Executive Director, James G. Baxendale, MS, MBAExecutive Director, James G. Baxendale, MS, MBA

SOM KUMC March 30, 2009SOM KUMC March 30, 2009

A New Model A New Model for Technology Commercialization for Technology Commercialization

at The Universityat The University of Kansas of Kansas

KU Center for Technology Commercialization (KUCTC)KU Center for Technology Commercialization (KUCTC)

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Why Combine Tech Transfer Offices?Why Combine Tech Transfer Offices?

• Unify and standardize tech transfer processes and policies across the University

• Leverage best practices of both organizations

• Coordinate interactions with business, economic development and government leaders

• Reduce duplication of resources and better leverage resources

• Support research collaboration across campuses

• Create additional funds for investment in university research and graduate education initiatives

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What is the KUCTC?What is the KUCTC?

• The new technology commercialization entity for all KU campuses

• A separate 501(c)(3) non-profit organization• Jointly controlled by the KU Center for Research

and the KU Medical Center Research Institute• Has its own Board with the Provost as the Chair• Thirteen members on the Board consisting of

University administration, KUMC and Lawrence faculty, and Lawrence and Kansas City community leaders

• Offices on the Lawrence and KUMC campuses• Executive Director and Licensing Associates

travel to both campuses• Has its own corporate counsel

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KUCTC: Mission StatementKUCTC: Mission Statement

Mission: To maximize the impact of University intellectual property for the benefit of the University and society

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KUCTC: GoalsKUCTC: Goals

• Ensure public benefit through commercialization of inventions created at KU

• Ensure inventor satisfaction with technology commercialization process

• Enhance recruitment and retention of faculty, staff and students by providing top quality technology commercialization services

• Provide educational opportunities for students, staff and faculty about the commercialization of intellectual property

• Participate in regional and state economic development

• Facilitate collaborative research projects

• Generate revenue to support research and graduate education

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KUCTC: Board Structure KUCTC: Board Structure andand CompositionComposition

• Establish overlapping board from functional RI and KUCR Boards» Chair of the Board = Provost

» Membership includes:• KUMC Vice Chancellor for Research and the KU Vice

Provost for Research and Graduate Studies

• Representation from business people on RI and KUCR boards

» Bi-campus faculty representation» Bi-campus community representation

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KUCTC: Reporting StructureKUCTC: Reporting Structure

• Executive Director reports to Provost who is responsible for KU technology commercialization

• Operational reporting to KUMC Vice Chancellor for Research and KU Vice Provost for Research and Graduate Studies

• Licensing Associates & Licensing Assistants» Report to Executive Director

» Co-located on both campuses

» Deployed across campuses as needed

• Interns and Externs on both campuses

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Tech Transfer WebsiteTech Transfer Website

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Technology Commercialization Technology Commercialization ProcessProcess

• Disclosure of invention

• Initial evaluation and market research

• Patentability Search

• Commercialization strategy

• File patent/copyright/trademark

• Potential enhancement of technology

• Material Transfer/Research Agreements

• Out licensing or Company spin-off

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Functions of Technology Functions of Technology

CommercializationCommercialization • Ensure public benefit from KU research

through commercialization of inventions created at KU

• Negotiate various contracts/agreements

• Promote collaborative research

• Facilitate the protection of intellectual property

• Educate faculty and students in intellectual property

• Assist with retaining and recruiting faculty

• Generate revenue to support research and graduate education

• Participate in regional and state economic development

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Technology Commercialization ActivitiesTechnology Commercialization Activities

Facilitate Proof of Concept Collaborations with Industry

Perform Economic Development Outreach

Assist with Faculty Retention and Recruitment

Market Technologies to Out-license

Coordinate Intellectual Property Protection

Prepare/Negotiate License Agreements

Prepare/Negotiate Option Agreements

Education of Faculty/Staff/Students

Review of Faculty Conflict of Interest Management Plans

Interpret and Assist in the Development of IP Policy

Consult on IP Clauses in Research Agreements

Facilitate Invention Disclosure Meetings and Assess Technology

for Commercial Potential

Review Start-up Company Business Plans Promote

Entrepreneurship Across Campus

Prepare/Negotiate Material Transfer Agreements

Prepare/NegotiateInter-Institutional Agreements

Prepare Internal Royalty Distribution MOU

Prepare/Negotiate Company Formation Documents and Securities Agreements

Diligence Review of Licensees

Public Education and Relations

Prepare/Negotiate

Term Sheets

Prepare/Negotiate Confidentiality Agreements

09/08

Assist with Development of Consortia Agreements

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Current StatisticsCurrent Statistics

