Ensuring Academic Research Reaches & Benefits the Public Technology Transfer at the University of MissouriSt. Louis February 10, 2012 What is Academic Technology A formal transfer of rights to Transfer? use and commercialize new discoveries and innovations resulting from scientific research to another party. Universities typically transfer technology through protecting (using patents and copyrights) and then licensing the new
innovations to industry for commercial development. Technology Commercialization Process Commercialization Stage Idea Invention Patent License Probability of Success Commercialization Steps
Development Demonstration Enablement Invention Disclosure Effort/Time The Value of Technology Transfer Benefits the Public New industries created, new markets opened Public health and well being improved Science and technology advanced Benefits the Economy
Increases gross domestic product and industrial output Creates new companies and jobs Benefits the University Provides a return for investment in further research 1/3 to inventors 2/9 to campus 2/9 to PIs department(s) 2/9 to System Helps attract sponsored research Offers career and financial incentives to faculty inventors Enriches student experience, creates opportunities for grads Attracts outstanding entrepreneurial faculty Creates entrepreneurial students Types of University Innovations Technologies to:
Improve Health and Quality of Life Slow the Spread of Diseases Improve Information Management and Communication Replenish Water Supplies Restore the Earth Enhance Food Sources Further the Green Movement and much more Impact of University Innovations (www.betterworldproject.org) Technology Transfer at UMSL STAFF OFFICE OF RESEARCH ADMINISTRATION
Vice Provost for Research Nasser Arshadi Director of Technology Commercialization & Economic Development Tamara Wilgers Sr. Accountant / Notary Licensing Associate Michael Muskus Charles Ellis Technology Transfer at UMSL TTO SERVICES Invention Disclosures Assistance Identifying Commercially
Viable Research Discoveries Assistance with Form Market Analysis Patentability Analysis Marketing Licensing Agreement Compliance Reports/Licenses to Government Agreements and Negotiations NDAs MTAs Sponsored Research Agreements Inter-Institutional Agreements Options to License Licenses Publication and IP Waivers Fee-for-Service Agreements
Etc. Other Assistance Identifying Funding Opps Grants Seed Funding Venture Capital Grant Application Editing Assistance with Company Formation Special Projects Entrepreneurship Collaborations (eg Innovation Express with ESI) Administer NAI Technology Transfer at UMSL
FY2006-FY2011 TOTAL RESEARCH $ CURRENT ACTIVE LICENSES* 6 $57.2 Million Involving 24 University Disclosures NEW DISCLOSURES 49 $1.16 Million Research Funding per Disclosure
STARTUP COMPANIES ESTABLISHED 5 Around UMSL Technologies *Currently working on a license for the Q3D (Optometry) and an option for an agriculture technology (Biology). Technology Transfer at UMSL EXAMPLES OF UMSL INNOVATIONS Technology to Remove Toxic Aluminum from Intravenous Feeding Solutions used for Premature Infants - (jointly owned with UKRF, licensed to faculty startup) Method to Increase the Oil Production in Plants (e.g., 15%
increase demonstrated in soy) (option agreement to large seed company currently being negotiated) Technologies that Increases the Sensitivity of Spectrophotometers by up to 100 fold (some licensed to an established company, some licensed to a MO startup) Non-Invasive Blood Glucose Monitor - (licensed to MO startup, clinical trials start fall 2012) HPV Therapeutic to Help Eliminate Cervical Cancer (jointly owned with faculty startup company; University rights licensed to the company; UM holds equity interest in the startup) Technology Transfer at UMSL EXAMPLES OF UMSL INNOVATIONS Battery Technology that Provides for Increased Energy Density without a Significant Increase in Volume (applications: fuel cells, lithium-ion batteries, etc.)
