Navigating the University Technology Transfer

August 23, 2012

Christopher Moulding Sr. Manager, Technology

Advancement and Licensing

I’ve got an idea…now what?

Topics to Cover

• Historical background for University Technology Transfer

• Traditional technology transfer functions

• Expanded roles for tech transfer• Best practices in working with TTOs

1980 Bayh-Dole Act:

inventions resulting from

federal funding

US universities own the

Photo: Jeff Kubina

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

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

Patent Costs over Time

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

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

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

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’TSend just manuscriptGive short notice of publication/presentationWithhold information about funding or materials sourceAssume tech transfer office will file patents and find licenseeGo to the Dean or TT Director to complain

USC Stevens Center for Innovation

• Main number – 213-821-5000• Website – stevens.usc.edu

Chris Moulding, Sr. Licensing Manager

moulding@stevens.usc.edu213-821-0945