Navigating the University Technology Transfer August 23, 2012

1. I’ve got an idea…now what? Navigating the University Technology TransferAugust 23, 2012 Christopher Moulding Sr. Manager, Technology Advancement and Licensing

2. Topics to Cover • Historical background for University Technology Transfer • Traditional technology transfer functions • Expanded roles for tech transfer • Best practices in working with TTOs

3. 1980 Bayh-Dole Act: US universities own the inventions resulting from federal funding Photo: Jeff Kubina

4. About USC Stevens • Mission: • Empower USC innovators to make impact with their ideas • University-wide resource to manage patents and patent licenses, and matters related to USC intellectual property • Founded 2006, in conjunction with a $22M naming gift from Mark and Mary Stevens – incorporating Office of Technology Licensing founded in 1981 • Expanded roles to support innovators

5. Traditional Tech Transfer Functions Patenting • Receives disclosure, investigator initiated • Federal (sponsor) reporting • Confirm ownership status of materials • Evaluate patentability--Novel? Non-obvious? Useful? • Evaluate commercial potential • Identify products/markets/sizes/need/police infringement • Evaluate technical feasibility • Decisions to file • Provisional application • Nonprovisional and PCT • National Phase

6. Patent Costs over Time

7. Traditional Tech Transfer Functions Licensing • Who best able to commercialize? • Inventor contacts • TT office contacts, databases, market studies • Attract Licensing Interest • Meet with Inventor contacts • Direct email/phone contacts • Mass marketing campaign • Negotiate Agreement • Deal terms, fees + royalties • Patent strategy/control • Improvement technology • Diligence to commercialize • Warranties, Indemnification • Manage Relationship with Licensee

8. Expanding Roles for USC Stevens • Traditional (since 1980s) patenting and licensing • Integration of inter-departmental resources • Clinical departments with research labs (CTSI, etc.) • Business school with marketing/business analysis of clinical projects • Cross-disciplinary educational programs - legal, business, biology, etc. • Inter-Institutional partnering to share resources • ERCs, CIRM Disease Teams, others • Proof-of-principal, gap funding sources • Ideas Empowered, Coulter Foundation, J&J etc. • Mentoring programs with outside experts • Early-stage meetings with angel, VC investors • Incubator facilities

9. Invention Disclosure Elementshttp://stevens.usc.edu/have_disclosure.php • “Non-Confidential” Title • Date received in Office • Inventor Names/Contact Info • Funding source/Grant #s • Third party materials involved? • Subject of Contract Research or Consulting Activities? • Published or Presented? • When or when anticipated? • Complete description of technology • Market information if available • Key words for searches • Signature, Home Address, Country of Citizenship

10. Keys to Success with TT Office DO • Fill out disclosure form completely • Identify publication/ presentation dates • Seek meeting with licensing officer • Demonstrate knowledge of prior art and your improvement to it • Build relationships with companies of interest DON’T • Send just manuscript • Give short notice of publication/presentation • Withhold information about funding or materials source • Assume tech transfer office will file patents and find licensee • Go to the Dean or TT Director to complain

11. USC Stevens Center for Innovation • Main number – 213-821-5000 • Website – stevens.usc.edu Chris Moulding, Sr. Licensing Manager moulding@stevens.usc.edu 213-821-0945