Technology transfer process at cu
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Technology Transfer Process at CU. Introduction Capabilities Process Approaches Biomaterials Biomarkers Targets Therapeutics Devices Platforms Startups Successes Summary. Rick Silva, PhD Assistant Director [email protected] Susana Read, DVM, MBA

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Technology transfer process at cu

Technology Transfer Process at CU

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Devices

Platforms

Startups

Successes

Summary

Rick Silva, PhD

Assistant Director

[email protected]

Susana Read, DVM, MBA

Licensing Associate

[email protected]

Kate Tallman, MBA

Assistant Director

[email protected]


Technology

Technology

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

The ideal…

The inventor has thought about a problem in the contextof product development for a lucrative market

Proof of concept work is done

Infrastructure in place to exploit technology

The commercial partner in is the queue

…the blockbuster drug or the killer app


Technology1

Technology

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

The reality…

Raw technologies

Not directed to a market problem

Product has not been defined or conceived

Data directed at curiosity, publication, and next grant cycle

Lack of infrastructure for revolutionary advances

…a solution looking for a problem


Technology the gap

Technology - the “gap”

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

The risk gap: this is not venture capital

SBIR/STTR

CAPCO/CVCA

RAID and RAPID programs at NIH

Gap funds

Birdseed funds


Technology transfer process at cu

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Internal

processing

Receive

disclosure

Data incomplete-

On Hold

Accept

disclosure

Create case

add to database

Assign

manager

Internal

Analysis

Release rights

to inventor

Rights

Determination

Review of

Related contracts

Notification of

other owners

Agreement

clarifying rights

Commercial

feasibility

analysis

Legal

Market

IP

Technical

Release rights

to inventor

4 months

Business plan

Management

IP Terms

Startup

-or -

licensing

Patent

Filing

Advise

Inventor (s)

of commercial

plan

Marketing

Interest?

Yes

Negotiation

External

Development

No

Release rights

to inventor


Invention disclosure

Invention disclosure

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Evidence for patent

- Novelty

- Non-obviousness

- Utility

Stage of development

Expert opinions

Public disclosure

Sponsorship


First inventor interview

First inventor interview

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Technical feasibility

Patentability

Applications and marketability

Inventor interest and motivation

Benefits, as inventor sees them

Inventor’s industry contacts

Future resources

Commitment to technology validation

Commitment to technology development

Expectations

Pending publications, collaborations, joint ownership


Technology transfer process at cu

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Internal

processing

Receive

disclosure

Data incomplete-

On Hold

Accept

disclosure

Create case

add to database

Assign

manager

Internal

Analysis

Release rights

to inventor

Rights

Determination

Review of

Related contracts

Notification of

other owners

Agreement

clarifying rights

Commercial

feasibility

analysis

Legal

Market

IP

Technical

Release rights

to inventor

4 months

Business plan

Management

IP Terms

Startup

-or -

licensing

Patent

Filing

Advise

Inventor (s)

of commercial

plan

Marketing

Interest?

Yes

Negotiation

External

Development

No

Release rights

to inventor


Commercial feasibility analysis

Commercial feasibility analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Basic Questions for Physical Sciences

What does it do?

What is the problem to be solved?

How does the technology solve it?

What are the alternatives? (How is the problem currently solved?)

How is the technology better than alternatives?


Technology transfer process at cu

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Internal

processing

Receive

disclosure

Data incomplete-

On Hold

Accept

disclosure

Create case

add to database

Assign

manager

Internal

Analysis

Release rights

to inventor

Rights

Determination

Review of

Related contracts

Notification of

other owners

Agreement

clarifying rights

Commercial

feasibility

analysis

Legal

Market

IP

Technical

Release rights

to inventor

4 months

Business plan

Management

IP Terms

Startup

-or -

licensing

Patent

Filing

Advise

Inventor (s)

of commercial

plan

Marketing

Interest?

Yes

Negotiation

External

Development

No

Release rights

to inventor


Legal analysis

Legal analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Are there legal constraints?

