commercialization: licensing at the university of british columbia brad wheeler, technology transfer...
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Commercialization: Licensing at The University of British Columbia
Brad Wheeler, Technology Transfer Manager, University-Industry Liaison Office
For the Sauder School of Business
January 29, 2014
Overview
• UILO – Quick Outline• UBC Policies – Research, IP• Patenting• Licensing!
The University of British Columbia (est. 1908)
UBC Vancouver Campus
• 5 Affiliated Teaching Hospitals
• 12 Faculties; 2,383 FT Faculty
• 38,447 undergraduate students
• 9,997 graduate students
• 402 hectare campus
The University of British Columbia
UBC Okanagan Campus
• 7 Faculties; 368 FT Faculty
• 7,938 undergraduate students
• 689 graduate students
Why Contact the UILO
• Sponsored research
• Discoveries with commercial/knowledge mobilization potential
• Entrepreneurship opportunities
• IP Transfer to/from UBC• UBC Neglected Disease Initiative• UBC Global Access Principles• entrepreneurship@UBC
• UILO Voucher Program• UBC Seed Accelerator Fund
• Industry Engagement• Knowledge Mobilization• UBC Living Lab
UILO Objectives
• Support the academic mission of the University
• Enhance the translation of research into increased benefits to society and an improved quality of life
• Promote economic diversification and job creation in British Columbia
• Support the entrepreneurial activities of the UBC community
UBC is a Commercialization Powerhouse
• >$500m in external research funding annually
• Ranked #8 in North America and #1 in Canada for its commercialization activities
• 158 spin-off companies created as at March 31, 2013
• UBC technologies have generated more than $5 billion in sales for Canadian companies
2012/13 Activities
• $519 million external research budget
• $53 million industry sponsored research
• 152 technology disclosures
• 245 patents filed
• 373 active licenses
• 5 new spin-off companies (158 total)
• $5.4 million in royalties & liquidated equity ($150.0M total)
Licensee Location (Active Licenses and Assignment)
12
3
14
196(132 in BC)
142
6
10
UILO Sponsored Research Group
• Drafts and administers industry-sponsored research agreements for UBC – 1,210 in 2012/13 ($53.6m)
• Administers some government and non-profit agreements and contracts – 951 in 2011/13 ($83.3m)
• Performs many of these functions for UBC’s Affiliated Hospitals
Industry Sponsored Funding 2011/12(% of $43.1m)
Applied Science; 13%
Science, 16%
Medicine, 62%
Other; 9%Agreement; 6%
Clinical Research Agreement; 26%
Contract; 37%
Grant; 31%
By Faculty By AgreementType
UILO Technology Transfer Services
• Assess new inventions
• Develop plan to get invention commercialized (required research, funding, licensing)
• Support prototype development
• Protect & manage IP
• Market & license or mobilize technologies
• Create spin-off companies
So You Have a New Invention?
• Pre-screening – quick, loose assessment to identify fatal problems
• Full assessment• Full prior art search and patentability assessment• Commercial assessment
• What are the existing solutions?• Who buys the products?• Who buys the tech (commercial rights)?
• If rejected UBC will assign to inventors
So You Have a New Invention ?
• Inventorship• Conception – YES!
• makes an original and substantive contribution to conceiving the invention
• vs reduction to practice – NO!• Suggested or thought about an idea or end result or posed the question to be
solved, but did not also come up with the actual way of implementing the idea, achieving the end result or solving the problem;
• Contributed an obvious, rather than an original and substantive, element of the invention;
• Was involved in testing or reducing someone else's idea into practice;• Suggested an extraneous idea or a variation that was not incorporated into
nor contributed directly to the actual invention;• Followed instructions of those who conceived the end result or solution;• Is the department head, supervisor or head of the laboratory where the
invention was developed, but did not contribute directly and substantially to the inventive process; or
• Provided funding for the research, equipment or laboratory where the invention was created.
