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From the
Director . . .
Breaking New Ground
FY2000 was another record year for the Technology Transfer
Program at UCSD. Continuing a four-year trend, our office received a record
number of over 200 new invention and copyright disclosures in fiscal year 2000,
which ended June 30th. The
office also executed over 400 agreements that
allow the private industry sector to evaluate and utilize intellectual property
developed at UCSD, another record number. We
continue to leverage our valuable intellectual property to enhance the research
and teaching experience of our faculty and students and to help promote and
diversify our regional economy by encouraging new businesses (see later) and
supporting the existing companies.
Building . . .
As the office of Technology Transfer and Intellectual
Property Services (TechTips) gets busier, I am grateful that the university is
continuing to provide the infrastructure support for the office to take on the
increasing workload.
At the end of fiscal year 2000, TechTips had tripled the
number of outgoing Material Transfer Agreements and Inter-Institutional
Agreements completed in fiscal year 1999. The number of completed
Confidentiality Agreements more than doubled last fiscal year. The numbers of
patents currently earning income and the office’s revenues have both nearly
doubled since the last campus office report in June 1999.
To accomplish all these, we have been busy recruiting.
Please join me in welcoming the following new members to the TechTips team: David
Odelson (Ph.D.) and Jane Moores
(Ph.D.), Senior Licensing Officers; Alexa
Falkenstein (BS, JD), Special
Assistant to the Director; Rachel Merrill
(BS, JD) Intellectual Property Disclosure Assistant; Neal Atkinson (BS) Marketing Assistant; Laura Wolszon (Ph.D.), Licensing Officer, Dana Bemis, License Assistant; and Clifford
Lindsay, Administrative Assistant.
Additionally, we are currently recruiting to fill two new
Licensing Officer positions to help with the management of our increasing
Engineering and Physical Science invention portfolio, and a Senior Licensing
Officer in the Life and Biomedical Sciences area.
and Reaching Out . .
.
Although we enjoy the convenient parking and the ease of
arranging meetings with company representatives here at the Torrey Pines Center
North, we feel some of us need to be closer to our faculty inventors on the main
campus so that we can provide better services. With this goal in mind, we are looking forward to structuring
arrangements with all the science and technology schools on campus to locate
some of our Licensing Officers more proximal to their researchers.
With the new buildings coming up for the Whitaker Institute of
Bioengineering and the California Institute of Telecommunication and Information
Technology and also the support of Engineering Dean Robert Conn, TechTips will be
assigning a dedicated person, physically located on the Engineering campus to
serve the researchers associated with the Institutes and the Jacob School of
Engineering on all intellectual property matters.
Larry Brand (Ph.D.), one of our Senior Licensing Officers, will also be
moving to an office in Pacific Hall in May to be closer to the researchers in
the Division of Biology and the Division of Physical Sciences.
We look forward to potentially making similar arrangements with the
School of Medicine, School of Biological Sciences, and School of Natural
Sciences.
Alan S. Paau, MBA, PhD
Director
Disclosing a New Innovation
Making a disclosure of new innovation to TechTips is a relatively
easy process. You
can download the disclosure form (one for inventions and a
different one for copyright materials) directly from http://invent.ucsd.edu,
the TechTips Web site, send us an email or simply call us to
send you an electronic or a hard copy.
While preparing the form, please feel free to append
the disclosure form with any manuscripts, meeting abstracts,
grant proposals, and/or the latest data (text, tables, figures
in any medium) so we may appreciate the quality of your new
innovation as much as possible.
Once the form is completed and returned to us (except
for the signature page, you can do this all electronically
or by a hard copy), what happens next appears to be a mystery
to many UCSD researchers.
Technology licensing and transfer is a complicated
process and many researchers feel lost once they disclose
their innovations to us.
I hope the following briefing will help to demystify
the process.
After a disclosure is received by TechTips, it sets off a
chain of activities at the offices and interactions with the discloser and other
administrative units on campus and beyond.
