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Technology Transfer From a UARC Perspective. Norma Lee Todd Technology Transfer Assistant Director. Norma Lee Todd (443) 778-4528 Norma.lee.todd Divisions of the Johns Hopkins University. Divisions of the Johns Hopkins University. School of Arts & Sciences

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Technology Transfer From a UARC Perspective

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Technology transfer from a uarc perspective l.jpg

Technology Transfer From a UARC Perspective

Norma Lee Todd

Technology Transfer Assistant Director

Norma Lee Todd

(443) 778-4528

[email protected]

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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

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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)

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JHU Applied Physics Lab - APL

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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


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Program BreadthUniversal Reach … Nearly Infinite Domain

In Space

In the Air

At Sea

On the Land


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  • 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

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  • 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

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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.”

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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

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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

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    • 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

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    • 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

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    • 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

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    • 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

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    • 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

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    • 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

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    JHU/APL Licensees

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    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

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    • 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

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    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

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    Norma Lee Todd

    Technology Transfer Assistant Director

    (443) 778-4528

    [email protected]

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