Presentation is loading. Please wait.

Presentation is loading. Please wait.

Technology Licensing at Stanford University

Published byGabriella Montgomery Modified over 9 years ago

Similar presentations

Presentation on theme: "Technology Licensing at Stanford University"— Presentation transcript:

1 Technology Licensing at Stanford University
OTL Overview June 2007 Technology Licensing at Stanford University

2 Overview Background and Policies OTL Facts and Figures
OTL Overview Overview June 2007 Background and Policies OTL Facts and Figures OTL Process: Invention to License

3 University-Industry Technology Transfer
OTL Overview June 2007 Research results from lab Start-up companies and large corporations New products in marketplace Mechanisms Graduated students Publications Seminars, conferences, etc. Faculty consulting Industry sponsored research Industrial affiliate programs Intellectual property licensing Intellectual Property Licensing

4 University-Government Interactions
OTL Overview University-Government Interactions June 2007 University Government Bayh-Dole Act Created uniform patent policy regarding inventions made under federally-funded research programs Encouraged universities to participate in technology transfer activities

5 Bayh-Dole Act (U.S. Public Law 96-517)
OTL Overview Bayh-Dole Act (U.S. Public Law ) June 2007 University may elect to retain title to inventions developed under federally-funded research programs University grants royalty-free nonexclusive license to government Any company holding an exclusive license must substantially manufacture the product in the U.S. In marketing of an invention, University must give preference to small business firms (< 500 employees) University must share with the inventor(s) a portion of any revenue received from licensing (Sources: COGR Publication “The Bayh-Dole Act: A Guide to the Law and Implementing Regulations”, 37 CFR Part 401, 35 USC )

6 Stanford Facts for 2008 7 Schools 1,829 Faculty members
OTL Overview Stanford Facts for 2008 June 2007 7 Schools Business, Earth Sciences, Education, Engineering, Humanities and Sciences, Law, and Medicine 1,829 Faculty members Students (6,759 undergraduate and 8,186 graduate) Finances (FY ) $3.4 billion budget $1.06 billion in sponsored research, including SLAC (87% by federal government sponsors) additional $132.1 million in part through 55 industrial affiliate programs $17.2 billion endowment (

7 Office of Technology Licensing (OTL)
OTL Overview Office of Technology Licensing (OTL) June 2007 Mission To promote the transfer of Stanford technology for society’s use and benefit while generating unrestricted income to support research and education. Technology Transfer Portfolio Patents Copyrightable Material Software Biological Material Semiconductor Maskworks

8 Licensing: Inventions to New Products
OTL Overview June 2007 OTL decides IP protection for invention and markets invention broadly Federal & industry research money Additional research funding OTL licenses invention to Company Company pays royalties to University

9 Stanford’s Intellectual Property Policy
OTL Overview Stanford’s Intellectual Property Policy June 2007 Patentable Technology University takes title to all inventions created with more than incidental use of University resources Copyrighted Works University takes title to copyrightable works created with significant University resources SU-18 Patent and Copyright Agreement

10 Stanford’s Royalty Distribution Policy
OTL Overview Stanford’s Royalty Distribution Policy June 2007 Cash Royalties from Issue, Minimums, Earneds Net Royalties = Cash Royalties minus 15% for administrative expenses minus out-of-pocket expenses (e.g. patent costs)

11 OTL: Notable Stanford Inventions
OTL Overview OTL: Notable Stanford Inventions June 2007 1970 – OTL Established 1971 – FM Sound Synthesis ($22.9M) 1974 – Recombinant DNA ($255M) 1981 – Phycobiliproteins ($46.4M), Fiber Optic Amplifier ($40M), MINOS ($3.8M) 1982 – Amplification of Genes ($30M) 1984 – Functional Antibodies ($191M) 1986 – CHEF Electrophoresis ($2.25M) – Discrete Multi-tone technologies for DSL ($29M) 1996 – Improved Hypertext Searching - GoogleTM ($337M) 2009 – the next big thing ???