Ownership, preexisting obligations

Regulatory path

Healthcare policy

Reimbursement

Government rights

Disclosure obligation of the University

Publication rights


Technology transfer process at cu

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Internal

processing

Receive

disclosure

Data incomplete-

On Hold

Accept

disclosure

Create case

add to database

Assign

manager

Internal

Analysis

Release rights

to inventor

Rights

Determination

Review of

Related contracts

Notification of

other owners

Agreement

clarifying rights

Commercial

feasibility

analysis

Legal

Market

IP

Technical

Release rights

to inventor

4 months

Business plan

Management

IP Terms

Startup

-or -

licensing

Patent

Filing

Advise

Inventor (s)

of commercial

plan

Marketing

Interest?

Yes

Negotiation

External

Development

No

Release rights

to inventor


Market analysis

Market analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Is there a market?

Who is the customer

Market drivers

Epidemiology, incidence, prevalence

Reimbursement by third-party payers, validated payer

Demographics/trends

Competitive landscape


Market analysis1

Market analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Disruptive vs. incremental technology

What does the ideal partner look like?

Does it stand alone?

What are the risks?

Is the infrastructure in place?


Market analysis2

Market analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Physical Sciences: Is it a big enough market?

Does the problem really need to be solved?

Are the only customers a few specialized University labs?


Technology transfer process at cu

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Internal

processing

Receive

disclosure

Data incomplete-

On Hold

Accept

disclosure

Create case

add to database

Assign

manager

Internal

Analysis

Release rights

to inventor

Rights

Determination

Review of

Related contracts

Notification of

other owners

Agreement

clarifying rights

Commercial

feasibility

analysis

Legal

Market

IP

Technical

Release rights

to inventor

4 months

Business plan

Management

IP Terms

Startup

-or -

licensing

Patent

Filing

Advise

Inventor (s)

of commercial

plan

Marketing

Interest?

Yes

Negotiation

External

Development

No

Release rights

to inventor


Ip position analysis

IP position analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Are there patent constraints?

Publications

Patentability

Enforceability

Freedom to operate

Freedom to exclude

Prior art


Ip position analysis1

IP position analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Obviousness

Licensing - exclusivity, sublicensing,

payment model

Fields of use

Geographical distinctions


Ip position analysis2

IP position analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Enforceability – Physical Sciences

Can you prove infringement easily?

Is it difficult to design-around?


Technology transfer process at cu

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Internal

processing

Receive

disclosure

Data incomplete-

On Hold

Accept

disclosure

Create case

add to database

Assign

manager

Internal

Analysis

Release rights

to inventor

Rights

Determination

Review of

Related contracts

Notification of

other owners

Agreement

clarifying rights

Commercial

feasibility

analysis

Legal

Market

IP

Technical

Release rights

to inventor

4 months

Business plan

Management

IP Terms

Startup

-or -

licensing

Patent

Filing

Advise

Inventor (s)

of commercial

plan

Marketing

Interest?

Yes

Negotiation

External

Development

No

Release rights

to inventor


Technical analysis

Technical analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Are there technical risks?

Stage of development

Is the technology validated?

Is the product validated?

What can go wrong?

Is the inventor funded?

Is the inventor interested in the development work?

How to fund development?


Technical analysis1

Technical analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

How to fund development?

What are the milestones/checkpoints?

Regulatory environment

Analytical, biological, clinical development needs

Licensing - exclusivity, sublicensing, payment model

Fields of use

Geographical distinctions


Technical analysis2

Technical analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Physical Sciences

Is it technically sound?

Does data exist to show it works?

Is it far enough along in development?

Is there a prototype?

Any barriers to scaling-up?

Can it be produced profitably?


Technology transfer process at cu

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Internal

processing

Receive

disclosure

Data incomplete-

On Hold

Accept

disclosure

Create case

add to database

Assign

manager

Internal

Analysis

Release rights

to inventor

Rights

Determination

Review of

Related contracts

Notification of

other owners

Agreement

clarifying rights

Commercial

feasibility

analysis

Legal

Market

IP

Technical

Release rights

to inventor

4 months

Business plan

Management

IP Terms

Startup

-or -

licensing

Patent

Filing

Advise

Inventor (s)

of commercial

plan

Marketing

Interest?

