1. Technology Transfer and Assessment of Intellectual Assets Gerald J. Siuta, Ph.D. President Siuta Consulting, Inc. (www.siutaconsulting.com) Vice President for Affiliate Members Association of University Technology Managers (www.autm.net) Taiwan Technology Marketplace Taiwan Technology Marketplace International Technology Fair Taipei, Taiwan October 24, 2003

2. Association of University Technology Managers (AUTM®) Nonprofit organization founded in 1974 Nonprofit organization founded in 1974 International membership of more than 3,000 academic technology managers and business executives who manage intellectual property International membership of more than 3,000 academic technology managers and business executives who manage intellectual property Represents over 300 universities, research institutions, teaching hospitals as well as numerous businesses, government organizations and legal entities Represents over 300 universities, research institutions, teaching hospitals as well as numerous businesses, government organizations and legal entities S iuta Consulting, Inc.

3. AUTM’s Mission “To promote, support and enhance the global academic technology transfer profession through internal and external education, training and communication” S iuta Consulting, Inc.

4. AUTM’s Goals Create a broad understanding of the technology transfer process and its impact on society Create a broad understanding of the technology transfer process and its impact on society Develop and promote best practices in the technology transfer profession Develop and promote best practices in the technology transfer profession Enhance the value of AUTM membership Enhance the value of AUTM membership Communicate effectively with its members Communicate effectively with its members Make AUTM an international organization Make AUTM an international organization S iuta Consulting, Inc.

5. International Membership 1985-2002 S iuta Consulting, Inc. Does not include Canadian members (342 in 2002)

6. AUTM Educational Events Training Courses Training Courses The Basics of LicensingThe Basics of Licensing Technology Operations & Licensing SkillsTechnology Operations & Licensing Skills Advanced Topics in Licensing & Director’s ForumAdvanced Topics in Licensing & Director’s Forum Start-up Business DevelopmentStart-up Business Development Software, Multimedia & Digital MediaSoftware, Multimedia & Digital Media Annual & Regional Meetings Annual & Regional Meetings In the United States and CanadaIn the United States and Canada International Meetings International Meetings S iuta Consulting, Inc.

7. What is Technology Transfer? A legal process by which rights to an intellectual asset that is owned by an academic institution, industrial organization or an independent inventor are transferred to another organization in order to facilitate the further development of the asset and its eventual commercialization into a marketed product S iuta Consulting, Inc.

8. Why Transfer Technology? Facilitate worldwide commercialization Facilitate worldwide commercialization Generate income Generate income License execution feeLicense execution fee Milestone paymentsMilestone payments Research fundingResearch funding Royalties on net sales of productsRoyalties on net sales of products Reward and help to recruit and retain faculty Reward and help to recruit and retain faculty Promote economic development through start-up company formation Promote economic development through start-up company formation S iuta Consulting, Inc.

9. Academic Technology Transfer in North America in 2001 $31.7 Billion in research funding $31.7 Billion in research funding 13,569 New invention disclosures 13,569 New invention disclosures 1 Disclosure per $2.3 million in research funding1 Disclosure per $2.3 million in research funding 6,812 United States patent applications filed 6,812 United States patent applications filed 4,058 License and Option Agreements signed 4,058 License and Option Agreements signed 494 New company start-ups494 New company start-ups $1.07 Billion in license income $1.07 Billion in license income S iuta Consulting, Inc. AUTM Licensing Survey 2001 (Based upon data from 198 North American academic institutions)

10. Academic Technology Transfer in North America 1991-2001 $235.2 Billion in research funding $235.2 Billion in research funding 110,751 New invention disclosures 110,751 New invention disclosures 48,845 United States patent applications filed 48,845 United States patent applications filed 24,420 United States patents issued24,420 United States patents issued 32,417 License and Option Agreements signed 32,417 License and Option Agreements signed 22,937 Agreements are still active22,937 Agreements are still active 3,870 New company start-ups 3,870 New company start-ups 2,514 Companies continue to operate2,514 Companies continue to operate S iuta Consulting, Inc. AUTM Licensing Surveys 1991-2001

11. What are Intellectual Assets? Intellectual assets are issued patents, patent applications, trademarks, copyrights, trade secrets and know-how that are owned by an organization and have potential commercial value S iuta Consulting, Inc.

12. Assessment of Intellectual Assets What is the asset What is the asset How will it be usedHow will it be used What is its potential value to industryWhat is its potential value to industry Is there a potential product Is there a potential product Novel or an improvement of a marketed productNovel or an improvement of a marketed product Is there a market for such a productIs there a market for such a product What are the competitive productsWhat are the competitive products Time and cost to develop the productTime and cost to develop the product S iuta Consulting, Inc.

13. Assessment of Commercial Potential Novel product Novel product Product improvement Product improvement Competing products Competing products Market size and sales potential Market size and sales potential Advantages over competitive products Advantages over competitive products Product price and profit margin Product price and profit margin Development timeline and costs Development timeline and costs Patent status Patent status S iuta Consulting, Inc.

14. Technology Transfer Process Identify potential applications Identify potential applications Prepare non-confidential Executive Summary Prepare non-confidential Executive Summary Identify potential licensees Identify potential licensees Companies that market similar productsCompanies that market similar products Have research the same areaHave research the same area Have the capability to develop the productHave the capability to develop the product Are seeking to enhance their product pipelineAre seeking to enhance their product pipeline Identify appropriate company contact Identify appropriate company contact S iuta Consulting, Inc.

15. Pitfalls to Avoid Pursue licensing before technology is sufficiently developed Pursue licensing before technology is sufficiently developed Publish before filing patent applications Publish before filing patent applications File patent applications too early File patent applications too early Fail to file patent applications worldwide Fail to file patent applications worldwide Mistake new use for new product Mistake new use for new product Overestimate the value Overestimate the value S iuta Consulting, Inc.