12 OTL: Disclosure and Licensing History
OTL Overview OTL: Disclosure and Licensing History June 2007 Disclosures Licenses* Royalty Income Staff * Majority of disclosures are never licensed; many disclosures have one license; some disclosures have multiple licenses 1970 28 3 $50,000 2 2008 430 107 $62.5 M 30 Cumulative 7500 2800 $1.2 B Active ~3000 ~1000

13 OTL: The Upside In FY07-08, $62.5 million in royalties
OTL Overview OTL: The Upside June 2007 In FY07-08, $62.5 million in royalties From 1970 through 2008, ~$1.2 billion cumulative royalties Typically, 10 to 15 years may elapse between initial invention disclosure and any significant royalties

14 OTL: Looking Closely at Royalties
OTL Overview OTL: Looking Closely at Royalties June 2007 In FY07-08, $62.5 million from 546 disclosures 33 out of 546 disclosures generated over $100,000 each 3 out of 33 generated over $1 million each From 1970 through 2008 58 inventions generated $1 million or more 3 out of 7500 is BIG WINNER Royalties from large portfolio of inventions

15 OTL: Conversion Numbers
OTL Overview OTL: Conversion Numbers June 2007 ~8 disclosures received per week ~ 50% of disclosures are filed as patent applications some disclosures potentially licensable as copyright or biological materials % of disclosures, including those patented, are licensed

16 OTL: Revenue vs. Expenses
OTL Overview OTL: Revenue vs. Expenses June 2007 OTL is self-supporting 15% of revenue > operating expenses Operating budget of ~$4.8 million/year Patent expenses of ~$8.1 million/year OTL has given ~$43.5 million to Research Incentive Fund administered by Dean of Research

17 OTL: Equity from Licenses
OTL Overview OTL: Equity from Licenses June 2007 Stanford’s philosophy Equity is one component of a whole financial package Historically, most income is generated from earned royalties (~$836 M vs. ~$364 M) Equity is liquidated soon after IPO We can’t hold equity if licensee conducts clinical trials here Equity from licenses ~171 companies cumulative ~90 companies currently Equity liquidated to date ~$364 million

18 Equity Cash-Out at Stanford*
OTL Overview Equity Cash-Out at Stanford* June 2007 Equity distribution 15% to OTL 1/3 of net equity to inventors 2/3 of net equity to OTL Research and Fellowship Fund Equity liquidated to date ~$364 million Amati (Texas Instruments) $8.0 million Abrizio (PMC-Sierra) $9.7 million Google™ $336 million *Graph does not include liquidation of GoogleTM equity in FY04-05

19 OTL: Invention to License
OTL Overview OTL: Invention to License June 2007 Steps Disclosure Evaluation Licensing Strategy File patent? Market to potential licensees The License Maintaining the Relationship 7 “Licensing Associate & Licensing Liaison” teams Technical degrees and marketing focus Responsibility for inventions from cradle-to-grave

20 Evaluation Discuss with inventors Discuss with others at OTL
OTL Overview June 2007 Discuss with inventors Inventor provides technical expertise Inventor may also provide industry contacts Discuss with others at OTL Contact industry experts Typical criteria Invention development status Inventor profile Intellectual property position Commercial potential Licensing potential The Main Question Does it have the potential to create meaningful income for the University?

21 Licensing Strategy OTL Overview June 2007 A license is a legal document regarding intellectual property rights in exchange for good and valuable consideration. Different inventions require different licensing strategies “ basic new scientific tool” vs. “invention requiring extensive development” electronics industry vs. biotech industry IP rights Licensor Licensee royalties

22 Patenting Decision Can we license as tangible research property (TRP)?
OTL Overview Patenting Decision June 2007 Can we license as tangible research property (TRP)? Can we license as it as copyright? Is it patentable and enforceable? Has it been publicly disclosed?

