1 Lisa Dhar University of Illinois at Urbana-Champaign Senior Technology Manager, Office of Technology Management (OTM): Former Vice President of InPhase.

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Lisa DharUniversity of Illinois at Urbana-Champaign

Senior Technology Manager, Office of Technology Management (OTM):

• Former Vice President of InPhase Technologies, a startup based on technology from Bell Laboratories, Lucent Technologies

• Negotiation and management of joint development agreements with large companies

• Management of technology and product development

• Current focus is on licensing of University technologies in chemistry, materials science, and bioengineering

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Nicole NairUniversity of Illinois at Urbana-Champaign

Senior Marketing Coordinator, Office of Technology Management

• Joined the Office of Technology Management in 2002.

• Develops strategies to promote specific technologies, University research, or OTM services to the OTM’s constituents. Role includes identifying new marketing opportunities, producing print materials, managing publicity efforts, overseeing the Office’s website, coordinating events, and managing social media channels.

• Prior to joining the University of Illinois, worked for ten years in book publishing, ending as a Marketing Director with Holtzbrinck Publishers

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• In 2000, University of Illinois formalized technology-based economic development “mission” of the University.

• The University’s OTM facilitates the transfer and commercialization of its intellectual property assets to provide opportunity for the University and its faculty, staff, and students to realize the commercial potential of their innovations.

• The OTM seeks strategies to encourage broad adoption of the University’s innovations.

University’s Mission of Technology Transfer

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• Find commercialization partners who best leverage the technology assets.

• Structure terms of the relationship to encourage thorough and rapid deployment of the technology.

• Encourage end users or customers to adopt the technology early and as broadly as possible

Broad Adoption of Technology

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Example: Challenges in the Pharmaceutical and Chemical Industries

“ . . . practitioners are finding that moving the chemistry from the lab to the production plant is about more than just bigger pots. Technical challenges are certainly a big aspect, but so, too, are issues around the commercialization of academic inventions and industry's adoption of new technologies.

It is often preferable for major pharmaceutical companies to engage in the search for a new catalyst internally or through academic contacts than to pay expensive royalties to catalyst producers with proprietary technology, they comment. Catalyst suppliers should keep this in mind when in-licensing new, appealing catalytic technology from academia”

Chemical & Engineering News, February 12, 2007

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Evonik announces catalysts catMETium® RF2, catMETium® RF3, and catMETium® RF4.“The total kilogram price for the catalysts already includes the licensing fees for the use of the intellectual property rights. The customer makes no additional commitments, and the name of the business model reflects its approach: The abbreviation ‘RF’ stands for ‘royalty free.’ ‘This model allows the customer to use the new catalysts without limitations.”

Dr. Jürgen Krauter, head of marketing in Evonik's Catalysts Business Line.”

Ligands and catalysts from Solvias“Furthermore, our ‘IP-included’ strategy of offering ligands at a set price with no strings attached lowers the barrier for implementation of this technology in customer tanks and puts customers at ease with a transparent business model with no surprises.”

Example: IP-Included Strategies in Pharmaceutical and Chemical Industries

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Challenges in Licensing of Chemistry Innovations

• University IP assets in chemistry typically consist of “compound” patents and “method” patents

• Challenge is to license these technologies and encourage their adoption in this “no reach-through” environment

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MIDA Boronates are a chemical compound that forms a building block for other, more complex chemical compounds.

Example: University of Illinois’ MIDA Boronates

Powerful technology platform• Enables access to building blocks not

previously available• Enables organic synthesis via “iterative

coupling”• Could be a lower cost alternative to currently

widely used building blocks• Broad patent portfolio including

“compound” filings and “method” filings

“Lawrence G. Hamann, executive director for Global Discovery Chemistry at Novartis, in Cambridge, Mass., comments that MIDA boronates tolerate a substantial range of reaction types and that 2‐pyridyl MIDA boronates in particular ‘are a major advance, as the trifluoroborate methodology does not work here.’ He notes that 2‐pyridyl moieties are ‘ubiquitous in many druglike molecules’“

"MIDA boronate stability, reliability, and ease of use, in conjunction with the ability to mitigate the use of toxic tin‐derived reagents, will accelerate the broad incorporation of this tool into synthetic strategies," adds Peter T. Meinke, senior director of medicinal chemistry at Merck & Co., in Rahway, N.J.

Chemical & Engineering News, February 12, 2007

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Example: University of Illinois’ MIDA Boronates – Goals in Licensing

• Enable broad availability: License to a number of suppliers

• Assure customers of the licensed suppliers that there will be no reach-through

Label license strategy• Encourage industries to adopt the use of MIDA boronates by

enabling an “IP-included” model

• Significantly reduce/eliminate reluctance from industries to incorporate a proprietary material.

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Example: University of Illinois’ MIDA Boronates – Licensing Strategy

• Broad Availability: Licensed to a number of suppliers• Sigma-Aldrich• BoroPharm Inc.• Allychem Ltd.

• With each supplier, implemented a label license strategy • A party who purchases material from licensees is granted rights to

University of Illinois “method patents” • The goal is to assure customers that there will be no further obligations

under Illinois’ method patents.

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Example: University of Illinois’ MIDA Boronates – Implementation

Grant. Conditioned upon Licensee’s continuing compliance with the terms and conditions of this Agreement, University hereby grants to Licensee:

(a)the non-exclusive right to use the Patent Rights, to identify, develop, make, have made, use, import, export, lease, sell, have sold and offer for sale, Products within the Field and within the Territory.

(b)subject to the applicable provisions of this Agreement, the non-exclusive right to grant Label Licenses to Purchasers to use the Patent Rights to identify, develop, make, have made, use, import, export, sell, have sold and offer for sale any product manufactured from Product, any process that uses Product, or any service that uses such products or processes royalty-free for any purpose subject to the specific limitations set forth in the terms and conditions outlined in Schedule X.

For convenience, the Mandatory Terms and Conditions for Label Licenses are summarized in Schedule X.

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•Purchaser acquired Product supplied by Licensed Supplier.

•Purchaser exercises the rights granted herein only in connection with the amount of the Product purchased under this Label License.

•Purchaser does not create, manufacture, or sell, directly or indirectly, products in connection with this Label License where such products use, incorporate or include Materials from a party who has not licensed the Illinois IP from the University and where the Materials are covered by Illinois IP.

Label License Terms

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Second Example: University of Illinois’ X-Coupling of Organosilicon Compounds

• Patent covering broad set of chemical reactions of organosilicon compounds enabling carbon-carbon bond formation

• Claims cover methods only not composition of matter

• Using a label license approach allows the University to realize value from the method patent

• Market the technology and label license approach to suppliers of the reagents involved in the chemical reactions.

• Currently licensed to Gelest Technologies (leading supplier of organosilicon compounds) so that they can offer a label license to University of Illinois IP with sales of related compounds

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Label Licenses - Marketing

• Label license highlighted in press releases announcing licensing relationships

• Two press releases sent via Businesswire

• Distribution list of 13,000

• 1,800 views for each release

• Additional coverage in Chemical and Engineering News (online and print editions); Tech Transfer Tactics and IP Marketing Advisor

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Label Licenses – Marketing by Licensed Supplier

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Risks of a label license:

• Original technology owner gives up the potential ability for royalty income from licensing downstream customers

Why it makes sense for certain cases:

• Specter of downstream licensing often hampers technology adoption

• Serves as an incentive for suppliers to license from the University

• Enables technology owner to realize value from sometimes difficult to license method patents

• Encourages downstream customers to work with licensed suppliers

Label Licenses