Technology Transfer at Case Western Reserve University

1
Technology TransferatCase Western Reserve
University

• Nick Frollini Joe JankowskiAssistant Vice
  Presidents for Technology Transfer

2
Overview

• Introduction
• Who We Are
• Mission of Tech Transfer
• Philosophy
• Services
• Benefits
• Process

3
Joseph Jankowski, Ph.D.

• Assistant Vice President
  for Biomedical Sciences Technology
  Transfer
• Venture Director, Case Technology Ventures
• Director, Arteriocyte, Inc. and Interventional
  Imaging, Inc.
• Joined Case in November, 2003
• Career focused on development and commercial
  transfer of technologies at non-profit
  institutions (Battelle, SUNY, The Cleveland
  Clinic)

4
Nick Frollini

• Assistant VP for Technology Transfer
  Engineering Physical Sciences and Operations
• Managing Director, Case Technology Ventures
• Joined Case in October 2001
• Trained as an industrial engineer/economist
  (Carnegie Mellon)
• Past eight years in technology commercialization
  and business creation
• Redleaf Group, Director, MA
• VentureBank_at_PNC, CTO
• Andersen Consulting, Analyst, Natural Resources
• Director, Cleveland NanoCrystals

5
Professional Staff

• All have combination of scientific and business
  backgrounds
• Majority have Masters in Business or Science
• Continuing education required Case coursework
  (eg., Weatherhead) and professional programs
  (AUTM, LES)

6
The TTO Mission

• Lead the successful commercialization of ideas
  developed by people at Case through licensing to
  existing businesses or starting new enterprises
• while providing high levels of service to the
  Case community
• and complying with relevantpolicies and
  regulations to protect the institution and its
  researchers.

7
Operating Philosophy

• Focus on Innovation
• Marketing vs. Technology
• Service Oriented
• Augment research mission of faculty and schools
• Targeted Approach
• Select and Concentrate on Winners
• Operate as a Business
• Cost Recovery
• New Company Formation
• Experience and Resources

8
Services to the Case CommunityMore than just
inventions
Necessary

• Material Transfer Agreements (MTAs)
• Confidentiality Agreements (CDAs)
• Governmental Compliance (Bayh-Dole)
• Patent Development and Invention Disclosure
  Review
• Sponsored Research Agreements
• Industrial Consortia
• License Agreements
• New Enterprise Development (Startups)
• Education

Value-Adds
9
Benefits to Inventors

• Convenience/necessity
• Revenue
• Sponsored research
• Industrial access
• Start-up opportunities
• Translational development opportunities

10
Benefits to Departments, University and Region

• Revenue
• 75 to the inventor and his/her school
• Excess proceeds distributed to help facilitate
  further research opportunities
• Recruitment
• Potential new faculty members want to meet with
  TTO
• Attraction of funding
• Government grants (BRTT/WCI)
• Venture funds
• Regional development (jobs, taxes)
• Positive Publicity (enhanced reputation)

11
Preserving the Institutional Mission

• Active participation on the Presidents and the
  SOMs Conflict of Interest Boards
• Coordinates with OSR to ensure appropriate
  publication and IP ownership rights on sponsored
  research grants and consortiums
• Works with GCs office on compliance issues (ref.
  Madey v. Duke)

12
What is the Process?
13
How the Pipeline Works
100 33 15 10 5 0.1
Invention Disclosures (IDFs) IDFs
Pursued IDFs Licensed Licenses
Breaking-Even Licenses Licenses
---------- 106
14
Where Does the Money Go?
15
How Researchers Work with Us

• Invention Disclosures
• Critical first-step in our process
• One page form for disclosures
• Review and respond quickly
• If appropriate, applications filed by outside
  patent counsel with deep expertise
• Work with our researchers at every stage
  throughout the process

16
How Researchers Work With Us

• Corporate Partners
• Non-Disclosure Agreements
• Can be critical to protecting current and future
  work
• TTO handles negotiations to protect inventor
  interests
• Material Transfer Agreements
• TTO can review and coordinate
• Research Sponsorship
• Coordinate with Office of Sponsored Projects
  Administration to facilitate interaction with
  corporate partners
• License Agreements
• Work to market Case ideas to the commercial world

17
Important Notes

• We say no more than we say yes on invention
  disclosures
• Reality of limited resources
• Not a reflection on the quality of the work
• We will always discuss other options and
  opportunities
• We have restrictions on what we can and cant do
  as a non-profit research institution
• Bayh-Dole
• 501c(3)
• State law
• Communication is our top goal
• We may not be able to make everyone happy, but
  we want to be sure to provide clear explanations
  and transparency as we move through the process

18
Case TTO and Start-Ups

• TTOs traditionally provide a range of support for
  new ventures
• Wide Range of Incubation Support
• Start-up documentation package
• Physical incubation services (BioEnterprise)
• Business advice and assistance
• Financial support (prototypes, patents, etc.)
• Case Technology Ventures
• Cases internal venture fund
• Invests in new companies based on Case IP
• Supported in part by Ohios Third Frontier
  Project

19
Case Technology Ventures Concept

• Create an additional source of capital at Case
• Augment existing tech transfer pre-seed
  activities
• Promote entrepreneurship
• Potential upside for Case
• Visibility for Universitys contribution to
  regional economic development
• Funds provided by CTV are used by NewCos for
• Developing prototypes
• Recruiting management talent
• Creating business/marketing plans
• Identifying/renting office space/laboratory
  facilities
• Retaining corporate counsel
• Beginning operations

20
Fund Basics and Deal Structure

• 5 million fund
• 4 million from Case, 1 million from State of
  Ohio
• 50k to 250k in funding, depending on theneeds
  of the new company
• Convertible debt
• Standard documents market terms and conditions
• Use of convertible debt avoids the difficulty of
  valuing equity in an early-stage company
• Oversight by CTV Executive Committee

21
Current CTV Portfolio

• Interventional Imaging, Inc. (I3)
• Intravascular MRI coils for the detection of
  vulnerable plaque
• Arteriocyte
• Non-embryonic stem cell-based therapies targeting
  vascular disease
• Cleveland NanoCrystals (CNC)
• Nanomaterials company targeting a wide range of
  applications including coatings and
  optoelectronics

22
Summary

• Multi-disciplinary staff dedicated to serving
  researchers and commercial initiatives
• Large upside for individuals, departments and
  institution
• Process focused on delivering value in timely
  manner for our researchers
• Invention Disclosure is the cornerstone of our
  process and the beginning of a relationship
  between inventor, Tech Transfer, and industry

23
(No Transcript)