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Licensing from the University Perspective Casie Kelly, PhD Senior Licensing Officer Life Sciences (949) 824-2920 [email protected] Topics • Into to OTA and what we do • How to obtain a license to the IP being used in an SBIR Office of Technology Alliances (OTA) • Identify, protect and license UCI’s intellectual property • Support and enhance collaborations/interactions among UCI faculty, industry and other external organizations • Encourage the formation of start up companies • Actively manage risks associated with university/industry interactions • Optimize UCI’s intellectual property revenue How we support our inventors • Review new inventions (who are inventors, sponsor obligations) • Coordinate patent filings • Handle negotiations and ongoing management of license agreements granting rights to start ups or existing companies for the technology • $-Share revenue from licensing with inventors • Material Transfer Agreements- Incoming/Outgoing • Review Consulting agreements for consistency with university IP policy UCI Invention Portfolio • Portfolio of over 1100 inventions managed by 7 licensing officers – Approx. 1/3 of the inventions are patented – Approx. 27% of those inventions are licensed • OTA receives 120 new invention disclosures per year on average • 54 start-ups to date (33 still operating or acquired) UCI Invention Portfolio by Academic Unit Institutes & Centers 9% Physical Sciences 8% Biological Sciences 7% Engineering 29% ICS 5% Others 1% Medicine 41% Licensing Practices at UCI • The university licenses patent rights; the university does not sell or assign rights to patents • UC manages patent prosecution for IP we own • Scope of license can be as broad as the licensee is ready to diligently commercialize (no blocking use) • Terms are negotiated in good faith using industry standards in the field • Renegotiation of terms is possible if circumstances vary significantly from business plan What type of agreement do you need? Option Agreement License Agreement Life of Agreement ~12 months Until patents expire Type Simpler agreement, would eventually move to a License Agreement Definitive agreement Cost $ $$$ Obligations Low, explore interest in licensing High, diligently develop product Rights granted Use patent rights NO selling of a product NO use in humans Make, use, sell, sublicense Financial Terms in License Agreement • Up-front fee (a.k.a. “License Issue Fee”) • Maintenance fees until product is sold • Milestone fees upon major development accomplishments (ex. completion of Phase III) • Royalty on Net Sales • Minimum Annual Royalties • Reimbursement of patent costs • Equity? …almost everything is negotiable …what’s not • Warranty • Indemnification • Use of Name • Choice of Law • Preserve academic freedom Right to publish Right to practice the invention for all academic institutions UCI’s Top Revenue-producing Licenses (FY12) 1. Dynamic Cooling Device (Candela) #8 top revenue producing invention for UC system 2. Detection of Mycoplasma (Abbott Laboratories) #9 top revenue producing invention for UC system 3. ALEKS Web-based Educational Software (McGraw-Hill) Questions?? Casie Kelly, PhD Senior Licensing Officer Life Sciences Questions? (949) 824-2920 [email protected] www.ota.uci.edu