Continuously Tunable Eyeglass Lens Automatic Cap Arrangement Scoring Device to automate a widely used color vision test, eliminating human error and making the test significantly faster Light Sensitivity Monitor to quantify photophobia in patients Various Compounds with for Treatment of Sepsis/ Septic Shock, Alzheimers, Plague, Tuberculosis, Diabetes, Pain, and more New Models and Algorithms for Stochastic ResourceConstrained Project Scheduling (applications include manufacturing, project management, supply chain design, workforce optimization) Technology Transfer at UMSL UNIVERSITY INNOVATIONS: Quantitative Three Dot (Q3D) Test A novel device to quantitatively measure visual suppression (e.g., amblyopia or lazy eye) More efficient and effective than existing methods Allows for much earlier detection of visual
suppression than existing methods, improving health outcomes for affected patients Allows for tracking treatment progress over time Use of the Q3D can be extended to pediatrics, optometry, ophthalmology and possibly neurology clinics The Q3D can also be used by military, police officers, pilots, commercial drivers The global ophthalmology devices market is expected to be worth $16.2 billion by 2014 (growth rate of 7.3% from 2009-2014) Dr. Carl Bassi (top left), Michael Howe (top right) Wayne Garver (bottom left) Physics (retired) License negotiations (startup company) are currently in process
Technology Transfer at UMSL INNOVATION EXPRESS Seed Fund for Proof-of Concept and Prototype Development Work (1-year projects) Joint initiative with Express Scripts, Inc. NATIONAL ACADEMY OF INVENTORS (NAI) - www.academyofinventors.org The NAI recognizes and encourages inventors who have a patent issued from the USPTO, enhances the visibility of university technology and academic innovation, encourages the disclosure of intellectual property, educates and mentors innovative students, encourages the translation of the inventions of its members to benefit society Launched by University of South Florida UMSL is a Charter Member 30 current members including Ohio U, Oklahoma State U, Georgetown, Boston U, Auburn, Univ of Nebraska UMSL Chapter Launch April 20
Technology Transfer at UMSL i6 Project A new, regional approach to identifying very early discoveries that with the right assistance, especially from industry experts, can be advanced toward commercial viability. The objective of the i6 Award is to create a more robust pipeline of new bioscience ventures in St. Louis that can potentially grow into significant employers in the future. Co applicants to the Dept of Commerce (EDA) for the St. Louis Regional i6 Project include: BioGenerator (implementation lead) Donald Danforth Plant Science Center Saint Louis University St. Louis County Economic Council St. Louis (City) Development Corporation University of Missouri St. Louis
Washington University Applications for Round 3 of the St. Louis Regional i6 Project are due by April 2, 2012. Technology Transfer at UMSL OTHER COMMERCIALIZATION INITIATIVES Developer of ITE: Innovative Technology Enterprises (2008) Developer of a 100-acre business, technology and research park on North Campus, which is home to the headquarters of Express Scripts, one of the nations largest pharmacy benefit managers (2007) Founding partner of CORTEX along with Washington University, Saint Louis University and BJC HealthCare (2002) Founding partner of the Center for Emerging Technologies (CET) along with Missouri Department of Economic Development (1998) How Does This All Happen?
The TTO is here to help you through the process. Invention Evaluation Is the invention patentable? New Useful Not obvious Is the invention licensable? Will a company pay the University for the right to commercially practice the invention? What is a Patent? A grant of the right to exclude others from making, using, selling, offering for sale, or importing the
invention for a limited period of time. It is not a grant of a right to make, use, or sell the invention. Patenting an Invention Patentable Subject Matter Compositions of Matter (e.g., compounds) Processes (e.g. synthesis of compounds, method of use) Machines Articles Designs (ornamental configuration) Plants (distinct, new varieties) Patenting an Invention: Process US Provisional Application
(Internal counsel) <$200 12 months US Non-Provisional Application (External counsel) $6,000 to $12,000 Not examined Establishes priority date Allows university to quickly protect findings that inventors want to disclose Market Technology
Additional Experimentation PCT Application (External counsel) $3,500 to $5,000 18 months US National Stage Application if non-prov not already filed (External counsel) Foreign National Stage Applications (External counsel)
Up to $100,000 + University covers costs until we execute a license Patenting an Invention Utility Patent Term 20 years from the date that the Provisional Patent Application was filed. Maintenance fees Due 3.5, 7.5 and 11.5 years after issuance of patent.
Patenting an Invention Inventorship its a legal thing Each named inventor must have contributed to the CONCEPTION of the subject matter of at least one claim in a patent application Can differ from authorship on an academic paper List everyone you believe contributed to the concept of an invention on the disclosure the TTO (and sometimes our
attorneys) will help sort it out What About Publishing? Public Disclosure Written journal articles, abstracts, posters, book chapters, proceedings, demonstrations, theses, websites, etc. Oral formal talks, meeting presentations, departmental meeting open to the public, theses defense, discussions What About Publishing? Protecting IP does not have to
interfere with publishing or presenting your work You can (and should) do BOTH! Just contact us first (to retain foreign rights) or as soon as possible after (to retain US rights) Considerations for Innovators Invention Disclosure WHY? 1) Protects your invention 2) Required by the university
3) Required by all federal agencies 4) Financial return to inventors, departments, and university 5) Commercially developed for the public good 6) May lead to future collaborations Starting the Process Invention Disclosure Describe as many technical details as possible enable someone to reproduce the invention Identify applications and potential partners if possible Identify funding sources
but we will take draft manuscripts, proposals, theses/dissertations, etc., and help you complete the disclosure form Starting the Process Invention Disclosure How? UMSL ORA website (download disclosure form) http://www.umsl.edu/services/ora/ Tamara Wilgers, Director, Technology Commercialization and Economic Development [email protected], ext. 6884 Michael Muskus, Licensing Associate
[email protected], ext. 4248 Thank you. www.umsl.edu University of Missouri-St. Louis Office of Research Administration 341 Woods Hall One University Boulevard St. Louis, Missouri 63121 Phone: 314-516-6884 Fax: 314-516-6759
