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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 @jhuapl.edu www.jhuapl.edu/ott. 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

Technology Transfer From a UARC Perspective

Norma Lee Todd

Technology Transfer Assistant Director

Norma Lee Todd

(443) 778-4528

[email protected]

www.jhuapl.edu/ott

divisions of the johns hopkins university
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

jhu apl at a glance
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)

apl business areas
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

what is a uarc
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

what is a uarc8
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

jhu apl technology transfer
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.”
jhu apl innovation
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
jhu apl technology transfer ten year profile
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
technology transfer at jhu apl
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
technology transfer at jhu apl13
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
jhu apl technology transfer14
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
jhu apl technology transfer15
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
jhu apl technology transfer16
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
jhu apl technology transfer17
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
slide19
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
jhu apl programs outreach
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
jhu apl ott contact information
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
slide22
Norma Lee Todd

Technology Transfer Assistant Director

(443) 778-4528

[email protected]

www.jhuapl.edu/ott

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