Commercializing USDA Innovations Via Public-Private Partnerships

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Commercializing USDA Innovations Via
Public-Private Partnerships

• June Blalock
• Coordinator, Technology Licensing Program
• USDA, Agricultural Research Service
• Office of Technology Transfer
• djb_at_ars.usda.gov

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Overview

• Quick review of Federal technology transfer
  legislation
• Summary of USDA technology transfer goals and
  policies
• Role of private sector technology transfer
  partners
• Factors affecting agricultural biotechnology
  partnerships

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U.S. Technology Transfer Legislation

• Bayh-Dole Act, 1980
• Stevenson-Wydler Act, 1980
• Federal Technology Transfer Act, 1986
• National Technology Transfer and Advancement Act,
  1996
• Technology Transfer Commercialization Act, 2000

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37 CFR 404.2

• It is the policy and objective of (this
  regulation) to use the patent system to promote
  the utilization of inventions arising from
  federally supported research or development.

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37 CFR 404.2, paraphrased

• A federally owned invention should be protected
  when a private sector partner is needed to
  achieve technology transfer
• AND
• that partner requires some scope of exclusivity
  to protect the capital investments needed to
  commercialize the invention.

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USDA Technology Transfer Goals

• Use the patent system to facilitate technology
  transfer
• Provide an incentive for investments by the
  private sector
• Support small business enterprises and
  entrepreneurs
• Support investments by U.S. businesses in
  international markets

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USDA Technology Transfer Policies

• Patenting decisions are based on technology
  transfer requirements.
• USDA does not require licenses for research only
  use of USDA inventions.
• Most licenses are exclusive or partially
  exclusive.
• Exclusive licenses for protected plant varieties
  reserve the right to make the licensed varieties
  available to third parties for research and
  breeding.
• Scientists are promoted based on the IMPACT of
  their research.

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Role of Private Sector Partners in Transferring
Public Sector Innovations

• Make investments in the development and marketing
  of licensed products and services
• Make licensed products and services widely
  available
• Provide the complementary assets required for
  commercialization e.g., manufacturing
  facilities, marketing and distribution capacity,
  investment capital, product registration
  expertise

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Selected USDA Technology Transfer Data for FY 2003

• Active CRADAs 229
• U.S. patent applications filed 60
• U.S. patents issued 64
• Active patent licenses 270
• Licenses generating earned
• royalty income 56
• Total license revenues 2.3 million
• Median earned royalty income 3,102

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Examples of Licensed USDA Technologies

• U.S. Patent No. 6,261,790, Monoclonal antibodies
  and antibody cocktail for detection of prion
  protein as an indication of transmissible
  spongiform encephalopathies
• U.S. Patent No. 5,689,054, Low phytic acid
  mutants and selection thereof
• U.S. Patent No. 5,676,994,Non-separable
  starch-oil compositions and U.S. Patent No.
  5,882,713, Non-separable compositions of starch
  and water-immiscible organic materials
• U.S. Patent No. 5,705,030, Fiber and fiber
  products produced from feathers
• U.S. Patent No. 6,083,498, Chemical attractants
  for yellowjackets and paper wasps

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Factors Affecting the Partnership Value of
Agricultural Biotechnology Innovations

• Consumer acceptance of agbiotech products
• Industry consolidation
• Biosafety regulations and liabilities
• International trade agreements and enforcement
• IPR availability, enforcement and freedom to
  operate
• Advances in tools and technology

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Complementary Assets Required for Agbiotech
Innovations

• Facilities for propagation/seed increase and
  field trials
• Access to markets and distribution capacity
• Expertise in local biosafety regimes
• Technical expertise in variety selection, trait
  stability, product QC
• Investment capital