Firstly, the TechTips Disclosure Management Group will assign
the disclosure a "case number" or a "docket number" with
designations indicating that the intellectual property (i) originates from work
at the San Diego campus; (ii) whether it discloses an "invention" or a
"copyright" material; (iii) the fiscal year the disclosure is made;
and (iv) a serial number indicating the timing of the disclosure received by
TechTips. A typical docket number for
a San Diego copyright disclosure will appear as SDCYY-XXX with "SD"
signifying "San Diego campus", the "C" signifying it is for
a "copyright" material, "YY" indicating the fiscal year the
disclosure is made (e.g. 99 for 1999; 01 for 2001), and "XXX" the
serial number indicating the sequence of disclosure received by this office.
If the disclosure is for an invention (e.g. a new idea of doing things or
a new composition matter etc.) and not a copyright material, the designation
"C" following “SD” will be omitted.
Since the office manages thousands of disclosure records through the
years, providing a specific “case number” or “docket number” along with
any of your correspondence or communication with us always helps us to be on the
same page with you and saves time.
The Disclosure Management Group will then research the
disclosure on issues related to (i) whether the work leading to the development
of the intellectual property was/is sponsored by a third party and to determine
from the sponsor agreement whether the sponsor has any pre-negotiated
"sponsor rights" that the university is obliged to fulfill; (ii)
inventorship and authorship to determine whether the intellectual property
should be solely owned by the The Regents of the University of California or
jointly owned with a third party due to "co-inventorship"
or “co-authorship” resulting from collaboration activities; (iii)
proper assignment of the intellectual property to rightful owner(s); (iv) the
necessity to negotiate with any joint owner(s) of the intellectual property for
a proper management agreement most often in the form of either an
Interinstitutional Agreement or a Royalty-sharing Agreement; and/or (v) any
potential patent bar date triggered by a publication, public disclosure or
commercial sale that may make patenting an invention no longer possible.
These activities are the equivalent of a
“background check” for the disclosed work and may take time that is
not fully under the control of TechTips. For
example, we often have to contact the payroll office to ascertain a UCSD
researcher’s employment status at the University for the relevant time period,
or contact the Office of Contract and Grant Administration to obtain a copy of
the research contract to confirm the funding source and to review any
obligations that the University may have to a sponsor.
If an Interinstitutional Agreement is necessary, negotiation with the
other party owner also may take considerable time.
Once most of the “background information” is available,
the disclosure is reviewed by the Director or an Assistant Director of TechTips.
It is then assigned to one of the Licensing Officers or Senior Licensing
Officers to be included in his/her “portfolio” of cases under his/her
management based on a match of the disclosure subject matter and the officer’s
technical expertise, business experience and if any, prior interactions with the
researchers. From this point on,
the licensing officer will be the “key contact” for the researcher(s) of the
particular disclosure case and is responsible for providing advice, seeking
input, and keeping the researcher(s) updated on the strategy and progress of our
intellectual property protection, marketing, and licensing efforts.
Any time you have new data or technical development, a new potential
licensee contact, an approaching publication date or public disclosure event,
another potential application, or information on competing technical advances
concerning your disclosed innovation, please make sure you let the licensing
officer know so we can coordinate our activities as much as possible.
Once a licensing officer is assigned to your disclosure,
s/he will be in contact with you to learn more about your innovation.
Together, you will design a course of
actions relating to the marketing and licensing of the
innovation. From time to time, the
licensing officer will also make recommendations to the Director concerning the
statutory protection the innovation may need based on the perceived market value
of the innovation, the approaching statutory bar date or activity, the
cost/benefit of the protection, and the likelihood of successful protection.
The Director will then make a decision based on the budgetary situation,
the past experience on work by the researchers and the licensing officer, the
developmental stage of the innovation, and the overall market environment for
the innovation.
How Do We Market Innovations?
