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presented by David Day, Director & Al Marder, Assistant Director Office of Technology Licensing University of Florida Office of Technology Licensing
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The Bayh-Dole Act of 1980 u The institution may elect to own an invention made under federal funding çThe government retains a non-exclusive, non-transferable, paid up license to practice the invention on a worldwide basis on behalf of the U.S. for internal, noncommercial uses u Obligates university to proactively protect and market the technology or return to federal funding agency u The institution may not re-assign without written permission from the funding agency
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University Technology Licensing is Active and Growing ActivityFY 2000 Licenses executed4,362 Licenses generating royalties 9,059 Gross royalties$1.26B Invention disclosures13,032 US patent apps filed6,375 Sponsored research$29.5B 347 new commercial products introduced Since 1980 – 3,376 new companies Source: Association of University Technology Managers
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Importance of Industry Relationships Source: NSF Science & Engineering Indicators, 1997
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University of Florida u 23rd academic research institution u 2nd in the Southeast u 9th in US for royalty income in 2000 u 11th in number of patents u 21st among public universities for endowment assets
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Office of Technology Licensing u Established in 1985 u General Intellectual Property Mission u Specifically to transfer technologies created at UF to commercial sector for public use
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Priorities u Faculty service u Income generation u Economic development
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Duties u Evaluating new technologies u Determining patentability u Registering copyrights u Locating potential licensees u Prosecuting patents u Negotiating license agreements u Educating inventors about the process u Assisting with faculty start-ups
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UF Patent Activity FY1991- 2001 2000/01196160107 1999/ 00 166 122 52 1998/ 99 134 106 51 1997/ 98 139 68 51 1996/ 97 103 101 47 1995/ 96 90 61 34 1994/ 95 84 100 24 1993/ 94 75 66 45 1992/ 93 90 41 45 1991/ 92 74 34 50 Note: Data for patent applications filed and patents issued include new filings, continuations- in- part (CIP), continuations, divisionals, and reissues. 2000/01196160107 1999/ 00 166 122 52 1998/ 99 134 106 51 1997/ 98 139 68 51 1996/ 97 103 101 47 1995/ 96 90 61 34 1994/ 95 84 100 24 1993/ 94 75 66 45 1992/ 93 90 41 45 1991/ 92 74 34 50 Note: Data for patent applications filed and patents issued include new filings, continuations- in- part (CIP), continuations, divisionals, and reissues. Invention Disclosures Received Invention Disclosures Received US Patent Applications Filed US Patent Applications Filed US Patents Issued US Patents Issued
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Patents Received By Universities 1969-1997 1University of California System1,937 2Massachusetts Institute of Technology1,871 3University of Texas System 815 4Stanford University799 5University of Wisconsin691 6California Institute of Technology660 7Iowa State University 570 8Cornell University535 9University of Minnesota454 10Johns Hopkins University417 11University of Florida331 Source:U. S. Patent and Trademark Office, 1999 1University of California System1,937 2Massachusetts Institute of Technology1,871 3University of Texas System 815 4Stanford University799 5University of Wisconsin691 6California Institute of Technology660 7Iowa State University 570 8Cornell University535 9University of Minnesota454 10Johns Hopkins University417 11University of Florida331 Source:U. S. Patent and Trademark Office, 1999 RankUniversityPatents
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University Has Ownership of Employee Inventions When: u The invention was made while employed at UF u Invention is in the field or discipline in which the employee is employed u Invention was made with university resources
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Types of Intellectual Property u Patents u Copyrights u Know-how u Trade secrets u Trademarks
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Common Mistakes For Researchers to Avoid u Never transfer or receive materials from an outside entity without the protection of a Material Transfer Agreement çMaintains Confidentiality çDefines Intellectual Property Rights u Never discuss the enabling aspects of your research without the protection of a Confidential Disclosure Agreement
