the letter C in a circle, the word Copyright or “Copr.” followed by the date and name of owner Omission of notice: »a. Cured if registration obtained within 5 years »b. Affix notice to remaining copies
27 Trademarks Common Law Trademark- once a trademark is used in connection with a product so that consumers have come to identify the trademarked goods as originating with the owner. Federal Registration »a. gives nationwide notice »b. after 5 years, subject to cancellation only on limited grounds »c. filed on the basis of “actual use” »d. filed on the basis of “intent-to-use” »e. must have sales in two or more states
28 Trademarks (2) Colors: red on the heels of shoes, red on bowling pins, pink for Owens-Corning fiberglass Pictures and Symbols: Nike “swoosh” and silhouette of Michael Jordan flying through the air Numerals and Letters: MG, RCA, CBS, 707, 7-eleven and AAA Label and Package Designs: color, shape and design but only those distinctive features which function as an identification of origin may be used as a trademark., i.e. COKE bottle Slogans: must be used to associate a particular product with a particular product in the mind of the public
29 Jim Baxendale, Executive Director KU Center for Technology Commercialization Web: Lawrence campus: Youngberg Hall 2385 Irving Hill Rd. Lawrence, KS Tele: 785/ Fax: 785/ Medical Center campus: Wescoe Pavilion, M.S Rainbow Blvd. Kansas City, KS Tele: 913/ Fax: 913/