Technology Transfer From a UARC Perspective

1. Technology Transfer From a UARC Perspective Norma Lee Todd Technology Transfer Assistant Director Norma Lee Todd (443) 778-4528 Norma.lee.todd@jhuapl.edu www.jhuapl.edu/ott

2. Divisions of theJohns Hopkins University Divisions of theJohns Hopkins University School of Arts & Sciences Whiting School of Engineering School of Professional Studies in Business & Education School of Hygiene & Public Health School of Medicine School of Nursing Applied Physics Laboratory Nitze School of Advanced International Studies Peabody Institute

3. JHU/APL … At a Glance University-Affiliated Research Center (UARC) Focus on National Security Major Efforts in Space Science & Technology Partner in Johns Hopkins Commitment to Education & Medicine 360+ acres 4,000 Employees $ 800M Annual Revenue (est)

4. JHU Applied Physics Lab - APL

5. APL Business Areas APL Business Areas • Air & Missile Defense • Biomedicine • Civilian Space • Homeland Protection • Infocentric Operations • National Security Space • Precision Engagement • Science & Technology • Strategic Systems • Undersea Warfare • Warfare Analysis 5

6. Program BreadthUniversal Reach … Nearly Infinite Domain In Space In the Air At Sea On the Land 6

7. A strategic US DoD research center located within a university • Six official UARCs: • JHU/APL • Penn State ARL • U of Texas at Austin ARL • U of Washington APL • Georgia Institute of Technology/Georgia Tech Research Institute • Steven Institute of Technology/Systems Engineering Research Center What is a UARC? *United States Department of Defense, From Wikipedia, the free encyclopedia, Retrieved September 10, 2009, from http://en.wikipedia.org/wiki/University_Affiliated_Research_Center

8. Affiliated with or part of a university • Provides essential DoD engineering, research or development • Receives sole source contract funding • Maintains a strategic relationship with the DoD • Responsiveness to sponsors requirements—quick capability. • Comprehensive knowledge of sponsors problems. • Broad access to information, including proprietary data. • Broad corporate knowledge. • Independence and objectivity. • Current operational experience. • Freedom from real and/or perceived conflicts of interest. What is a UARC? *Director of Defense Research and Engineering, Memorandum for Assistant Secretary of Defense, Dated May 13, 1996. Subject: University Affiliated Research Center Management Plan

9. JHU/APL Technology Transfer • APL Office of Technology Transfer (OTT) • Formed in July 1999 • 9 Staff: 5 technology managers with licensing expertise in IT, biotech, biomedical, sensors, chemical engineering, telecommunications, space technology • APL technology transfer program customized to: • Technology base • Sponsor-focused environment • Currently under management: • 1600+ inventions • 350 active patents • Patents pending • Mission: • “To broaden the impact of APL’s scientific and technical contributions by transferring APL-developed technology to industry to benefit the local economy, the Laboratory and our sponsors.”

10. JHU/APL Innovation • Prolific inventors – On average, staff disclose 2-3 inventions/week – one every other day • Goal of OTT is to facilitate the transfer of these inventions to the commercial sector via licensing - best way to realize benefits to society • Howard County • Maryland • National • International

11. JHU/APL Technology TransferTen-year profile • 1,299 inventions disclosed • 272 U.S. patents issued • 1,377 U.S. patent applications filed • 238 license agreements executed • >$31 million in licensing income • 20 new companies created • 16 in Maryland • 40+ new products on the market

12. Occasionally engage in research partnerships: • CRADAs • Space Act (NASA GSFC) • Educational Partnership Agreement (AFIT) • Inventor/Program driven • Service to organization—not included in OTT metrics Technology Transfer at JHU/APL

13. OTT operations closely aligned with core mission of the APL • Broaden the impact of APL-developed technology where possible • Metrics for OTT success • Licenses and income • Products on the market • Jobs created • Downstream funding OTT metrics provide a window on JHU/APL technological relevance and innovation Technology Transfer at JHU/APL

14. Primary focus on licensing • Commercial entities: • Dual-use technology • Government sales • Government Agencies • State/local • Federal • Start-up companies (1 – 2 per year) • Drives all OTT metrics for success • Maintains institutional support for technology transfer JHU/APL Technology Transfer

15. Organizational Conflict of Interest (OCOI) Mitigation is critical—greatest risk to OTT • Open communication/transparency of operations vital • Departmental Technology Transfer Team: senior reps from all Business Areas flow information between OTT and JHU/APL Executives • Quarterly management reports on company engagements • Post active licenses for supervisors • Annual check-in with licensees • Benchmark peers JHU/APL Technology Transfer

16. Formal risk mitigation plans when required • Licensing strategy • 1st Tier: Commercial entity removed from US government work/sales • 2nd Tier: Commercial entity works for or sells to US government with limits on FOU and exclusivity, firewall technical staff • Walk away • Mock term sheets routed through affected Business Areas or programs • Standardize agreements • Minimize exclusivity JHU/APL Technology Transfer

17. Minimize JHU/APL technical contributions post-license execution • Minimize on-going financial consideration • Up-front payment • No royalties • Balloon payment high sales milestone is reached (anti-embarrassment clause) • Licensee assume patent prosecution and costs • License language includes APL’s TDA role to the sponsor (i.e. T&E) • Require disclosure to the government by both APL and licensee JHU/APL Technology Transfer

18. JHU/APL Licensees

19. JHU/APL Programs: In-reach • Educate staff, promote innovation, motivate participation • Innovation x∆ Lunchbox Seminar Series • Under Armour, Google, Cisco, Discovery Studios • Inventor focus groups • Communities of Practice • Relationship building/networking within JHU/APL • Annual Invention of the Year Awards to recognize inventions for the calendar year • OTT IR&D fund, OTT Patent fund

20. TEDCO partnerships: UTDF awards expand OTT IR&D, showcase events • Ongoing work with DBED, UMBC Activate Program, SBA (STTRs/SBIRs), Howard County EDA/Neotech Incubator, FLC • Maryland Licensing Executives Society • MIT Enterprise Forum • OTT Newsletter: New inventions/opportunities, New partnerships, New technologies JHU/APL Programs: Outreach

21. JHU/APL OTT Contact Information • Kristin Gray, Director: 240-228-7927 • Norma Lee Todd, Assistant Director: 240-228-4528 • Teresa Colella, Life Science: 240-228-3782 • Heather Curran, Biomedical Devices: 240-228-7262 • John Bacon, Sensors: 240-228-8309 • Leslie Martinelli, Finance & Agreements: 240-228-3541

22. Norma Lee Todd Technology Transfer Assistant Director (443) 778-4528 Norma.lee.todd@jhuapl.edu www.jhuapl.edu/ott