Unless an innovation has prior contractual obligations to a
third party (such as the sponsor of a research agreement or the provider of a
material transfer agreement etc.), the first step we take is to broadly announce
the availability of the innovation thereby providing equal opportunity access to
all businesses. This is done by the
use of a non-confidential disclosure (NCD) that sufficiently describes what the
innovation may do without providing any proprietary know-how to “enable” the
innovation. The NCD is normally a
collaborative work by the licensing officer and the lead researcher of the
innovation and will be used to aggressively market to potential industrial
partners who may develop it into useful products.
We generally use two marketing approaches, the “mass
marketing” approach and the “targeted marketing”
approach, each of which complements the other.
To reach technology seekers broadly, we post the NCD
in our searchable Web site under the section “Technologies
Available for Licensing” (http://invent.ucsd.edu/tech_available/techavail.html)
so that companies from all over the world can easily browse
and search using the Internet.
Selected innovations listed on our Web site are also
cross-listed in the UC system-wide office Web site as well
as several subject-specialized or general technology Internet
portal services such as TechEx, University Inventions, Patent
Café, UVentures, and Pharmalicensing etc.
These cross-listings further help us to reach more
potential licensees globally.
We also use on-line databases, reference libraries,
and SIC for industries to search for selected companies (normally
about 20 to 40) that may be interested in the innovation and
mail them the NCD. The above activities cast a broad net and
constitute our routine “mass marketing” efforts.
At the more “targeted” level, we rely on referrals by
our own researchers as well as our own experience and contacts in the relevant
industry to directly approach individuals in selected companies.
Referrals by our researchers are very valuable sources because they are
leaders in their field of research and certainly know very well the practical
and often commercial “relevance” of their work to society.
All our licensing officers attend industry conferences routinely and they
also have previous professional experience in the high technology industry.
The combined efforts of the researchers and our licensing officers will
normally generate a list of targeted candidates from which we can solicit
interest in developing the innovation into a useful product for the public.
Getting Down to Business with an Interested Company
Once a company contacts us to express an interest in an
innovation, we get busier. First of
all, we will enter into a Confidential Disclosure Agreement (CDA) with the
company so that we can freely discuss the technical details of the innovation
and the company’s proprietary commercial interest and business intention.
You may have noticed that TechTips is an area where access is pretty well
secured. It is not that we are
anti-social. It is because we are
in possession of valuable confidential business information from many potential
licensees of our innovations. We do
have to make sure the companies’ proprietary information is secured.
After a CDA is completed, relevant information will be
exchanged between TechTips and the company. To
the extent not prohibited by conflict of interest regulations, we like to
involve the researchers by using their assistance in the exchange of information
with the company and to evaluate the company’s ability to develop the
innovation in a meaningful manner. It
is our experience that the more willing the researchers are to assist TechTips, the
higher is the likelihood a license agreement can be reached with the interested
company. This “courting” stage may take several months depending on the
company. Our experience is that the
bigger the company, the longer it may take due to the layers of review and
approval it requires internally.
Once a company has a chance to learn about the details of
the innovation, it will decide whether it has a genuine interest in obtaining
the legal right to commercially develop the innovation or to simply wish us
better luck with another company. If
it is the former, we will negotiate with the company to finalize a contract.
If it is the latter, we will continue to market the innovation to the
public. Often, we can get useful
information from the company even if it is no longer interested in the
innovation. We may find out that we
have been “barking up the wrong tree” and should be targeting companies in
other businesses, there are keen competing innovations in the market place, our
innovation may be too “embryonic” and may require further development, or
the innovation is not economically viable as a commercial product, etc.
We learn from the information and use it to improve our decision-making
in the continued management of the innovation.
When a company desires to obtain the right to commercialize
an innovation, there are three
contract instruments we routinely use. The
company and TechTips may enter into a Letter of Intent or an Option Agreement so
that certain rights to license the innovation are reserved for the company for a
limited period of time. This allows the company time to further evaluate the
innovation or to raise funding (often required by start-up companies) for the
purpose of developing the innovation. The
company usually pays a small fee plus the costs for the statutory protection of
the innovation (e.g. costs for filing and prosecution of a patent application or
registering a copyright etc.). The
company may desire to enter into a License Agreement with TechTips directly.