23 Patent Prosecution Licensing professional manages outside counsel
OTL Overview Patent Prosecution June 2007 Licensing professional manages outside counsel Technology expertise Patent agent vs. Patent attorney Patent costs Typically $25,000 to $35,000 over life of U.S. patent USPTO fees if invention is not licensed, pay small entity fees Patent attorney/agent costs Higher patent costs for foreign coverage PCT application preserves foreign rights while delaying costs National phase entry if licensee reimburses costs

24 Marketing Strategy When do we start? Individual vs. Portfolio
OTL Overview Marketing Strategy June 2007 When do we start? Waiting for publication Waiting for data Individual vs. Portfolio Contact companies and provide information Shotgun vs. Rifle approach Sources of leads Steps Create marketing content Create list of potential licensees Contact potential licensees Follow-up

25 Types of License Agreements
OTL Overview Types of License Agreements June 2007 Option agreement Non-exclusive agreement Exclusive agreement Limited by Field of Use Limited Period of Time (e.g. earlier of 8 years from Effective Date or 5 years from first commercial sale)

26 Key License Terms Financial terms Non-financial terms
OTL Overview Key License Terms June 2007 Financial terms License issue fee Annual minimum payments Earned royalties % of Net Sales $ per product sold Reimbursement of patent costs Equity in start-up companies Non-financial terms Definitions Grant Development milestones & diligence provisions Prototype First Commercial Sale Warranties and indemnities Infringement actions Dispute resolution

27 Licensing: Inventions to New Products
OTL Overview June 2007 OTL decides IP protection for invention and markets invention broadly Federal & industry research money Additional research funding OTL licenses invention to Company Company pays royalties to University

Download ppt "Technology Licensing at Stanford University"

Similar presentations

Www.burnslev.com The Federal Technology Transfer Process: Licenses and Cooperative Research and Development Agreements ADVANCED LICENSING INSTITUTE AT.

The Federal Technology Transfer Process: Licenses and Cooperative Research and Development Agreements ADVANCED LICENSING INSTITUTE AT.
Invention Disclosures Kenneth Kirkland, Ph.D. Executive Director, Iowa State University Research Foundation, Inc. (ISURF) Director, Office of Intellectual.

Invention Disclosures Kenneth Kirkland, Ph.D. Executive Director, Iowa State University Research Foundation, Inc. (ISURF) Director, Office of Intellectual.
1 WIPO/INV/BEI/02/3.a The Role of Universities in the Innovation Cycle Document prepared by Ms. Kirsten Leute, Licensing Associate Office of Technology.

1 WIPO/INV/BEI/02/3.a The Role of Universities in the Innovation Cycle Document prepared by Ms. Kirsten Leute, Licensing Associate Office of Technology.
1 UMass Dartmouth Conflicts of Interest Policies UMass Dartmouth Liz Rodriguez February 17, 2011.

1 UMass Dartmouth Conflicts of Interest Policies UMass Dartmouth Liz Rodriguez February 17, 2011.
OFFICE OF TECHNOLOGY COMMERCIALIZATION University Patent Process September 30, 2013 Mina W. Zion, J.D. Director.

OFFICE OF TECHNOLOGY COMMERCIALIZATION University Patent Process September 30, 2013 Mina W. Zion, J.D. Director.
Technology and Economic Development Intellectual Property Issues in Research Jim Baker Director Office of Technology and Economic Development

Technology and Economic Development Intellectual Property Issues in Research Jim Baker Director Office of Technology and Economic Development
LICENSING “One Way of Putting Your I.P. to Work for Your Organization” Inventing and Patenting Seminar May 16, 2001.

LICENSING “One Way of Putting Your I.P. to Work for Your Organization” Inventing and Patenting Seminar May 16, 2001.
North Carolina State University © 2014 Technology Transfer Outcomes February 27, 2014 Research Retreat Kelly B. Sexton, Ph.D. Director Office of Technology.

