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Where Science Means Business The case of Yissum – The Hebrew University of JerusalemRenee Ben-Israel, Vice-President – Intellectual Property

WIPO: Information Meeting on Intellectual Property Financing

Geneva – 10 March 2009

Summary

Introduction Patent strategy Patents and Universities Israel’s technology and Innovation Israeli universities Yissum Food for thought

Patents use

Patent strategy may be: Defensive - no intention of developing the invention,

main interest: preventing others from doing so. Dominating - plan to use the technology, the processes

described in their patents and sue infringing parties. Licensing purposes (in/out/cross)-

individuals/institutions that do not intend to manufacture the invention themselves, transfer the rights for development and production to a third party

Other purposes (profit centres, aggregators, “trolls”)

Universities patents strategy?

Not really Depends on the invention!

Platform (enabling) inventions Niche/complementary inventions Use inventions Conceptual inventions

University patents are meant for technology transfer

University patents

University classical mission: Teaching, researching and divulging the knowledge

Universities’ patents: Embryonic – feasibility/market unknown Development requires high risk investment by industry

Intellectual property protection can be used as an incentive to make high risk investment motivating the “first mover” by protecting against

later competitors (strategy!)

Purposes of University Technology Transfer

Participate in innovation process Facilitate the commercialization of research

results for the public good Retain and recruit researchers Create closer ties to industry Generate income for further research and

education Promote economic growth Social responsibility

Purposes of University Technology Transfer

Research => Invention (and IP)=> Development => Innovation

New products and medicines Bring new technology into industry for economic

competitiveness Encourage entrepreneurship for local and national

economic development

(source: Lita Nelsen – MIT)

The Tech Transfer Bargain

University research leads to patent—but technology is unproven and high risk

University is willing to grant exclusive patent license to Company who will commit to the risk of developing the technology

If development succeeds, the patent protects the Company from competitors

University benefits from product being developed and from royalties (shared with inventor)

University also has the opportunity in the license to assure that patents are used “in the public interest”—requiring certain price or geographical concessions for developing countries, if appropriate

(source: Lita Nelsen – MIT)

Patent protection is particularly critical for development of pharmaceuticals

Development of a new therapeutic or vaccine product is a particularly high risk activity Time frames are long Financial investment is very high Clinical trials are very difficult Probability of failure is high

Patent protection of the final product is necessary before companies (or biotech investors) will take the risk and make the investment

(source: Lita Nelsen – MIT)

Pharmaceuticals

Israel: data

Area - Total 120,770 / 22,072 km2 (151st)8,019 / 8,522 sq mi  - Water (%)~2%

Population - 2008 estimate 7,282,0002[3] (96th) - 1995 census 5,548,523  - Density324/km2 (34th)839/sq mi

GDP (PPP)2007 estimate - Total$188.936 billion[4] (52nd) - 

Per capita$27,146[4] (32nd)GDP (nominal)2007 estimate - Total$164.103

billion[4]  - Per capita$23,578[4] 

Israel, facts & figures

Technology transfer pioneer Brain power + need =>

use of science to survive,

overcome situations Highest % of R&D allocation from GDP

(4.7% - 2007)

R&D expenditure

1. National Expenditure on Civilian R&D, at 2005 Prices1995-2007

02468

10121416182022242628303234

1995 96 97 98 99 2000 01 02 03 04 2005 *06 *07

N

IS B

illion

*Provisional Data

National expenditure on civilian R&D in 2007 was 4.7% of the GDP. Major increase in R&D companies.

Israel, facts & figures

1901- TEVA’s foundation 1924- The Technion (Polytechnic Institute) 1925- The Hebrew University of Jerusalem Population with high scientific level, strong

inclination to engineering and biological/medical sciences

Research units in hospitals – many experimental units

Access to…

Israel, facts & figures – patentsOECD: Israel has the highest percentage of patents in the region:

Israel is ranked 6 globally for patents per GDP and 8th for patents per capita

Israel: Supporting Infrastructure The Technological Incubators programme, the Tnufa programme, the Noffar fund, the R&D fund. State initiatives matched with private interest meant to foster early stage projects.

Israel: Supporting InfrastructureThe Magnet, the Mini-Magnet, the generic R&D meant to support joint industry & academic institutions cooperations

Israeli Universities

Tech Transfer since 1959 (much before the Bayh-Dole act in the US!)