The license will grant the company certain legal rights to commercialize
the innovation. The rights may be
“exclusive” or “non-exclusive” in nature, for selected (e.g. only for
“diagnostic use” but not for “therapeutic use”) or all “fields of
use”, and/or for certain or all “territory” (e.g. for “Europe” only).
The company normally has to pay the university certain fees plus
royalties on products it may sell using the innovation.
Since no two innovations are identical, there is no “routine” or
“formula” when it comes to negotiating the terms and conditions of a
license. TechTips works with potential
licensees in a “partnership” spirit in that we do not create an artificially
high “entry barrier” by demanding a high up-front license issue fee and we
expect reasonable royalties paid only when products developed using our
innovations are successfully sold by the licensees.
However, we do collect some up-front fees to make sure that our licensees
are truly committed to developing our innovations and are willing to pay up
front a “deposit” for the opportunity. The “reasonable” royalty rates we
collect on products sold usually are within the “industry norm” based on
several surveys and studies by
licensing professionals and licensing societies.
When we negotiate the fees and royalties with the company, we take into
account the stage of development and uniqueness of the innovation, the character
of the industry sector, the strength of intellectual property protection for the
innovation, the market potential of the products the innovation may bring, the
likely profit margin of the products, and the risk (both financial and
technical) the company may face in developing the innovation to commercial uses. We like to treat our potential licensees fairly and do not
make unreasonable contractual terms and demands from our licensees. For examples
of a “typical” UCSD License Agreement and other agreements that we use
routinely, please visit our Web site at http://invent.ucsd.edu/forms_agreements.html.
For more information concerning Disclosure of your
innovations, please contact Rachel Merrill at 822-3275 (rmerrill@ucsd.edu)
For an update on the status of any of your disclosed innovations, please contact
the Licensing Officer assigned to you innovations or any of the service
managers. They are listed on our
Web site.
A LEAP Forward – The TechTips License and Entrepreneur
Assistance Program
Following the mandate of the Bayh-Dole Act to provide
preference to small businesses, TechTips
offers special assistance to encourage small businesses, including start-up
companies, to take advantage of UCSD innovations. The TechTips License and Entrepreneur Assistance Program (LEAP)
is designed to provide the necessary assistance to small business entities and
entrepreneurial researchers to more easily access and develop UCSD innovations
for commercialization. LEAP comprises a series of “resource referrals” that
small businesses and budding entrepreneurs may voluntarily take advantage of to
obtain the necessary professional services in both legal, financial and business
matters. Many of these service
providers are members of UCSD CONNECT and have previous experience on working
with TechTips and the university to make the technology transfer and
commercialization process efficient and effective. TechTips is confident that
trusting small businesses with UCSD innovations will not be wasted and
will be better utilized and developed if they have such professional help.
We hope LEAP will facilitate our license negotiation process with small
and start-up companies, who often have no previous experience in licensing from
the university or in the development of business plans, while also developing
programs that satisfy the University goal of ensuring our innovations are
developed diligently and for the public good.
The LEAP referral programs consists of selected legal,
financial, and business consulting and service providers that TechTips, through its
previous interactions with them, believes are cognizant of the relevant
university policies and regulations governing UC employees.
They also understand the broad goals and Mission of our technology
transfer activities, appreciate our “partnership” spirit in establishing a
licensor-licensee relationship, and have the ability to provide sound and
professional services to our potential licensees and in their best interests.