Yes

Negotiation

External

Development

No

Release rights

to inventor


Licensing

Licensing

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Product IP

Typically exclusive, rarely a startup

Platform IP

Startup or existing company, sometimes divided uses

Process IP

Often nonexclusive to existing companies


Attracting potential licensees

Attracting potential licensees

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

What is the technology?

Why is the technology useful in the organization’sproduct, process, or markets?

How mature is the technology?

What is the “value proposition”?

What do I need to use the technology? Will it stand alone?

What will it cost?

What is the net benefit?


Technology transfer process at cu

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Internal

processing

Receive

disclosure

Data incomplete-

On Hold

Accept

disclosure

Create case

add to database

Assign

manager

Internal

Analysis

Release rights

to inventor

Rights

Determination

Review of

Related contracts

Notification of

other owners

Agreement

clarifying rights

Commercial

feasibility

analysis

Legal

Market

IP

Technical

Release rights

to inventor

4 months

Business plan

Management

IP Terms

Startup

-or -

licensing

Patent

Filing

Advise

Inventor (s)

of commercial

plan

Marketing

Interest?

Yes

Negotiation

External

Development

No

Release rights

to inventor


Patent costs

Patent costs

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Simple, mechanical application = $8-10k

Complex chemical or software = $20-25k

Pharmaceutical = $30k +

Prosecution = $4k per office action

Issue/maintenance fees for life of patent $1.4k + $0.9k + $2.3k +$3.8k = $8.4k


Technology transfer process at cu

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Internal

processing

Receive

disclosure

Data incomplete-

On Hold

Accept

disclosure

Create case

add to database

Assign

manager

Internal

Analysis

Release rights

to inventor

Rights

Determination

Review of

Related contracts

Notification of

other owners

Agreement

clarifying rights

Commercial

feasibility

analysis

Legal

Market

IP

Technical

Release rights

to inventor

4 months

Business plan

Management

IP Terms

Startup

-or -

licensing

Patent

Filing

Advise

Inventor (s)

of commercial

plan

Marketing

Interest?

Yes

Negotiation

External

Development

No

Release rights

to inventor


Marketing strategy

Marketing strategy

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Know the channels that fit the technology

Look for the partners that will develop or use the product/technology

The inventors will get inquiries

Summarize the critical info

Get in touch with the right people

Document marketing, show inventors the efforts

Exposure can lead to critical mass

Seek feedback, refine the pitch

Make adjustments as necessary


Confidential disclosure agreements

Confidential Disclosure Agreements

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Used during the marketing stage

Protect international patent rights

Signed by a TTO Director


Technology transfer process at cu

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Internal

processing

Receive

disclosure

Data incomplete-

On Hold

Accept

disclosure

Create case

add to database

Assign

manager

Internal

Analysis

Release rights

to inventor

Rights

Determination

Review of

Related contracts

Notification of

other owners

Agreement

clarifying rights

Commercial

feasibility

analysis

Legal

Market

IP

Technical

Release rights

to inventor

4 months

Business plan

Management

IP Terms

Startup

-or -

licensing

Patent

Filing

Advise

Inventor (s)

of commercial

plan

Marketing

Interest?

Yes

Negotiation

External

Development

No

Release rights

to inventor


Feasibility analysis

Feasibility Analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

  • Will anyone buy it?

    • Opportunity/need

    • Product description

    • Target market

    • Unique benefits

    • Competitive Analysis

  • Can it make a profit?

    • Sustainable competitive advantage

    • Risks

    • Profitability


Feasibility analysis1

Feasibility Analysis

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary


Take home points

Take-home points

Introduction

Capabilities

Process

Approaches

Biomaterials

Biomarkers

Targets

Therapeutics

Device

Platforms

Startups

Successes

Summary

Take detailed notes, always; ask questions frequently

Don’t sign anything, don’t make any actionable decisions

Submit written summaries and recommendations, decisions are made by committees - make your case

Don’t do everything by yourself; don’t reinvent the wheel

Nobody is an expert in everything; work as a team

Keep all of the written resources made available to you

Mistakes are easier to fix early, don’t wait

Organization is critical; keep a notebook and a calendar

Communicate with your mentor/licensing associate

Read all of the TTO materials, understand our values

Call your inventors, be patient with them


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