North Carolina State University © 2014 Technology Transfer Outcomes February 27, 2014 Research Retreat Kelly B. Sexton, Ph.D. Director Office of Technology.
LOWER SHORE TECHNOLOGY TRANSFER SYMPOSIUM Bringing the Benefits of Discovery to the World MAY 23, 2012 Wesley D. Blakeslee Executive Director Johns Hopkins.

LOWER SHORE TECHNOLOGY TRANSFER SYMPOSIUM Bringing the Benefits of Discovery to the World MAY 23, 2012 Wesley D. Blakeslee Executive Director Johns Hopkins.
So you’ve invented something? A Guide for UMass Faculty, Researchers and Students.

So you’ve invented something? A Guide for UMass Faculty, Researchers and Students.
Air Force Materiel Command I n t e g r i t y - S e r v i c e - E x c e l l e n c e Developing, Fielding, and Sustaining America’s Aerospace Force INTELLECTUAL.

Air Force Materiel Command I n t e g r i t y - S e r v i c e - E x c e l l e n c e Developing, Fielding, and Sustaining America’s Aerospace Force INTELLECTUAL.
EXPRESS LICENSE AGREEMENTS Ted Hagelin Crandall Melvin Professor of Law Kauffman Professor of Entrepreneurship and Innovation Director, NY Science & Technology.

EXPRESS LICENSE AGREEMENTS Ted Hagelin Crandall Melvin Professor of Law Kauffman Professor of Entrepreneurship and Innovation Director, NY Science & Technology.
Industry – University Transactions: Protecting Competitive Corporate Advantage Varda N. Main Director, Technology Licensing Rochester Institute of Technology.

Industry – University Transactions: Protecting Competitive Corporate Advantage Varda N. Main Director, Technology Licensing Rochester Institute of Technology.
Technology Transfer at UIC © 2009 by the Board of Trustees of the University of Illinois Presentation to the Software Commercialization Symposium April.

Technology Transfer at UIC © 2009 by the Board of Trustees of the University of Illinois Presentation to the Software Commercialization Symposium April.
1 Technology Transfer Seminar Series Patent Licensing : A Pathway to Commercialization Karen Hersey Senior Counsel for Intellectual Property, MIT. Ret.

1 Technology Transfer Seminar Series Patent Licensing : A Pathway to Commercialization Karen Hersey Senior Counsel for Intellectual Property, MIT. Ret.
Industrial Partnerships & Technology Transfer Keeping Your Name Out Of The Gossip Columns Of Nature and Science BC Cancer AgencyJ. D. Litster March 24,

Industrial Partnerships & Technology Transfer Keeping Your Name Out Of The Gossip Columns Of Nature and Science BC Cancer AgencyJ. D. Litster March 24,
February 25, 2014 SERIES 4, SESSION 2 OF AAPLS APPLICANTS & ADMINISTRATORS PREAWARD LUNCHEON SERIES Material Transfer and Confidentiality Agreements.

February 25, 2014 SERIES 4, SESSION 2 OF AAPLS APPLICANTS & ADMINISTRATORS PREAWARD LUNCHEON SERIES Material Transfer and Confidentiality Agreements.
Welcome P&P Topics for GFY 2002 Patent Awards Tech Transfer Cycle: Part III FOOD!!!! PATENTS & PIZZA June 4, 2001.

Welcome P&P Topics for GFY 2002 Patent Awards Tech Transfer Cycle: Part III FOOD!!!! PATENTS & PIZZA June 4, 2001.
Commercialization of University Technology Innovation, Technology Transfer and Licensing Jack Turner, Associate Director M.I.T. Technology Licensing Office.

Commercialization of University Technology Innovation, Technology Transfer and Licensing Jack Turner, Associate Director M.I.T. Technology Licensing Office.
Vilnius Lithuania 2014. BSc.: Biochemistry Neuropsychology J.D.: University of Oregon LL.M.:University College London Pacific Northwest National Laboratory.

Vilnius Lithuania BSc.: Biochemistry Neuropsychology J.D.: University of Oregon LL.M.:University College London Pacific Northwest National Laboratory.

Similar presentations

Ads by Google