Recognizing that many small and start-up companies have cash flow
limitations, many of these service providers are open to arrangements that are
results oriented and that returns to the service providers may materialize only
if their services result in genuine value and/or cash flow for their small
business clients. TechTips is also committed to keeping these service providers
current regarding UC policies and regulations and also to monitor the quality of
the services they provide so that our (potential) licensees may receive the best
value possible. The range of legal,
financial, and business services that LEAP service providers may provide
includes:
¨
Legal services for new business start up (including corporation
structure consulting and incorporation
services);
¨
Technology valuation and competition analysis;
¨
Business plan development;
¨
Contract negotiation and review, including license and consulting
agreements;
¨
Interim management and operation services;
¨
Business development;
¨
Capital funding representation;
¨
Product/Market planning;
¨
Strategic/Tactical planning;
¨
Project management;
¨
Traditional and internet marketing/advertising; and
¨
Vendor relations.
Small businesses and entrepreneurs who are interested in
taking advantage of UCSD innovations and obtaining LEAP information should
contact either the TechTips Director or the Licensing Officer responsible for the
innovation you are interested in.
TechTips
Outreach and Professional Activities
TechTips actively
participated and was well represented in many professional conferences and trade
shows of technology transfer organizations and societies. Director Alan Paau,
Senior Licensing Officer Jane Moores, Assistant
Director Eric Lund, and Patent Manager Vanessa Tollefson attended the annual
meeting of the Licensing Executive Society (LES) this past August
in Edinburgh. Dr. Paau also
lectured at the 30th Taiwan Society
of Cardiology Annual Meeting and at the Taiwan Development Center for
Biotechnology on technology transfer and new business development opportunities
and experience. Along the trips, he
visited and shared his experience in technology transfer and Triton goodwill
with similar programs in the Chinese University of Hongkong, Hongkong University
of Science and Technology, and Tsinghua University (Beijing, China). Director
Paau also spoke at the recent annual meeting of the Scientific Applications
International Corporation on intellectual property commercialization and
donation issues and activities to its Technology Commercialization business unit
and also was a panelist and speaker at the International Symposium on
Intellectual Property Policy and Technology Transfer Agreement organized by the
Meijo University in Nagoya, Japan.
Jane, Eric, Vanessa, Senior Licensing Officer Larry Brand, and Disclosure
Manager Julie McPherson, and Dr. Paau also attended two seminars on
“Technology Valuation” organized by the Orange County chapter and the San
Diego chapter of LES.
Larry also attended the
second Annual Plant Genomics Conference in Boston
where he distributed information regarding UCSD plant molecular biology
innovations. In the past year, Vanessa coordinated the availability at TechTips a
tele-seminar series offered by the law firm of Schwegman, Lundberg, Woessner,
& Kluth (Minneapolis, MN) on various
Intellectual Property topics and latest court rulings for TechTips and other UCSD
staff who were interested in intellectual property issues.
Vanessa also spoke at the Los Angeles Intellectual Property Law
Association Spring Seminar in Newport Beach on the topic of UCSD technology
transfer activities.
Technology
Transfer & Entrepreneurship:
New
Start-up from SDSC
Caimis, Inc. and Caimis Geo, Inc (www.caimis.com) are two
new start-up companies from the San Diego Supercomputer Center.
Caimis is based on Internet traffic monitoring and network management
tools, while Caimis Geo is based on Internet geographic location tools.
The tools were developed by the Cooperative Association for Internet Data
Analysis program team at SDSC and are exclusively licensed to the companies for
commercial uses.
Contact: Mr. Daniel Westrick, phone: 858/456-3915, email: westrick@caimis.com
Triton Ticket
System goes Global
The
Triton Ticket System, an Internet based ticketing system for concerts, shows,
sport, and similar events has been licensed to Records.de (www.records.de), a
company based in Munich, Germany. The
technology was developed by Dr. Bennett Yee of
Electrical & Computer Engineering Department. Records.de has obtained
exclusive rights to all European countries and successfully demonstrated the
ticketing system at a trade show this past August.
The Triton Ticket System has also been licensed to NEC (Tokyo, Japan) for
commercial use in Asian countries.
