1. Navigating the University Technology Transfer August 23, 2012 Christopher Moulding Sr. Manager, Technology Advancement and Licensing I’ve got an idea…now what?

2. Topics to Cover Historical background for University Technology Transfer Traditional technology transfer functions Expanded roles for tech transfer Best practices in working with TTOs

3. 1980 Bayh-Dole Act: inventions resulting from federal funding US universities own the Photo: Jeff Kubina

4. About USC Stevens Mission: – Empower USC innovators to make impact with their ideas University-wide resource to manage patents and patent licenses, and matters related to USC intellectual property Founded 2006, in conjunction with a $22M naming gift from Mark and Mary Stevens – incorporating Office of Technology Licensing founded in 1981 Expanded roles to support innovators

5. Traditional Tech Transfer Functions Patenting  Receives disclosure, investigator initiated  Federal (sponsor) reporting  Confirm ownership status of materials  Evaluate patentability--Novel? Non-obvious? Useful?  Evaluate commercial potential  Identify products/markets/sizes/need/police infringement  Evaluate technical feasibility  Decisions to file  Provisional application  Nonprovisional and PCT  National Phase

6. Patent Costs over Time

7. Traditional Tech Transfer Functions Licensing Who best able to commercialize? Inventor contacts TT office contacts, databases, market studies Attract Licensing Interest Meet with Inventor contacts Direct email/phone contacts Mass marketing campaign Negotiate Agreement Deal terms, fees + royalties Patent strategy/control Improvement technology Diligence to commercialize Warranties, Indemnification Manage Relationship with Licensee

8. Expanding Roles for USC Stevens Traditional (since 1980s) patenting and licensing Integration of inter-departmental resources – Clinical departments with research labs (CTSI, etc.) – Business school with marketing/business analysis of clinical projects – Cross-disciplinary educational programs - legal, business, biology, etc. Inter-Institutional partnering to share resources – ERCs, CIRM Disease Teams, others Proof-of-principal, gap funding sources – Ideas Empowered, Coulter Foundation, J&J etc. Mentoring programs with outside experts Early-stage meetings with angel, VC investors Incubator facilities

9. Invention Disclosure Elements http://stevens.usc.edu/have_disclosure.php “Non-Confidential” Title Date received in Office Inventor Names/Contact Info Funding source/Grant #s Third party materials involved? Subject of Contract Research or Consulting Activities? Published or Presented? When or when anticipated? Complete description of technology Market information if available Key words for searches Signature, Home Address, Country of Citizenship

10. Keys to Success with TT Office DO Fill out disclosure form completely Identify publication/ presentation dates Seek meeting with licensing officer Demonstrate knowledge of prior art and your improvement to it Build relationships with companies of interest DON’T Send just manuscript Give short notice of publication/presentation Withhold information about funding or materials source Assume tech transfer office will file patents and find licensee Go to the Dean or TT Director to complain

11. USC Stevens Center for Innovation Main number – 213-821-5000 Website – stevens.usc.edu Chris Moulding, Sr. Licensing Manager moulding@stevens.usc.edu 213-821-0945