“Tech transfer from the eye of an investor” Presented August 10, 2014 at the Annual Meeting of the Amercian Chemical Society

Tech Transfer From the Eye of the Investor

Thomas M. Loarie Executive ChairmaneMedonline

Best Practices in Launching a University Start-UpAmerican Chemical Society 248th Annual MeetingSan Francisco, August 10, 2014

Retained RightsClear articulation of scope is critical

▪ Publication of Research

▪ Broad or narrow, reserving rights in other fields

Development and UsePredicting the future

▪ Exclusivity– Broad or narrow

▪ Encourage development and use– Milestones, progress

payments– Sublicense

▪ Breaches

Licensing of “Future Improvements”

▪ Enslaving a faculty member – the licensor

▪ Vulnerability to future competition – the licensee]

▪ Rare

Conflicts of Interest

▪ Student, faculty joining company

▪ In each of my two companies

Broad Access to Research ToolsAdvancing research

▪ Available to others for verification and advancing research

▪ Tools need to specified in license – Cell lines, reagents, animal

models, compounds

Enforcement Action

▪ Infringement suit - licensor

Export Regulations

▪ Confidential information

▪ Federal export control laws

Patent AggregatorsMajority of university patents are unlicensed

▪ Added value model – tech specific

▪ Patent troll model – holds those innovating hostage

Addressing Unmet NeedsUniversity view is to improve social good

▪ Neglected patient populations

▪ Geographic areas

▪ Developing world

Other

▪ Royalties and future competition

▪ Sale to dealers – royalty on sales

▪ Pre-paid royalties

▪ Stock

▪ Flexibility – To raise capital– To compete and gain ROI

IterateSteve Blank’s Lean Start-up

Key Takeaways

▪ Global competition

▪ No cookie cutter solutions

▪ Experience of Tech & Licensing Office– History– Creative?

▪ Paramount considerations– Business use and flexibility– Institutional values– Societal, policy, legislative issues