Inventorship
• Patent Law• Co-inventors are treated as equal
• Real World• Levels of contribution are unequal among inventors
At UBC:• Inventors must decide among themselves on relative
levels of contribution• A Revenue Sharing Agreement among inventors at UBC is
eventually signed, formalizing the revenue splitting formula
• Can change as new Improvements come along• Need to determine relative values of tech in the product
being sold.
Intellectual Property at UBC
Policy 88 – Patents and Licensing (http://www.universitycounsel.ubc.ca/files/2010/08/policy88.pdf)
• UBC owns IP created at UBC in most cases• IP created by a student in the course of their studies in not owned by UBC• UBC owns IP created by UBC employees paid to generate IP (computer code)
with no further remuneration
• UBC takes charge of commercializing the technology•Includes paying the bills (patents, legal)
• Inventors get 50% of all remuneration from licensing
• IP includes:•Patents•Copyright
What is a Patent?
A patent is a contract with a governmental authority in which the applicant discloses his invention in sufficient detail to teach others how to practice it in return for a grant to the applicant of the right to exclude others from practicing the invention for a limited period of time.
Patents
Usefulness - inventions that do not work, defy the laws of physics, or drugs that turn out to be toxic are not patentable. Novelty - relative to prior art . If previously disclosed and “available to the public” the invention is not patentable .One year grace period after disclosure in Canada and US.
Non-obviousness - must not be obvious to someone skilled in the art; must be an inventive step.
Patent pathway
1. US Provisional patent application ($)– expires 12 months from original filing date
2. PCT - International patent application ($$) – expires 30 months from original filing date
3. National or Regional patent applications ($$$$) – expires 20 years from original filing date
Licensing
Option Agreement
• Options tie up the commercial rights for a period of time (Term)• Allows for time to kick the tires• Option Fee - $5-20k• Optionee pays the patent bills• Can exercise option at any time to enter good faith negotiations
for a license (6 month limit on negotiations)• Or the Option expires and we move on
Licensing
Term Sheet – non-binding – 90 day term
• Arrive at business terms• Upfront payment• Equity - ~10% - no dilution until $XX• Royalty• Milestones – regulatory (life science); financial; other?• Annual License Fee – $5-80k, ramping
• Performance requirements• Some light legal technical language
• Indemnity
How is new IP handled - Improvements
Typically Improvements are included
• Ownership• UBC can own all Improvements• Or UBC can own UBC and Joint Improvements, licensee
owns Licensee Improvements• How are Improvements defined?
• Broadly – “…relating to Technology…”• Less broadly – “…infringes Technology or Patents…”• Cuts both ways….
UBC Spin-off Companies
Special Considerations
• Waiver if rights to remuneration under UBC IP Policy• UBC on BoD – usually just and Observer• Newco is usually virtual, driven by CRAs with UBC, so COI issues• Sign license before raising money? Condition precedent terms
• Wide Distribution and Access
• Aggregating for Value
• Global Access Strategy
• Increasing Value through partnerships with CECRs (Centres of Excellence for Commercialization and Research)
• Promoting Entrepreneurship
Supplementing Traditional Practices
CECR Partnerships
• Collaborative research projects, commercial assessments, proof-of-concept studies, licensing of UBC technologies
• More than 40 technologies• Centre for Drug Research and Development (CDRD)
• Centre of Excellence for the Prevention of Organ Failure (PROOF)
• The Prostate Centre’s Translational Research Initiative for Accelerated Discovery and Development (PCTRIADD)
• Advanced Applied Physics Solutions (AAPS)
• Pan-Provincial Vaccine Enterprise (PREVENT)
• GreenCentre Canada (GCC)
• Centre for Probe Development and Commercialization (CPDC)
• MaRS Innovation (MI)
Centre for Drug Research and DevelopmentCDRD’s Flexible Model = Powerful Commercialization Engine
Public-Private, not-for-profit organization
Works with network of affiliated and partner institutions
Expert staff, integrated teams, and infrastructure
Access to non-dilutive capital Supports novel discoveries /
academic projects No claims on original IP
Commercial Arm structured as company with profits returned to CDRD
Opportunity to license-in and license-out technologies to / from industry
Has first rights to negotiate technology rights arising from CDRD projects
Maintains control over management of IP
Academic Discovery
Commercialized
Drug Candidate
Offers pharmaceutical and biotech companies, as well as external researchers, integrated translational research services:
• drug discovery
• preclinical testing
• tumour biology
• clinical expertise
Enables PC-TRIADD to negotiate more contract research agreements
Also supports and leverages value-added development of internal discoveries
Centre of Excellence for the Prevention of Organ Failure (PROOF Centre)
The PROOF Centre biomarker workflow
Global Access Principles
Guide the development, patenting and licensing of UBC technologies:
• Promote public/private partnerships to support research of technologies to benefit the developing world.