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How Does It Work at UF? Idea Invention Disclosure Form Written Disclosure Oral Disclosure Exert Waive OTL Explores Patentability & Marketability OTL Seeks Licensee & Makes Patent Decisions (120 Days)
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Technology Transfer Income FY 1988 - 2000
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Distribution of Net Licensing Revenues Inventor(s)40.0%25% Program(s)10.0%10% Department(s)7.5%10% College(s)7.5%10% RGP35.0%45% Inventor(s)40.0%25% Program(s)10.0%10% Department(s)7.5%10% College(s)7.5%10% RGP35.0%45% Net Revenue less than $500,000 Net Revenue less than $500,000 Net Revenue $500,000 or more Net Revenue $500,000 or more
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OTL Commercialization Innovations u Invested in licensing office and requiring more responsiveness u Concept business plans u Externally accepted scientific commercialization plan u Initial proof-of-principle experiments u Technology bundling u Proactive VC/entrepreneur marketing u Streamlining conflict of interest process u One-third of last years licenses were to start-ups
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Equity Participation Model 36% Tech Founder ($10.8mm) 9% University ($2.7mm) 22% Investor A ($6.6mm) 33% Investor B ($10mm) 54% Tech Founder ($3.24mm) 13% University ($.78mm) 33% Investor A ($1.98mm) 80% Tech Founder 20% University 100% Tech Founder 28% Tech Founder ($42mm) 7% University ($10.5mm) 17% Investor A ($25.5mm) 28% Investor B ($42mm) 20% Public Market ($30mm) ~$6MM Valuation ~$30MM Valuation ~$150MM Valuation License Agreement from University Investor A for 33% with $2MM Investment Investor B for 33% with $10MM Investment IPO raising $30MM No Valuation Value of Technology **Every investment accepted by the company in exchange for equity serves to establish the valuation of the company. **Every investment accepted by the company in exchange for equity serves to establish the valuation of the company.
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Successful UF Spinoffs u SunPharm $16 million market cap at 1999 sale—3X growth of shareholder value since sale u Regeneration Technologies…$240 million market cap—8X from 1998 u Ixion $28 million market cap—4X since 1999 u US Biomaterials…$25 million current valuation u Recent VC fundings/corporate deals…AGTC, Entomos, Aquagene, Ivigene u Ten UF spinoffs accepted into BDI and three into GTEC
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Commercialization Council u UF Commercialization Council Mission: Create a more vibrant entrepreneurial culture and facilitate the successful commercialization of UF- based technologies. u Council Members çUniversity of Florida Foundation çOffice of Technology Licensing çWarrington College of Business/MBA Programs çSid Martin Biotech Development Institute çSouthern Technology Applications Center
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Commercialization Council Focus Areas u Training for faculty inventor “want-to-be” entrepreneurs çBrown Bag Lunch Series – Basic and Advanced u Mentoring faculty start-ups u Funding çPrimarily Venture Capital Groups and Angels çNovember 1 Event and Road Shows
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RECRUITMENT RESEARCH PHILANTHROPY BUSINESS Maximizing The Partnership Potential
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“2000 Development Report Card for the States.” Corporation for Enterprise Development Florida Growth Environment u Royalties and Licenses…4th u Digital Infrastructure…5th u New Business Job Growth…8th u New Companies…10th u University Spin-outs…11th u Technology Companies…19th
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Critical Ingredients for a Thriving Environment u Strong, diverse research programs UF u Technology TransferOTL/Prof. Services u Business start-up facilitiesBDI/GTEC u Research ParksProgress Park u Access to capitalVC/Angel Network u ManagementRecruitment/Mentoring
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Gainesville Area New Technology Commercialization Resources Business Formation Company Launch Advice Full Service
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UF Opportunities Abound u Very little VC competition u Hands-on needed u Business plans tend to be incomplete u Very early stage u Valuations proportionately low u Huge opportunity
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Benchmarks of Success Metrics AlumniWorld leading products Companies foundedWealth created Jobs createdMost taxes paid Market value createdExport products Millionaires made Results Top three: Stanford, MIT, UC System Entrepreneurial Universities – all the top spots Oxford University study…
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