Record.de Contact:
Mr. Bernd Hartmann, phone: 49.89.820.4704.0,
e-mail: bernd.hartmann@records.de
NEC
Contact: Mr. Shigehiro Funatsu, phone: 81.3.3798.6388
Surf’s Up!
An ocean wave modeling
software developed by Dr.William O’Reilly of the Scripps Institution of
Oceanography has been licensed to Swell.com, a Huntington Beach, CA firm that
provides free surfing forecasts via their website (www.swell.com).
Contact:
Mr. Sean Collins, phone: 800/229-7873, email: scollins@surfline.com
Preventing Crop Losses
Inventions of Dr. Martin
Yanofsky, in the Biology Department, for the prevention of seed pod shatter in
rapeseed (canola) oil producing crops have been licensed to Aventis Crop
Science. The technology retains the
oil seeds in the pods until all the pods are dried and can be mechanically
harvested, thus avoiding losses due to unsynchronized release of the seeds onto
the ground.Contact: Mr. Victor Ghysels of
Aventis Cropscience, phone: 011.329.235.8420, email: victor.ghysels@aventis.com
Novel
Technique for Discovering Antibiotics from Deep Ocean
A novel method for
cultivating unusual microbes from the deep ocean sediments was licensed to
Nereus Pharmaceuticals from the laboratory of Dr. William Fenical, at the
Scripps Institution of Oceanography. These
organisms were heretofore almost impossible to culture on a commercial scale.
It is thought that the deepest ocean sediments contain
antibiotic-producing species that will have not co-evolved with the genetic
resistance factors found in terrestrial pathogens.
New resistance-free antibiotics are a goal of the research.
Contact: Mr. Kobi Sethna, CEO, of Nereus Pharmaceuticals Inc., phone:
858/587-4093, email: ksethna@nereuspharm.com
New
Approach to Drought Resistance in Crops
A research and licensing
partnership was initiated between the laboratory of Dr. Julian Schroeder, of the
Biology Department, and our neighbors in Torrey Pines mesa, Novartis
Agricultural Discovery Institute, Inc. (NADII). Dr. Schroeder discovered that water loss in plants is
controlled by a molecular-signaling pathway.
Application to crops of a drug-like inhibitor of the pathway protects
plants from water starvation, and could lead to a revolutionary agrochemical for
protecting crops from drought. Contact: Mr. Timothy Torcia, NADII, phone: 858/812-1067, email: timothy.torcia@NADII.novardis.com
Optical Tweezers for Bio-Arrays
A
portfolio of four technologies has been licensed to the San Diego start-up
company, Genoptix. This portfolio
of inventions includes work directed towards field-assisted fluidic assembly of
small devices and molecules, microfluidic switching technologies, and the novel
design and use of optical tweezers. Founded
by Dr. Tina Nova and Dr. Jim O’Connell, Genoptix’s
company motto is “Advancing Cellular Sciences with Biophotonics”.
Contact:
Dr. Tina Nova, phone 858/523-5000, email: www.genoptix.com
Have
a Heart
An invention developed by
the research groups led by Dr. Kenneth Chien and Dr. Wolfgang Dillmann that
provides for a gene target and an approach to treat and prevent congestive heart
failure was licensed to Eli Lilly & Co. (Indianapolis, IN).
UCSD is collaborating with the company to continue development of this
promising technology. Dr. Chien and Dr. Dillmann are both at the Department of
Medicine. Contact: Mr. Edward Marple,
Senior Business Development Assocaite of Eli Lilly & Co., phone:
317/276-2000.
This Newsletter is published by the UCSD Technology Transfer and
Intellectual Property Services for the UCSD and affiliated technology community.
Please forward comments and suggestion to:
UCSD TechTips
9500 Gilman Drive
La Jolla, CA 92093
Mail Code 0910
Phone: 858-534-5815
Fax: 858-534-7345
email: invent.ucsd.edu
http://invent.ucsd.edu
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