University Tech Transfer Flashcards
Beginning of modern age of tech transfer
Harry Steenbock, University of Wisconsin
Invention: use of UV light too boost Vitamin D in food / dairy
Formed the Wisconsin Alumni Research Association (WARF) to commercialise IP to support further research
Right to exist was hotly debated, but rickets was effectively eliminated
Bayl Dole Act of Congress
Act of congress, when they were trying to figure out what to do with IP coming out of government funded research
Previously, intellectual property had reverted to government, which was not able to develop it sufficiently
Two different beliefs:
- Hamiltonian: solution lay within a strong central government, which should take charge and actively manage these resources
- Jeffersonian: solution lay with the individual; best the gov could do was provide incentives for success
This is what ends up happening
Bayl-Dole consequences
Universities would take charge. However:
- Grant gov nonexclusive, non-transferrable, paid up license
- File initial application within 1 year
- Report on utilisation of subject inventions
- Agree to allow gov to march in and require licences to be granted
- Require in exclusive licenses to use/sell in US that products are made in the US
Reward split in university
- Percent of sales goes to the university
- Costs of patenting are recovered
- Revenues are split (inventors//uni//tech transfer op get 1/3 each usually)
Spinout reward split in university
Deals vary widely
Good places pay for initial patenting, take 5% equity and let inventors take it forward
University pays for initial filing
// Note: IMperial controls spinouts significantly
Reward to inventors of imperial
Once costs are covered, 50% goes to ICL forever
First 50k after costs: 50% to inventors
Over 50k: 40% to inventors, 10% to dept
This is friendly compared to other university
Process of IP filing at imperial
College pays initial filing fees
Then contacts the industry
Tries to licence it before patenting costs build up (so that investors pay for patenting lawyers, rather than themselves).
Spinout - Old ICL policy
College holds 50% equity, inventors hold other 50%
This created issues, as it is hard for investors to invest if college owns half the company
Spinout - new ICL policy
Innovations pay for initial patenting, take 5% equity and let investors take it forward. This is the most beneficial deal.
Tech Transfer at ICL
Initially done by Tech Transfers, a subdivision of Imperial Innovations
- They worked to support startups for many places, not just imperial
- This meant they diverted their attention from IC based startups
- This created a hostile environment
- The VC fund (other half of II) was successful and spun out to “Touchstone innovations”
- Tech transfer stayed at imperial and was then shut down
- Tech transfer is now incorporated into imperial +
Tech Transfer ICL results
Receives. 350 Innovations a year
Patents around 50 (1 in 7)
5 companies formed, 30 licences signed
Most disclosures from Eng (50.6), then Med(30.7), then NS (24.6)
Patents: Eng (57.9), Med (24.6) NS (17.5)
Comparison of ICL Tech transfers to competitors
Imperial is engineering based, so it is meant to have more successful spinouts
However, it falls behind Oxford, Cambridge and UCL in terms of number of active firms in 2016, number of firms which have survived 3 years, and incomes
Dept of Bioengineering Entrepreneurs in Residence
Danny Green
Tommy Buckland
Both work part time, with their startups alongside
Outcomes of new, earlier tech evaluation at ICL
- They will explain why it is not a current good business opportunity and how to develop it further
- . Take the IP away yourself
- Reccomend to College /further IP development
- More effective than previous structure
