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A New Model
for Technology Commercialization
at The University of Kansas
KU Center for Technology Commercialization (KUCTC)
Executive Director, James G. Baxendale, MS, MBA
SOM
KUMC March 30, 2009
Why Combine Tech Transfer Offices?
• Unify and standardize tech transfer processes and
policies across the University
• Leverage best practices of both organizations
• Coordinate interactions with business, economic
development and government leaders
• Reduce duplication of resources and better leverage
resources
• Support research collaboration across campuses
• Create additional funds for investment in university
research and graduate education initiatives
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What is the KUCTC?
• The new technology commercialization entity for
all KU campuses
• A separate 501(c)(3) non-profit organization
• Jointly controlled by the KU Center for Research
and the KU Medical Center Research Institute
• Has its own Board with the Provost as the Chair
• Thirteen members on the Board consisting of
University administration, KUMC and Lawrence
faculty, and Lawrence and Kansas City
community leaders
• Offices on the Lawrence and KUMC campuses
• Executive Director and Licensing Associates
travel to both campuses
• Has its own corporate counsel
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KUCTC: Mission Statement
Mission: To maximize the impact of University
intellectual property for the benefit of the
University and society
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KUCTC: Goals
• Ensure public benefit through commercialization of
inventions created at KU
• Ensure inventor satisfaction with technology
commercialization process
• Enhance recruitment and retention of faculty, staff and
students by providing top quality technology
commercialization services
• Provide educational opportunities for students, staff
and faculty about the commercialization of intellectual
property
• Participate in regional and state economic
development
• Facilitate collaborative research projects
• Generate revenue to support research and graduate
education
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KUCTC: Board Structure and
Composition
• Establish overlapping board from functional
RI and KUCR Boards
» Chair of the Board = Provost
» Membership includes:
• KUMC Vice Chancellor for Research and the KU Vice
Provost for Research and Graduate Studies
• Representation from business people on RI and KUCR
boards
» Bi-campus faculty representation
» Bi-campus community representation
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KUCTC: Reporting Structure
• Executive Director reports to Provost who is
responsible for KU technology commercialization
• Operational reporting to KUMC Vice Chancellor for
Research and KU Vice Provost for Research and
Graduate Studies
• Licensing Associates & Licensing Assistants
» Report to Executive Director
» Co-located on both campuses
» Deployed across campuses as needed
• Interns and Externs on both campuses
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Tech Transfer Website
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Technology Commercialization
Process
• Disclosure of invention
• Initial evaluation and market research
• Patentability Search
• Commercialization strategy
• File patent/copyright/trademark
• Potential enhancement of technology
• Material Transfer/Research Agreements
• Out licensing or Company spin-off
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Functions of Technology
Commercialization
• Ensure public benefit from KU research
through commercialization of inventions
created at KU
• Negotiate various contracts/agreements
• Promote collaborative research
• Facilitate the protection of intellectual property
• Educate faculty and students in intellectual
property
• Assist with retaining and recruiting faculty
• Generate revenue to support research and
graduate education
• Participate in regional and state economic
development
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Technology Commercialization Activities
Education of
Faculty/Staff/
Students
Facilitate
Proof of Concept
Collaborations
with Industry
Review of Faculty
Conflict of Interest
Management Plans
Diligence
Review of
Licensees
Market Technologies
to Out-license
Interpret and Assist in
the Development of
IP Policy
Review Start-up
Company
Business Plans
Coordinate Intellectual
Property Protection
Assist with
Development
of Consortia
Agreements
Prepare/Negotiate
Inter-Institutional
Agreements
Assist with
Faculty Retention
and Recruitment
Perform Economic
Development Outreach
Facilitate Invention Disclosure
Meetings and Assess Technology
for Commercial Potential
Prepare Internal
Royalty Distribution
MOU
Promote
Entrepreneurship
Across Campus
Public Education and
Relations
Prepare/Negotiate
License Agreements
Prepare/Negotiate Company
Formation Documents and
Securities Agreements
Prepare/Negotiate
Option Agreements
Prepare/Negotiate
Term Sheets
Consult on IP Clauses in
Research Agreements
Prepare/Negotiate
Material Transfer
Agreements
Prepare/Negotiate
Confidentiality
Agreements
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09/08
Current Statistics
• 640+ faculty/staff/students participated in
invention disclosures during past 10 years
• Cumulative revenue of over $16M
in the last 10 years
• 19 active equity positions
• 20 active start-up companies
• 92 licenses signed during past 10 years, 32 with
Kansas-based companies
• 60-80 annual invention disclosures on average
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Issues for KU Start-ups
• Management
• Capitalization
• Market
• Product/Services
• KU Equity/Royalty
• License Agreement
• Business Incubator Needs
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Active Start-Up Companies
• Cadstone – Electronic design automation development
tools
• Computerized Assessment and Learning – Online
testing program
• Crititech – Particle-size reduction techniques for
pharmaceuticals
• CyDex – Compounds that improve drug solubility
• DAR Corporation – Aeronautical design software
• e-Learning Creations – On-line certification for K-12
special education
• Flint Hills Scientific – Automated seizure detection and
prediction
• Immunogenetix Therapeutics – Prevention / treatment
of HIV infection
• ImmuPep – Modulating the immune and inflammatory
responses to treat disorders of the immune response
• Institute for Community Health & Development –
Internet-based community development tool
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Active Start-ups Companies (Cont…)
• NephroGenex – Treatment of end stage renal disease