• 640+ faculty/staff/students participated in invention disclosures during past 10 years

• Cumulative revenue of over $16Min the last 10 years

• 19 active equity positions

• 20 active start-up companies

• 92 licenses signed during past 10 years, 32 with Kansas-based companies

• 60-80 annual invention disclosures on average

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Issues for KU Start-upsIssues for KU Start-ups

• Management

• Capitalization

• Market

• Product/Services

• KU Equity/Royalty

• License Agreement

• Business Incubator Needs

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Active Start-Up CompaniesActive Start-Up Companies

• Cadstone – Electronic design automation development tools

• Computerized Assessment and Learning – Online testing program

• Crititech – Particle-size reduction techniques for pharmaceuticals

• CyDex – Compounds that improve drug solubility

• DAR Corporation – Aeronautical design software

• e-Learning Creations – On-line certification for K-12 special education

• Flint Hills Scientific – Automated seizure detection and prediction

• Immunogenetix Therapeutics – Prevention / treatment of HIV infection

• ImmuPep – Modulating the immune and inflammatory responses to treat disorders of the immune response

• Institute for Community Health & Development – Internet-based community development tool

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Active Start-ups Companies (Cont…)Active Start-ups Companies (Cont…)

• NephroGenex – Treatment of end stage renal disease

• Relive for Kids – Educational software to assist children in managing severe headaches

• Savara Pharmaceuticals – Platform technology with broad applications in respiratory medicine, vaccines and other therapeutics

• TerraMetrics – Large scale agricultural remote sensing research

• TVAX BioMedical – Method for mobilizing the human immune system to kill cancer cells and reject growing cancers

• XenoTech – Develop pre-clinical drug safety information (recently acquired by Sekisui Chemical Group)

• KCBioMedix – Neonatal medical device

• Kansas Analytical Systems – Compound analysis by nuclear magnetic resonance imaging

• Arcademia – Educational software games

• Neo Abacus – Software for tagging SEC financial reports

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Nursing – Videotapes for addressing congestive heart failure rehabChemistry – Compounds as anti-cancer drugs, glucose sensor

Business – Software to tag financial data for customized reports

Journalism – Software and web design for presenting the news

Education – Distance education modules, software tools for teachers

Biodiversity Resource Center – Predictive software for invasive species

Civil Engineering – Energy-efficient wall panel

Life Span Institute – Medical devices for premature infants

Mechanical Engineering – Synthetic functional spine

Aerospace Engineering – Fiber design software, UAV

ITTC – Communication system for remote regions, RFID

Higuchi Biosciences Center – Inhalation drug delivery technique

Architecture – Copyrighted building plans

Physics – Instrumentation to detect defects in semiconductor coatingsMedicine – Software algorithm to predict epileptic seizuresOccupational Therapy – Stroke rehab device

Breadth of Invention DisclosuresBreadth of Invention Disclosures

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Examples of Marketplace ProductsExamples of Marketplace ProductsAbilify – antipsychotic drug

CAL – Online testing/ assessments for teaching/ learning processes

Captisol – improves solubility

Cerebyx – antiseizure drug

Community Tool Box – Internet based community development tool

Distance Education – modules for special education certification

Dual Diagnosis – training videos

Force Plate Actimeter – records/ scores finer scale movement/ activities

Geodon – antiseizure drug

Hot Tip Catheter – device for sleep apnea, GERD, tissue ablation, etc.Implantable Glutamate Biosensor – enzyme based sensor for glutamate

N-trainer System – teaches feeding in premature infants

Profusion – Internet meta search engine

QuizStar – software teaching tool

Stroke Impact Scale – measure stroke rehab progress

Swept-Step Radar – detection/range determination device

Vfend – antifungal drug

VidWatch – broadcast monitoring software

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Educational InitiativesEducational Initiatives