At all 7 universities & many research institutions, hospitals

Yeda: one of the wealthiest in the world Yissum: 15th in the world

Success stories – a sample

Yeda: Bio-Hep B®, recombinant hepatitis B vaccine Copaxone®, 1st. Innovative drug in Israel, MS

immunomodulator Dunaliella®, β carotene health food form alga NDS Ltd., Encryption Algorithm, TV set-top box smart cards Erbitux ®, Antibody therapy with synergism with

chemotherapy

Technion: Azilect®, Parkinsons Disease

And many others

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Over 1/3 of all academic scientific research In Israel

43% of Israel’s biotechnology research

>1/3 of PhD students in Israel

4 Campuses

5 Affiliated Hospitals

24,000 Students

1,000 Researchers (Staff Members)

1,600 Post-Graduate Students in Biotechnology

320 Researchers in Applied Sciences

4,420 Research Projects

>100 Research Centres

The Hebrew University of Jerusalem

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A Nobel Heritage

2002 Nobel Prize in Economics Daniel Kahneman, Princeton

2004 Nobel Prize in Physics David J. Gross, UC Santa Barbara

2004 Nobel Prize in Chemistry Avram Hershko, Technion Aaron Ciechanover, Technion

2005 Nobel Prize in Economics Robert J. Aumann, Hebrew University

2006 Nobel Prize in Chemistry Roger Kornberg, Stanford

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Top 20 Most Frequently Cited PapersStem Cells 1998-2004

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http://www.milkeninstitute.org/pdf/m2m2006_uni_bio.pdf

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Board of Directors Business leaders

Yissum Business-oriented organization

Founded 1964

The Hebrew University Non-profit organization

Where Science Means Business

University Strategy

Created a positive atmosphere at the University

Established good and clear policies as an incentive to researchers

Budget incentives New opportunities Awards/prizes for achievements

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Yissum’s Mission

To promote the transfer of Hebrew University technology for the benefit of society, while maximizing returns to support research, education and scientific excellence

Yissum = Hebrew for ‘application’

It’s not that simple!

Academic world Business world (Industry, VCs, Start-ups)

(to say nothing about market instabilities…)

Intellectual Property legal world Contracts – legal/commercial world

The rules of the games are different.

Yissum’s strategy

Identifies the right situations - matching needs & opportunities

Identifies the key elements – to move the project forward

Flexibility

Professionalism

With no interference in the academic freedom!

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Current Snapshot

Over $1 Billion annual sales of Hebrew University- based products

5,500 patents 1,600 inventions 480 licenses 65 spin-offs

Raised over $165 mil in 2007 from leading VCs and private investors

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A Record of Achievement

2007 revenues $51mil $36 mil royalties and licensing $4.3mil portfolio companies $10mil sponsored research & services

HU research budget $107mil

Ranked in top 15 worldwide (AUTM) Leading US TTO revenues FY2007

MIT $61mil Research budget: $1.2 Billion

Stanford $50mil Research budget: $1 Billion

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Intellectual Property

2007 Snapshot 121 new inventions 93 new patent applications 64 new patents granted

Intellectual Property at HU Yissum owns all IP

developed at HU Researchers receive

40-60% of revenues

2007 New Inventions

Agriculture11%

Applied Physics2%

Cleantech6%

Computer Science & Engeneering

9%

Life Science and Biotechnology

67%

Materials5%

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2008 statistics:

Disclosures: 128 New applications filed: 112 PCTs: 44 National Phases: 41/159 (~4 countries) Examination: ~250 Renewals: 500-550 Budget: ~$3M

Patents are an expensive game

0

20

40

60

80

100

120

0 12 20 30 40 50 60 7yrs 12

NP Maintenance

Time

K$

Months

FirstFiling

PCT IPER NPPatentGrant

Prosecution

(Total: 20 years)

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Global Reach

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Yissum’s Spin-offs

Rav-Galai

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Long Shelf Life & CherryTomatoes

The world’s most popularcocktail hybrids for greenhouse production

Prof. Nachum KedarProf. Haim Rabinowich Department of Field Crops,Vegetables and Genetics:Faculty of Agriculture, FoodAnd Environmental Sciences The Hebrew UniversityRehovot Campus 2007 sales $73 million

Success Stories - Tomatoes

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DOXIL®Doxorubicin HCI liposome injection Alza’s Lead Product for Oncology Prof. Yechezkel Barenholz Department of BiochemistryFaculty of Medicine The Hebrew UniversityOf Jerusalem 2007 sales $417 million

Success Stories - Doxil

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For Treatment of Alzheimer’sDisease and Dementia Prof. MartaWeinstock-Rosin Department of PharmacologyFaculty of Medicine The Hebrew UniversityOf Jerusalem 2007 sales $632 million

Success Stories - Exelon

Food for thought

Will emphasis on tech transfer change nature of research from “discovery” to “applied”?

Will need to collaborate with industry be allowed to inhibit publication and dissemination of results?

Food for thought

Will “privatization” of research results retard the progress of science?

Will the universities remember their public mission—taking care that IP is used primarily for the public good?

Food for thought

Will the decrease in government investments in research create a dependency from commercial sources?

Will this deviate universities from their missions?

It will certainly require a coordinated effort and thought of all involved parts!

Conclusion:

Is it worth the effort?

So far, our experience has been positive!

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Thank you for your attention!