1. Role of the UC Technology Accelerator (UCTAC) Pathway to Technology and Research Commercialization at UC Dorothy Air, UCTAC Geoffrey Pinski, UCTAC Jim Heitner, UCTAC March 3, 2016 Advanced Research Series

2. This Session Covers the UCTAC responsibilities in… Commercializing UC Inventions and Discoveries Protecting Intellectual Property for Commercialization Commercialization Funding Sources Starting UC IP-based Start-up Company Working with Industry re: UC grants and IP Making and Selling Products

3. What is the UC Technology Accelerator for Commercialization? The UC designated office with the authority to represent UC inventions/IP Formerly known as the Intellectual Property or Technology Transfer Office Represents UCs new model in which commercialization is the intended outcome and IP protection and technology transfer are supporting functions

4. Why the Change to a New Model? More accurate reflection of growing expectations of research universities and role in economic impact Legal obligation to Federal and State Government to produce outcomes based on funded research Ability of university research programs to create base for new products and entirely new industry clusters 4

5. Famous University-Derived Products ProductInventing Institution BenadrylUC InsulinToronto Vitamin D FortificationWisconsin BreathalyzerIndiana Fluoride ToothpasteIndiana PacemakerMinnesota Seat BeltMinnesota GatoradeFlorida Tifway, Tifgreen, other 'Tif' grassesGeorgia CAT ScanGeorgetown Canine Parvovirus VaccineCornell Kennel Cough VaccineIowa State Emtriva (HIV Drug)Emory NetscapeIllinois GoogleStanford 5

6. Commercializing IP is Complicated UC Technology Accelerator for Commercialization (UCTAC) is your “GPS” to help navigate 6

7. Commercialization Pathways and Responsibilities UCTAC –Licensing of UC IP to an existing company –Forming and licensing UC IP to a start-up UCTAC & UCRI –Selling products & services UCRI –Consulting & training services

8. Making Commercialization of IP Happen… OVERVIEW OF UCTAC Services all colleges with a centralized infrastructure for easier navigation Provides a highly skilled team with scientific, business, and legal expertise, and a blended understanding of industry and academia Provides all patent, licensing and commercialization functions for UC IP Facilitates transfer of research tools (mice, cell lines, antibodies, etc.) Employs professional processes for evaluating, selecting and moving promising technologies toward commercialization Provides access to strategic external resources (entrepreneurs-in- residence, gap funding, industry guidance, external resource connections) 8

9. Commercialization Process Overview a)Research b)Disclose c)Assess d)Protect e)Marketing / Startup f)License g)Product h)Reward

10. UC IP Commercialization Considerations Goal is to transition UC research innovation into technology-based opportunities that benefit society as new products, practices or services Best Commercialization Path: considers the technology, IP position, market opportunity, required resources, funding potential, ability to find partners, and faculty interests 10

11. Starting Point - Invention Disclosure Per State of Ohio Law: Ohio universities own discoveries, inventions, or patents that result from university research or investigation. Generally applies to all employees, students, and volunteers, depending on scope of employment and use of resources. However… 11

12. …UC and Inventors Share in Proceeds UC policies exist for distribution of proceeds from out-licensed IP to reward the inventors for their contributions Income total from all licensee payment forms (e.g. fees, milestones, royalties) 12

13. UCTAC Disclosure & Assessment Process 1.Contact UCTAC with any questions (www.ipo.uc/edu)www.ipo.uc/edu 2.Invention disclosure form (IDF) submission 3.Commercial potential questionnaire (CPQ) submission 4.UCTAC review of submitted IDF and CPQ 5.Market and prior art report 6.Decision on pursuing patent protection 7.Prep/filing of provisional patent application 8.Prep/filing of non-provisional patent application 9.Prosecution of non-provisional patent application w/ PTO’s 10.Marketing/licensing of patents and/or start-up formation InventorUCTACOtherTime ♦ ? ♦ ? ♦ ~1 wk ♦♦ ~4 wk ♦♦ ? ♦♦ ~1 wk ♦♦♦ ~4 wk ♦♦♦ Years ♦ ? “T-zero” 13 Yes/No Decision

14. Understanding Intellectual Property Protection Patents – Useful, Novel, Non-Obvious Tangible Research Materials – Valuable, Complicated to Produce Copyrights – Software, Creative Works Trade Secrets – Processes Trademarks 14

