“tech transfer from the eye of an investor” presented august 10, 2014 at the annual meeting of...
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Presented as part of the session, "Best Practices in Launching a University Start-Up" for the Division of Small Chemical Business, ACS.TRANSCRIPT
Tech Transfer From the Eye of the Investor
Thomas M. Loarie Executive ChairmaneMedonline
Best Practices in Launching a University Start-UpAmerican Chemical Society 248th Annual MeetingSan Francisco, August 10, 2014
Retained RightsClear articulation of scope is critical
▪ Publication of Research
▪ Broad or narrow, reserving rights in other fields
Development and UsePredicting the future
▪ Exclusivity– Broad or narrow
▪ Encourage development and use– Milestones, progress
payments– Sublicense
▪ Breaches
Licensing of “Future Improvements”
▪ Enslaving a faculty member – the licensor
▪ Vulnerability to future competition – the licensee]
▪ Rare
Conflicts of Interest
▪ Student, faculty joining company
▪ In each of my two companies
Broad Access to Research ToolsAdvancing research
▪ Available to others for verification and advancing research
▪ Tools need to specified in license – Cell lines, reagents, animal
models, compounds
Enforcement Action
▪ Infringement suit - licensor
Export Regulations
▪ Confidential information
▪ Federal export control laws
Patent AggregatorsMajority of university patents are unlicensed
▪ Added value model – tech specific
▪ Patent troll model – holds those innovating hostage
Addressing Unmet NeedsUniversity view is to improve social good
▪ Neglected patient populations
▪ Geographic areas
▪ Developing world
Other
▪ Royalties and future competition
▪ Sale to dealers – royalty on sales
▪ Pre-paid royalties
▪ Stock
▪ Flexibility – To raise capital– To compete and gain ROI
IterateSteve Blank’s Lean Start-up
Key Takeaways
▪ Global competition
▪ No cookie cutter solutions
▪ Experience of Tech & Licensing Office– History– Creative?
▪ Paramount considerations– Business use and flexibility– Institutional values– Societal, policy, legislative issues