Transcript Agenda
Introduction to the
Offices of Biotechnology &
Business Development
John L. Harb
Director, Office of Biotechnology
__________________________________
October 30, 2008
Our Offices
The Office of Biotechnology serves as the
technology transfer office
of the College. The office facilitates licensing of
College technology to industry and research
collaborations between industry and faculty.
The Office of Business Development is focused on
capturing and/or developing novel or more
aggressive technology transfer opportunities.
“Technology Transfer”
Definition
“Technology transfer is the process of transferring
scientific findings from one organization to another for
the purpose of further development and
commercialization.”
– Association of University Technology Managers
Origin of Field
Bayh-Dole Act 1980
Encourages universities to patent and license the
results of federally-funded research
Universities have rights in intellectual property
that resulted from federal research funding
Commercialization of inventions benefit the public
good
Royalties are distributed to inventor and
reinvested for education and research purposes
University Technology Transfer
Knowledge Transfer
Publications & Presentations
Collaborations
Material Transfers
Sponsored Research
Consulting
Inventions
Licensing
Your Responsibilities
Acceptance Agreement
Abide by Einstein’s Patent Policy
Promptly disclose inventions
Assign ownership rights
Third-Party Agreement Obligations
Publications
Use of Material
Confidentiality
Reporting
Our Responsibilities
Support Einstein faculty researchers
Facilitate technology transfer
relationships
Protect the school and its faculty
members
Comply with obligations to sponsors
and licensing partners
Services
Invention Disclosures
Licensing
Material Transfer Agreements
Agent Reagent Program
Industry-Sponsored Research Agreements
Grant required IP management language
Patent Management
Resources and data sharing plans
Consulting Agreements
Services (cont’d)
Confidentiality Agreements
Inter-Institutional Agreements
Review IP language
Clinical Trial Agreements
Foundation/Non-Profit Grants
Invention Process
Invention Disclosure Form
Details of invention and its reduction to
practice
Funding & material sources
Upcoming publications
Commercial contacts
Patent Committee
Intellectual Property Protection
Licensing Process
Market, market, market
Business discussions with
commercialization partners
Confidentiality Agreement
Terms
License Agreement
Royalty is distributed in accordance with
Einstein’s Official Policy on Patents and
Licensing Agreements (“Patent Policy”)
Patent Policy Distribution
Net
Royalty is distributed as follows:
1/3
– Inventors (personally)
1/3 – Laboratory Research
1/3 – College
Material Transfer Process
Various forms
Incoming vs. Outgoing
Academic vs. Industry Partners
Human material?
Hazardous material?
[email protected] &
[email protected]
Research Tools
Disclose!
Online, interactive form
Review for commercial value
Market to companies (“Agent Reagent”)
High volume transfers repositories
(mice, plasmids, etc.)
Industry-Sponsored Research
PI Role
Develop Research
Plan
Develop Budget
Office Role
Review Budget
Negotiate
Agreement
Points to remember:
Overhead policy is consistent with NIH rate
Involve us in the process early on
Keep science and business separate
Hot Topics in Agreements
Publication Rights
Liability
Intellectual Property Rights
Confidentiality
Consulting
Private Agreements
Must be approved by:
Department Chair
Dean (Office of Biotechnology)
Not in place of outside counsel
Proposed guidelines and suggested language
Clauses of concern
Conflicts
Prior rights & Einstein rights
Time commitments
Liability
Distinction from research activities
Student involvement
Office of Biotechnology Staff
John Harb, M.S.P.H.
Director
Assistant Dean, Scientific Operations
David Schoenhaut, Ph.D.
Assistant Director
Benjamin Neymotin, M.A.
Contracts and Licensing Associate
Office of Business Development
Staff
Richard Kosman, Sc.M.M.
Director
David Silva, Ph.D.
Senior Business Development Analyst
Janis Peck, M.B.A.
Business Development Analyst
Contact Us
Website:
www.aecom.yu.edu/biotechnology
Forms & Policies
News & Publications
Contact Information
Phone: 718-430-3357
Office: Belfer Building, 9th Floor
Want to learn more about IP?
Join us…
Tuesday, December 9th
“Intellectual Property Overview
for the Academic Researcher”
Same Room
Different time - Noon
Guest Speaker Kenneth P. George, Partner
Amster, Rothstein & Ebenstein LLP
(intellectual property law firm)
Thank You
Any Questions?