15. Rights and Duration of Different IP Gives you the right to exclude others –Trade Secret –> unfair use –Trademarks –> confusion or dilution –Copyright –> unfair use or copying –Patents –> making, selling, offering for sale, importing For a length of time –Trade Secret –> as long as it’s a secret –Trademarks –> as long as it is used in commerce –Copyright –> life of the author + 70 –Patents –> 20 years from filing 15

16. A Note of Caution: Preventable Barrier to Commercialization in Universities Issue: Presenting or publishing an invention publicly prior to the filing of a (provisional) patent application with a patent-granting agency. Consequence: Destroys international filing eligibility, and perhaps US filing too, by becoming “prior art” in respect to novelty requirements 16

17. UCTAC: Commercialization Pathway Through Existing Company Licensing Not Everything is a Start-up What is involved: Licensing is analogous to renting –A license agreement is in its simplest form a rental of IP to a licensee –Universities generally don’t sell IP. They lease it. UCTAC Functions –Opportunity assessment for a license Type of technology Status of IP Platform vs. Single technology Relevance to and expressed interest by industry State of development Time and cost to market –Commercialization strategy assistance –Marketing of technology to identify potential licensees –Licensing negotiations to achieve best outcome for industry, university and faculty 17

18. UCTAC: Commercialization Pathway Through a Start-up Company UCTAC Functions: Opportunity assessment for a sustainable start-up Commercialization strategy assistance Start-up company guidance Developing and connecting to entrepreneurial resources –Investment Capital –Incubators –CincyTech Entrepreneurial Signature Program –Business advisors and mentors –Industry Contacts Networking opportunities University-industry collaboration support related to the invention Grant writing assistance for state and federal grants with commercialization requirements Faculty entrepreneurship training programs 18

19. UCTAC Commercialization Resources Dedicated staff for doing commercialization assessment, developing initial business case, and assisting in design and project management to advance commercial potential –Technology Transfer/Intellectual Property Staff –Entrepreneurs-in-Residence Team Gap Funding to develop early stage technologies –$25,000 - $40,000 Awards – on a competitive basis Established RFP, Review, Selection Processes to capture promising commercialization opportunities Connections to Other Funding Resources 19

20. Connections to Funding Resources Funding LevelsRisk FocusBusiness ModelEntity UCTAC Gap Fund CCTST Pilots ≤$40K, $100K Critical Commercial Path Applying research knowledge to clinical problems EarlyUC Community and State Grants $1 - $250KCritical Commercial PathEarly - DevelopingUC, Individual, Company Federal Grants$100K - $MMTechnology RiskEarlyUC, Company Angel Investors$100K - $1MTechnology / Business RiskDevelopedCompany Venture Capital<$3MTechnology / Business RiskDemonstratedCompany Strategic Corporate and Foundation VariesTechnology vs. Corporate objectives NoneUC, UCRI, Company Sell Services and ProductsVariesLegal, Technology, Business VariesUCRI, Company

21. UCTAC and UCRI Working with Industry UCTACUCRI UC Intellectual Property Involved √ Faculty Consulting and Training √ Selling Tangible Product or Providing Service out of Lab (No IP) √√ Using Lab Personnel √√ Using Outside Personnel √√

22. Making and Selling Products at UC UCTAC – Facilitates protection of UC’s rights in the materials being “sold” –Determines the right strategy of the transfer (e.g., at cost, free, income) UCRI –Facilitates and manages any associated training or consulting around such sales and transfers

23. We Hope You Remember… Invention Disclosure submission is the key starting point Publishing can kill patent opportunities, if unprotected Ask for advice before: –Giving presentations to protect proprietary information –Engaging with Industry –Starting a business at UC We want you to succeed 23

24. March 15: HCDC Business Showcase & Innovation Village at Xavier April 5: Next NIH SBIR/STTR Proposal Closing Date April 20: UC Innovation Entrepreneurship Expo (Including Innovation Shark Tank) May 12: UCTAC Bench to Commercialization Series: How Do I Know If My Technology is Valuable? Spring TBD: UCTAC Gap Fund RFP email Jim.Heitner@uc.edu for more infoJim.Heitner@uc.edu UC Commercialization Calendar

25. Contact US To start connecting with our team Visit 240 University Hall Visit Staff Directory at http://www.ipo.uc.edu/index.cfm?fuseaction=home.staf f http://www.ipo.uc.edu/index.cfm?fuseaction=home.staf f Call (513) 558-6293 25