Tech Launch Arizona Tech Transfer Arizona Rakhi Gibbons, Asst. Director for Biomedical and Life Sciences Licensing

Tech Launch Arizona Tech Transfer Arizona Wheelhouse Arizona Corporate Relations Arizona Tech Parks Arizona Securing, protecting and licensing Univerity employee created intellectual property (IP) Embed network Many procedural and process changes Business domain experts advise on emerging technologies Proof of Concept (POC) and Commercial Feasibility (CFS) Programs Build strategic large consequence relationships between the UA and companies Promote an infrastructure for such relationships Leverage space to help UA research and development thrive Specific programs of interaction and company engagement w/ UA

How do companies engage UA?

Engagement Ecosystem IP LicensingInternal R&D Collaborative R&D WorkforcePhilanthropy

UA FY11 Funding Sources $611 Million

Academics Earn reputation as an individual Generate knowledge Give away knowledge Currency is publications Publications Strive for technical elegance Economic feasibility is rarely considered Funding cycle: Semester Companies Built around teams Generate products Knowledge is power Currency is profit Patents Technology is table stakes Economic feasibility is paramount Quarterly statements, product lifecycles, manufacturing cycles

Types of Agreements with Industry Service Preforming agreed upon experiments, raw data generation, no analysis Sponsored Research Preforming research based on scope of work Collaboration Jointly applying for grants or subcontracts Memorandum of Understanding (MOU) Establishing the groundwork for future research, typically non-binding Material Transfer Agreements Typically Company provides a drug or compounds for testing Licenses Transferring rights to intellectual property to established company or to new startup Options Limited license to intellectual property for evaluation purposes

Intellectual Property becomes key UA standard IP clause in sponsored research agreements Institution owns their inventions Company owns their inventions Inventions developed together is owned jointly Service Agreements No IP expected- agree to not file any patents Collaboration Agreements IP clause varies Material Transfer Agreements (incoming) IP clause typically favors the provider

Transfer of Intellectual Property Option Agreements Gives the company an opportunity to evaluate the technology as it stands to date Does not give the right to practice the technology or to sell products No promise of future technology License Agreements Can be exclusive or non-exclusive Gives company the right to use, make, sell and market products Does not promise future technology and/or improvements Research contracts can be part of the deal Consulting contracts Conflict of Interest can apply in some cases

Focus on Translational Research Federal government encourages collaborations with industry Some grants require industry partners NIH/NSF wants to patients and tax payers to benefit from research Inventions and patent rights allow for more competitive grant proposals Many proposals now require an Intellectual Property (IP) plan Economic impact is a consideration Industry sponsored grants have an expectation of IP development Important to protect your background IP UA wants to double industry sponsored research

Research Pre-Disclosure Disclosure Assessment Protection Find or Form a Licensee Existing Company MarketingBusiness Planning Developing the License Components Business Formation Licensing Commercialization, Relationships, Revenue, Reinvestment FindForm Written notice of invention to TT Used for review of protection and commercialization options Form a Company or Find One Company develops & sells products Agreement in which University’s rights are exchanged for financial and other benefits Assess commercial potential and protection Is it Patentable? What is the Commercial Potential? File Patent Application…or not Feasibility Studies & Proof of Concept Tapping the Commercialization Network Tapping the Network UA Tech Commercialization Process

UA is Proactive in working with companies Arizona Choice – simplifies IP terms and provides certainty AC #1: Non-Exclusive-Royalty Free with Exclusive Option (No fees or terms/ Time-limited option to go exclusive on commercially reasonable terms) AC# 2: Exclusive License-Royalty Free (Up to $25M/ <$25M= 1% Net Sales) AC# 3: Exclusive License- Royalty Bearing (1.5% of Net Sales) AC# 4: Assignment of Project IP

Questions? Tech Launch Arizona Website: Tech Transfer Arizona Website: Do you get our monthly newsletter?