• Supporting environmentally friendly research and green alternatives.
• Respecting biodiversity and ensuring value return to countries of origin.
• Endeavoring to ensure that the developing world have ‘at cost’ access to our research innovations.
Industry Engagement
• Building 1,000 industry collaborations each year
• Valuing on-going partnership over individual transactions
• Increasing simplicity, clarity and flexibility
• Enabling innovative modes of interacting
• Coordinating simpler access to partnership opportunities
• Increasing involvement with local industry associations
Industry Engagement
• Support multiple modes of interaction with industry Student projects Co-ops and internships Faculty consulting Collaborative Research
• Support UBC as a Living Lab
• Targeted relationships with B.C.’s high tech sectors Life Sciences ICT Clean Tech Wireless Digital
Bioenergy Research and Demonstration Project
UBC Bioenergy Demonstration
Building: Four story CLT building
Gross Power: 1.95 MWe for export
Net Thermal: 8000 lbs/hr for district heating
CO2 Red: 5,000 tpy of GHG reduction
Footprint: 140’ X 100’
Core Sunlighting System
• Illuminates core of multi-storey building with sunlight
• Reduces the need for electric lighting and greenhouse gas emissions
• Improves work environment
• Demonstration installation on South Wall of Biological Sciences Building UBC
Knowledge Mobilization
• Traditional activities part of an expanded toolbox
• Non-proprietary distribution
• Translation into new practices, policies and guidelines
• Simplified click-wrap licensing options
• Aggregating and pooling complementary discoveries
• New delivery systems
• New partnerships and initiatives
• Implementing and extending UBC’s Global Access Principles
Knowledge Mobilization Channels
New Mobilization Channels
UBC and Intellectual Ventures Canada partnership
• UBC researchers invited to submit to IVC new ideas that will address current and future technology needs
• Accepted ideas will be proactively commercialized by IVC
• Research funding may be made available for technology development by IVC
Entrepreneurship
• Extending resources and guidance to all UBC entrepreneurs
• Continued support for UBC spin-off companies
• Founding partner in entrepreneurship@UBC
• UILO Start-up Services Voucher
• Launched genomics.entrepreneurship@UBC
entrepreneurship@UBC
• Campus-wide initiative
• Foster and support a culture of entrepreneurship
• Accelerate new venture creation and growth
• Engage alumni and the business community
• Provide enriched educational experiences
Dean Muzyka on entrepreneurship@UBC
Recon Instruments
Goals
• Accelerate the # of knowledge based companies created via UBC student (current and recent) graduates
• Discover more commercialization opportunities by greater exposure of UBC student based innovation to entrepreneurial industry leaders
• Bridge the gap between UBC innovation and venture capital by providing venture “start-up capital” and company formation skills to create “venture fund ready” companies.
Activities
• Over 140 new UBC ventures have interacted with entrepreneurship@UBC (even split between ventures being led by recent alumni and by current students)
• First Seed Accelerator Competition held in October 2011
• Educational series launched
• Dedicated space opened in September 2011, housing 8 companies
• Over 30 ventures accepted into start-up services voucher program
Aeos Biomedical
UILO Start-up Services Voucher
• Launched in January 2011
• 114 new ventures from the UBC community applied
• 42 new ventures in three intakes from UBC students, staff, faculty and recent alumni
• $5,000 worth of startup services (40 hours) from the UILO in areas such as
• IP Strategy, Business Planning, Incorporation, Corporate Structure, Governance and more
• Partner vendors for legal services, web design, communications and more
UILO Voucher Program
Three Pillars
• Introductions - Network and Mentorship
• experienced mentors are required
• Provision of UILO Services
• Business planning, IP services, grant writing, etc.
