TECHNOLOGY TRANSFER BEST PRACTICES- GEORGIA TECH Patrick E. Reed Director, Office of Technology Management LSU Health Sciences Center – New Orleans
Nov 21, 2014
TECHNOLOGY TRANSFER BEST PRACTICES-
GEORGIA TECH
Patrick E. ReedDirector, Office of Technology ManagementLSU Health Sciences Center – New Orleans
• Ranked 8th in ‘09 on The University Patent Scorecard™
• Ranked 3rd in “Pure” software patents and 8th in software patents overall in the Duke Law School Science, Technology, and Innovation Research Paper Series
• Ranked 11th overall for tech transfer and commercialization in the Milken Institute report Mind to Market, 9/20/06
• Inc. Magazine named Georgia Tech among its list of the five U.S. universities known for turning campus-based innovations into start-ups
MENTIONS
FY2011
•16 FTEs (5 in licensing positions)
•$714M in Research Expenditures
($45M from industry)
•384Technology Disclosures
•246 Patents Filed
•79 Patents Issued
•78 Licenses/Options Executed
•5 Startups, over 100 since 2000
•$3.8M Licensing Revenue
THE NUMBERS
• Flexibility
• Accountability
• Transparency
• Efficiency
• Cater to Industry
BEST PRACTICES
• Georgia Tech Research
Corporation
– Separate 501(c)(3)
• Performs financial, contracting,
and some personnel functions for
Tech
• Patent holder for Tech inventions
• Faster/more flexible negotiations
FLEXIBLE
• Georgia Tech is bound by state
law, but GTRC is not a state
institution
HOWEVER…
• GTRC must stand ready to
assign all of its obligations to
Tech if it was dissolved
–Can argue both ways in
negotiations
–Assessment of risk
FLEXIBLE
• Choice of IP counsel
– ~$450 for partners and
~$300 for associates
– A wide range of technical
expertise and experience
– Prompt service with the
possibility of 11th hour filings
– Able to accommodate
inventor requests for specific
counsel
• Could not delay GTRC actions
FLEXIBLE
• Licensing Associates responsible for
a portfolio of cases from cradle-to-
grave:
– Evaluate and determine patent
filing strategy
• Work with outside legal
counsel
– Market
– Negotiate licenses
– Execute licenses
– Post-licensing compliance
ACCOUNTABLE
• Signature authority
• No outside review of agreements
– No formal internal review
• Education is important
– University Policy and Procedure,
Export control, IRS regulations,
basic IP law, federal research
guidelines, negotiating skills, etc.
• Associates given special topic areas
in which to become the Office
Experts
ACCOUNTABLE
• Avoid the Invention Disclosure
Black Hole…..
– Keep inventors up-to-date
– Explain the logic behind the
decisions you make and
take pains to have them
agree
– If the decision is made NOT
to pursue an invention,
make it as quickly as
possible
TRANSPARENT
Commercialization Roadmap
•Scorecard used to review an invention
– Allows for a more objective
review
– Used as a conversation starter
•Serves as the document to lay bare the
decision making process
•Ultimately allows for better filing
decisions
– This then leads to increased
patent expenditures
reimbursement
TRANSPARENT
• GT:IPS™- Georgia Tech Integrated
Program for Startups
– Core class requirements plus
electives
– Successful on-time graduation
of the program granted access
to a no-negotiation license
agreement
• The recently approved ELFS-
Exclusive License for Startups-
contains many of the GT:IPS™
license provisions
TRANSPARENT
• Timely triage of inventions
precludes unwise use of resources
• Make no blind filings
• No foreign filings on technologies
that are not yet encumbered or
without a very high probability of
being so
• Extensive use of Knowledge
Sharing Systems TechTracs (KSS)-
IP and Agreements database
– Used on LSU’s campuses
EFFICIENT
• If our goal is to create relationships with companies…BE INDUSTRY FRIENDLY!
• Office of Industry Engagement:– Office of Technology Licensing
(now called Innovation Commercialization and Translational Research)
– Office of Industry Contracts (now called Industry Collaborations and Affiliated Licenses)
– International Contracts and Technology Transfer (new group)
• A one-stop-shop serving as the “front door” for industry
CATER TO INDUSTRY
• Complete redesign of website
– Licensing
– Sponsored Research Opportunities
– Access to Equipment and Facilities
– Corporate Giving
– Recruit Students
– Executive Education
• Made sure not to lose sight of our main
constituents- the faculty and students
http://industry.gatech.edu
CATER TO INDUSTRY
Make it easy for industry to find what they need!
• Each of the three offices have
permanent staff, but are cross-
trained
– Consistency of message
– Plug-and-Play
– TRUE cradle-to-grave
• No downtime on an agreement or
other issue if someone is out of the
office
– KSS heavily relied upon in order
to maintain this seamlessness
CATER TO INDUSTRY
• Primary focus was maximizing
industry sponsored research dollars
– The majority of license
agreements only bring in
~$10,000 over the life of the
agreement
• TTOs talk to companies all the time
– LEVERAGE THIS FOR OTHER
OPPORTUNITIES
• Licensing is not neglected, it simply
isn’t relied upon as a money maker
CATER TO INDUSTRY
FY2011
•16 FTEs (5 in licensing positions)
•$714M in Research Expenditures
($45M from industry)
•384Technology Disclosures
•246 Patents Filed
•79 Patents Issued
•78 Licenses/Options Executed
•5 Startups, over 100 since 2000
•$3.8M Licensing Revenue ($1.3M was
a one-time bump from cashed in
equity)
THE NUMBERS
• Updated Technology Disclosure Form– Transparent/Efficient
• Website Redesign– Cater to Industry/Transparent
• Created an Inventor’s Guide– Transparent
• Developing a strong marketing presence– Cater to industry
• Invention inventory review and triage– Efficient
• Entered all information into KSS– Efficient
• Hired an LSUHSC PhD as Licensing Assistant– Accountable
• FACULTY OUTREACH!
IMPLEMENTING BEST PRACTICES AT LSUHSC-NEW ORLEANS
• More than doubled disclosures over
the three previous years
(individually)
• Solid leads from marketing efforts
• Decreased office’s expenses through
triage and drafting provisionals in-
house
• Identified a manageable subset of
technologies that are truly “active”
• Re-engaged faculty in the process
• Making good use of KSS and other
available resources
RESULT?
QUESTIONS?Patrick E. Reed, DirectorOffice of Technology ManagementLSU Health Sciences Center – New Orleans
[email protected]/administration/otm/@LSUHealthOTM