• Co-hosted two (2) National Collegiate Innovators and Inventors Alliance (NCIIA) seminar events

• Technologies are supplied for Business Plan competitions to KU and UMKC Schools of Business

• Full year law externships for KU and UMKC law students

• KUCTC/OTDD Translational Research symposium• Undergraduate and Graduate Engineering student

IP presentations• Teacher Tech 2008 internship, Uplink/Ewing Marion

Kauffman Foundation• Global Entrepreneurship Week, Ewing Marion

Kauffman Foundation• Technology showcases and IP/Commercialization

seminars

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OutreachOutreach

• KC 2009 Year of Innovation Steering Committee• Student inventions i.e. graphic design• External entrepreneurs i.e. Kansas State Trooper• Science Pioneers Fair, Kansas City, MO; Oct. 25,

2008• Tomahawk Elementary School, Overland Park, KS;

Nov. 17, 2008• Children’s Mercy Hospital Tech Transfer Director

Search Committee• NSF Partnerships in Innovation Grant participant

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Protecting Intellectual PropertyProtecting Intellectual Property

• Patents

• Copyrights

• Trademarks

• Trade Secrets under CDA’s (NDA’s)

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What is Patentable?What is Patentable?

• Products • Processes• Plants• Designs• Applications not just ideas

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Patent BasicsPatent Basics

• Demonstrate novel

• Demonstrate utility

• Demonstrate nonobviousness

• Prevent others from making, using and selling invention

• Costs

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Patent ProcessPatent Process

• Original and authentic inventor

• Duty of candor

• Enabling disclosure

• Specifications

• Claims

• Response to rejection

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Lab Books/Inventor RecordsLab Books/Inventor Records

• Keep complete, detailed recordsKeep complete, detailed records

first idea through commercial

products

• Describe the invention clearly-Describe the invention clearly-

words, photos, graphs, drawings, etc.

• Explain operation or use fully Explain operation or use fully

• Witnessed Witnessed by trustworthy colleague

“Read and understood by…”

• Dates noted, signed in inkDates noted, signed in ink

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CopyrightCopyright

• Protect the work not the ideas• Ownership i.e.; work for hire,

payment • Licensable as intellectual property• Length of protection • Original works of art, manuscripts,

etc.• KU property, within scope, except

scholarly works

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Copyright (2)Copyright (2)

• Informs the public that works are copyrighted

• Identifies the copyright owner• Determines the date work was published• Emblem C, the letter C in a circle, the word

Copyright or “Copr.” followed by the date and name of owner

• Omission of notice:» a. Cured if registration obtained within 5

years» b. Affix notice to remaining copies

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TrademarksTrademarks

• Common Law Trademark- once a trademark is used in connection with a product so that consumers have come to identify the trademarked goods as originating with the owner.

• Federal Registration» a. gives nationwide notice

» b. after 5 years, subject to cancellation only on limited grounds

» c. filed on the basis of “actual use”

» d. filed on the basis of “intent-to-use”

» e. must have sales in two or more states

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Trademarks (2)Trademarks (2)

• Colors: red on the heels of shoes, red on bowling pins, pink for Owens-Corning fiberglass

• Pictures and Symbols: Nike “swoosh” and silhouette of Michael Jordan flying through the air

• Numerals and Letters: MG, RCA, CBS, 707, 7-eleven and AAA

• Label and Package Designs: color, shape and design but only those distinctive features which function as an identification of origin may be used as a trademark., i.e. COKE bottle

• Slogans: must be used to associate a particular product with a particular product in the mind of the public

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Jim Baxendale, Executive DirectorJim Baxendale, Executive DirectorKU Center for Technology CommercializationKU Center for Technology Commercialization

Email: Email: jbaxendale@ku.eduWeb: Web: www.ctc.ku.edu

Lawrence campus:

Youngberg Hall

2385 Irving Hill Rd.

Lawrence, KS 66045

Tele: 785/864-7783

Fax: 785/864-5272

Medical Center campus:

Wescoe Pavilion, M.S. 1039

3901 Rainbow Blvd.

Kansas City, KS 66160

Tele: 913/588-5439

Fax: 913/588-8214