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David Winwood The UAB Research Foundation 16 July 2009

The UAB Research Foundation The What Why & How of University Technology Transfer

UAB Research Foundation & UAB Research Fundamentals 501 c. 3 established in 1987 to provide services to the research enterprise at UAB The research enterprise at UAB is significant – UAB’s research expenditures have doubled every decade since its founding: Research expenditures last year were >$420 MM Of which >$200 MM is from federal awards that is – money being sent here from D.C. and spent in our community Of the $420 MM, ~ half is salaries – again, mainly spent very close to where we are sitting today Every external $ spent on research at UAB has an additional $.84 impact on the local economy

UABRF Role The RF completes almost 1,000 transactions a year Mainly service-oriented, ‘zero-revenue’ agreements: Material Transfer Agreements, Confidentiality Agreements, inter-university agreements, consortium / collaboration agreements…. Not ‘newsworthy’ or exciting….but crucial components of the research enterprise At core, UABRF is a service provider for UAB research

The Meat….. The reason most here are interested in the RF: We own and manage intellectual property created at UAB

Why? Fundamentally – if we accept federal support - we have to… Must provide administrative entity to manage resulting intellectual property – whether (potentially) patentable or research tools or biological materials; at UAB this entity is UABRF Bayh-Dole Act, 1980 Provides mechanism for university ownership and commercialization of federally-supported inventions Described as ‘ Possibly the most inspired piece of legislation to be enacted in America over the past half-century …*) *” INNOVATION'S GOLDEN GOOSE ”, The Economist , Dec 12th 2002

Bayh-Dole Act Basics…… Obligation to make developments available in exchange for receipt of government grants Universities must file patents on inventions they elect to own Encourage collaboration with industry to promote the utilization of inventions Must give preference to small businesses Manufacturing in U.S.

Patents………… Typically the UABRF licenses rights to patents

Real Patents….. “ ANNUNCIATOR FOR THE SUPPOSED DEAD” Inventor: WILLIAM H. WHITE U.S. Patent 465,548 Patented December 22, 1891 “ for preventing the commission of "grave errors"

Results, 2006-2007 In the U.S., University-licensed technologies resulted in: 686 new products being introduced into the market 555 new startup companies launches 19,827 new invention disclosures were received by universities A total of 5,109 licenses and options were signed 3,622 patents were issued to universities 3,388 startup companies based on university-created technologies were still operational (from the beginning of record keeping on such matters, in the late 1980s)

UABRF Metrics (1987-2009) Total inventions received: >1,900 U.S. Patents issued: >467 Total Option/License agreements: >350

UABRF Metrics (1987-2009) License revenues collected to date: > $47MM Licenses with equity: 39 Distributions to inventors: $13.2MM As personal income Distributions to UAB& UABRF $32MM Used to support research activities

Technology Transfer vs. Knowledge Transfer “ Of course there's a lot of knowledge in universities: the freshmen bring a little in; the seniors don't take much away, so knowledge sort of accumulates.” Abbott Lawrence Lowell, Harvard president 1909-1933

Technology Transfer Process - Simplified Invention disclosed to TT office Review / triage: completeness; technical aspects; obligation to funding entity ( federal agency or private industry? ) Patentability Marketability Seek patent protection Identify potential licensee(s) Market Negotiate terms: Option period Internal review: Conflicts of interest? Execute license agreement Monitor compliance/diligence terms Maintain patent portfolio Invoice Distribute revenues to happy inventors……. ( and even to unhappy inventors, as well…..)

Technology Transfer Process - Simplified What could possibly go wrong?

Ego and envy Fear and greed From Louis Berneman UNIVERSITY INDUSTRY Research Partner- ships, Tech Transfer = Economic Development Teaching Research Service Economic Development R&D, products Profits Knowledge for Knowledge’s Sake Academic Freedom Open Discourse Time = Semester Management of Knowledge for Profit Confidentiality Limited Public Disclosure Time = Money UNIVERSITY INDUSTRY Research Partnerships, Tech Transfer = Economic Development Teaching Research Service Economic Development R&D, Products Profits Knowledge for Knowledge’s Sake Academic Freedom Open Discourse: Time = Semester Management of Knowledge for Profit Confidentiality Limited Public Disclosure Time = Money

Challenges? By definition, the technologies managed by the RF are very early stage Necessary to seek patent protection very early Result – UABRF is almost always the first ‘investor’ in a UAB technology Patent investments made by UABRF in a single portfolio often reach tens or hundreds of thousand $ before (if!) a licensee is found – whether an existing company or a startup

Finding a Licensee… Strong preference to do business locally to support local economic growth, however – Most UAB technologies are licensed out of state or overseas Exception is licenses to UAB startups Local industry clusters don’t yet match the technology base generated at UAB – strong life sciences portfolio

Observations Most of our technologies / inventions are not candidates for startup company formation; rather, they will best be introduced into the market place by licensing to an existing company for development as a new product or service Many times that company will be out of state Wealth is eventually created here as licensing revenues are returned to UABRF, the inventors and UAB

Expectations Alignment of priorities with performance metrics- (e.g., create startup companies and wait for revenues that may never materialize….or license to existing companies for up-front money?) How is success measured? By the university? By the inventor? By the community? By the federal government? Depending on the answer to this question, management styles for university technology transfer vary considerably across the nation

Goals at UABRF Help build an environment that is supportive of the activities in our realm to build an Entrepreneurial Ecosystem : At the university: support at all administrative levels – faculty, department, school, university…..trustees Local investors Serial entrepreneurs – we have some, and they are well represented here – but we need more Service providers

Progress New staff positions added RF staff now includes 5x Ph.D.’s, 3x MBA’s & 3x J.D.’s… Better business practices Outreach – to faculty & community Collaborations Across campus With other UA system schools With local & regional economic development agencies Participation in national & international professional organizations Visibility

Successes – Diverse Portfolio Commercializing a therapeutic technology is expensive and time consuming – but rewards are significant Life science service / discovery companies present different paths to commercial success: Discovery BioMed, Vivo BioScience IT and bioinformatics based companies from UAB have enjoyed success: Emageon MedMined DefiniCare

A Life Sciences Campus-With Engineering Alabama Launchpad, 2009: UAB teams – took 3 out of the 8 final places Won first and second place $100K 1 st place prize – Innovative Composite Solutions, from UAB’s Materials Sciences (School of Engineering) $50K 2 nd place prize, Spectrum PhenomX, Genetics, (School of Medicine)

Summary Work in close collaboration with local, state and regional entities; leverage intellectual and physical assets Sometimes this means licensing a technology to a company; but often it may mean providing access to expertise or to one of a kind instrumentation. If this is done properly - Discoveries become beneficial products and services, medicines, improved electrical and computer equipment, plants, safer food, etc. Public benefits include employment, commerce, generating state and federal taxes

Questions? UAB Research Foundation 205 934 9911

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