• Vendors
• Lawyers, accountants, brand identity experts, etc.
Voucher Program - Nuts and Bolts
• Eligibility – Faculty, staff, students (even part-time), and alum who have graduated within the last 3 years
• Venture need not be incorporated, technology based, Canadian based, or for-profit.
• Applicants can apply anytime.
• Applications are pre-screened by the UILO• Applicants come to present the venture• UILO assesses and decides whether to take it on
• For successful applicants
• UILO puts a mentor in place• UILO puts a Start-up Services Agreement in place(mainly
to protect liability of UBC)• Voucher expires after 40 hours of service is provided or 12
months• UBC wants nothing in return except updates from the company
from time to time
Some Voucher Program Paticipants
UILO Voucher
entrepreneurship@UBC Seed Accelerator Fund In partnership with BCIC
• Venture fund owned and operated by UBC for the purpose of investing in the next generation of student entrepreneurs
• Capitalized with donations from alumni with matching contributions from BC Innovation Council
• Seeks out very early stage business opportunities founded by UBC students faculty, staff or alumni who have graduated within the last three years
• Investments may range in size from $25K to $100K
• Raised $1M with a goal of raising $10M
UBC FY 2009 Indexed Against Canadian G13* (ranking out of 12)
AUTM Benchmarking
G13 Average
(100)
3rd
1st
3rd
3rd
1st
2nd=
1st
2nd
4th
200 300
2nd
1st
1st
Total Research Expenditure
Invention Disclosures
New Patent Applications
Licenses Executed
Licensing Revenue
New Startup Companies
Legal Fee Reimbursement Ratio
Industry Funded Research
Federal Gov't Funded Research
Invention Disclosures/$1m
Licensing Revenue/$1m
New Startup Companies/$1m
3rd
1st
3rd
2nd
2nd
1st=
1st
4th
2nd
2nd
2nd
4th
UBC FY 2009 Indexed Against U.S. Benchmarking 10
California Institute of Technology
Cornell Research Foundation Inc.
Harvard University
Johns Hopkins University
Massachusetts Institute of Technology (MIT)
Penn State University
Stanford University
University of California System
University of Washington/Wash. Research Foundation
University of Wisconsin at Madison/ W.A.R.F.
AUTM Benchmarking
U.S. 10 Average
(100)
200
Lowest
9th
7th
Lowest
7th
8th
4th
6th
5th
3rd
3rd
1st
6th
2nd
Lowest
Total Research Expenditure
Federal Gov't Funded Research
Industry Funded Research
Invention Disclosures
New Patent Applications
Licenses Executed
Licensing Revenue
New Startup Companies
Legal Fee Reimbursement Ratio
Industry as Proportion of Total Research Expenditure
Invention Disclosures/$1m
New Patent Applications/$1m
Licenses Executed/$1m
Licensing Revenue/$1m
New Startup Companies/$1m
lowest
lowest
7th
9th
lowest
7th
10th
8th
1st
2nd
5th
8th
2nd
8th
2nd
UBC FY 2009 Indexed Against U.S. Benchmarking 10AUTM Benchmarking
Contact
University-Industry Liaison OfficeThe University of British Columbia #103 – 6190 Agronomy RoadVancouver, BC V6T 1Z3
Tel: 604-822-6016Fax: 604-822-8589Web: www.uilo.ubc.ca
Development Steps
• Further development via gov’t funding UBC?• UILO PDP funding $5-10k• POP grants (life science) $160k• I2I grants (dead sciences)• Charitable foundation money• Get a hold of royalties from a previous invention???