Collaboration between Business and University to Create and Commercialize New Technology

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Collaboration between Business and University to
Create and Commercialize New Technology

• Stuart G. Gordon, Ph.D.
• Director, Technology Transfer
• San Diego State University Foundation

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Why Do It?

• Universities and Research Institutes have great
  creative talent and expertise, substantial
  resources, extensive infrastructure, and, in
  general, are less expensive.
• Companies also have creative talent and expertise
  (usually different than universities), well
  defined needs, great marketing, sales,
  manufacturing and distribution capabilities
• Proper management of the collaboration can be
  very productive for both parties.

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What can be gained?

• By the University
• Directed research
• Financial support
• Teaching/Training
• Intellectual Property technology transfer
  opportunity
• Positive PR-improved community relations
• Opportunity for grants other funding
• Improved Infrastructure

• By the Business
• Expertise with limited overhead commitment
• New Technology
• New Commercial Opportunities
• Expansion of business
• New Jobs
• New Markets
• Increased Profits
• New Employees

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Terms and Conditions of Sponsored Research

• Faculty created IP owned by University, Jointly
  created IP is jointly owned, Company created IP
  owned by Company.
• University will patent/protect IP
• Sponsor has first right to negotiate an
  exclusive, worldwide license
• License will be negotiated in good faith
• Confidentiality between parties
• Publishing right by faculty with appropriate
  review
• Work Plan appropriate for financial support
• In general, License fees and milestone payments
  waived in consideration of sponsored support

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Case Study 1

• Sponsored Research Agreement between Big Bus (BB)
  and SDSU
• Prof Brilliant has new recombinatorial chemistry
  platform technologyBB wants to study certain
  compounds made with this technology for their
  commercialization
• BB want CDA signed by Faculty, students and staff
• BB wants first right of refusal for license
• BB want 1 year free option on technology
• Terms of Agreement
• SDSU Own IP, pays for patents,
• BB has first right to negotiate exclusive/ww
  license
• One Year Option is not free
• CDA will be signed, but does not bar publications

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Case Study 2

• Sponsored Research Agreement between Small
  Biobusiness (SBB) and SDSU
• Perform analyses of 50 unique compounds by Prof.
  Spectral Graff
• SBB want analytical data
• Terms of Agreement
• Fee for service agreement, no research, no IP
• Confidentiality clause limiting disclosure by Dr.
  Graff (confidential information is clearly
  defined) but preserving publishing rights with
  appropriate review
• If IP is generated, SBB has first right to
  negotiate a exclusive/ww license.

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Case Study 3

• Big Pharma (BP) has proprietary compounds that
  SDSU Prof. I.N. Quisitive want to study.
• Need MTA to acquire compounds (doesnt want to
  buy them)
• Dr Quisitive want to be able to publish her
  findings
• Dr Q. is not seeking financial support from BP
• Terms of Agreement (MTA)
• BP wants first right to negotiate license
• BP wants to own the IP but SDSU will not
  agreefirst right to negotiate license. License
  may include running royalty, license fees and
  milestone payments.

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Case Study 4

• Nova Aggressive Biotech (NAB) wants sponsored
  research agreement (SRA)with SDSU faculty
• Do Basic Research Clinical Trial
• Wants low (15) indirect cost and deferred costs
  but will provide faculty SDSU with stock
  options instead
• Wants signed license agreement with SRA
• Wants SDSU Faculty to manage Clinical Trail
• Wants to have 90 day approval for publication
  with additional 90 day delay upon request (in
  case there is patentable invention)
• Terms of Agreement
• Cannot defer expenses
• Cannot accept stock in lieu of costs (Conflict of
  Interest issue)
• Cannot have signed license (IRS issue)
• Faculty can manage clinical trial but not data
  analysis -3rd party oversight
• 30 day publication delay with additional 30 day
  delay if proprietary technology is involved

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Examples of SDSU Intellectual Property 1

• Chemistry
• Ultra-sensitive Analytical Spectroscopy
• Raman Spectroscopic analysis of C-F compds
• Catalytic Chemistry
• Biology
• New Antibiotic Target and Compounds
• Gene Therapy delivery for Heart Disease
• Recombinatorial Chemistry for New Antibiotics
• Supercomputer Protein Design Technology
• Math and Computational Science
• Multidirectional, Variable Frequency Radar System

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Examples of SDSU Intellectual Property 2

• Medical Devices
• Joint and Muscle Performance Technology
• Eye Tracking and Cognitive Learning Technology
• Computer Software
• Immunization Tracking
• Electronic Recruitment System for HR Office
• Social Services Management System
• Teaching and Communication Tools
• Physics Instructional Program (CD-ROM)
• Teaching Teachers Math Concepts

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For More Information

• SDSU Foundation Technology Transfer Office
• Phone [phone]
• Web Site www.foundation.sdsu.edu/tto
• Provides links to SDSU and other web sites
• Provides information and explanations on many IP
  issues
• Association of University Technology Managers
  (AUTM) www.AUTM.net