• Relive for Kids – Educational software to assist children in managing
severe headaches
• Savara Pharmaceuticals – Platform technology with broad
applications in respiratory medicine, vaccines and other therapeutics
• TerraMetrics – Large scale agricultural remote sensing
research
• TVAX BioMedical – Method for mobilizing the human immune
system to kill cancer cells and reject growing cancers
• XenoTech – Develop pre-clinical drug safety information
(recently acquired by Sekisui Chemical Group)
• KCBioMedix – Neonatal medical device
• Kansas Analytical Systems – Compound analysis by nuclear
magnetic resonance imaging
• Arcademia – Educational software games
• Neo Abacus – Software for tagging SEC financial reports
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Breadth of Invention Disclosures
Nursing – Videotapes for addressing congestive heart failure rehab
Chemistry – Compounds as anti-cancer drugs, glucose sensor
Business – Software to tag financial data for customized reports
Journalism – Software and web design for presenting the news
Education – Distance education modules, software tools for teachers
Biodiversity Resource Center – Predictive software for invasive species
Civil Engineering – Energy-efficient wall panel
Life Span Institute – Medical devices for premature infants
Mechanical Engineering – Synthetic functional spine
Aerospace Engineering – Fiber design software, UAV
ITTC – Communication system for remote regions, RFID
Higuchi Biosciences Center – Inhalation drug delivery technique
Architecture – Copyrighted building plans
Physics – Instrumentation to detect defects in semiconductor coatings
Medicine – Software algorithm to predict epileptic seizures
Occupational Therapy – Stroke rehab device
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Examples of Marketplace Products
Abilify – antipsychotic drug
CAL – Online testing/ assessments for teaching/ learning processes
Captisol – improves solubility
Cerebyx – antiseizure drug
Community Tool Box – Internet based community development tool
Distance Education – modules for special education certification
Dual Diagnosis – training videos
Force Plate Actimeter – records/ scores finer scale movement/ activities
Geodon – antiseizure drug
Hot Tip Catheter – device for sleep apnea, GERD, tissue ablation, etc.
Implantable Glutamate Biosensor – enzyme based sensor for glutamate
N-trainer System – teaches feeding in premature infants
Profusion – Internet meta search engine
QuizStar – software teaching tool
Stroke Impact Scale – measure stroke rehab progress
Swept-Step Radar – detection/range determination device
Vfend – antifungal drug
VidWatch – broadcast monitoring software
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Educational Initiatives
• Co-hosted two (2) National Collegiate Innovators
and Inventors Alliance (NCIIA) seminar events
• Technologies are supplied for Business Plan
competitions to KU and UMKC Schools of Business
• Full year law externships for KU and UMKC law
students
• KUCTC/OTDD Translational Research symposium
• Undergraduate and Graduate Engineering student
IP presentations
• Teacher Tech 2008 internship, Uplink/Ewing Marion
Kauffman Foundation
• Global Entrepreneurship Week, Ewing Marion
Kauffman Foundation
• Technology showcases and IP/Commercialization
seminars
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Outreach
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KC 2009 Year of Innovation Steering Committee
Student inventions i.e. graphic design
External entrepreneurs i.e. Kansas State Trooper
Science Pioneers Fair, Kansas City, MO; Oct. 25,
2008
• Tomahawk Elementary School, Overland Park, KS;
Nov. 17, 2008
• Children’s Mercy Hospital Tech Transfer Director
Search Committee
• NSF Partnerships in Innovation Grant participant
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Protecting Intellectual Property
• Patents
• Copyrights
• Trademarks
• Trade Secrets under CDA’s
(NDA’s)
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What is Patentable?
• Products
• Processes
• Plants
• Designs
• Applications not just ideas
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Patent Basics
• Demonstrate novel
• Demonstrate utility
• Demonstrate nonobviousness
• Prevent others from making,
using and selling invention
• Costs
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Patent Process
• Original and authentic inventor
• Duty of candor
• Enabling disclosure
• Specifications
• Claims
• Response to rejection
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Lab Books/Inventor Records
• Keep complete, detailed records
first idea through commercial
products
• Describe the invention clearlywords, photos, graphs, drawings, etc.
• Explain operation or use fully
• Witnessed by trustworthy colleague
“Read and understood by…”
• Dates noted, signed in ink
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Copyright
• Protect the work not the ideas
• Ownership i.e.; work for hire,
payment
• Licensable as intellectual property
• Length of protection
• Original works of art, manuscripts,
etc.
• KU property, within scope, except
scholarly works
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Copyright (2)
• Informs the public that works are
copyrighted
• Identifies the copyright owner
• Determines the date work was published
• Emblem C, the letter C in a circle, the word
Copyright or “Copr.” followed by the date
and name of owner
• Omission of notice:
» a. Cured if registration obtained within 5
years
» b. Affix notice to remaining copies
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Trademarks
• Common Law Trademark- once a trademark
is used in connection with a product so that
consumers have come to identify the
trademarked goods as originating with the
owner.
• Federal Registration
» a. gives nationwide notice
» b. after 5 years, subject to cancellation only
on limited grounds
» c. filed on the basis of “actual use”
» d. filed on the basis of “intent-to-use”
» e. must have sales in two or more states
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Trademarks (2)
• Colors: red on the heels of shoes, red on bowling
pins, pink for Owens-Corning fiberglass
• Pictures and Symbols: Nike “swoosh” and silhouette
of Michael Jordan flying through the air
• Numerals and Letters: MG, RCA, CBS, 707, 7-eleven
and AAA
• Label and Package Designs: color, shape and design
but only those distinctive features which function as
an identification of origin may be used as a
trademark., i.e. COKE bottle
• Slogans: must be used to associate a particular
product with a particular product in the mind of the
public
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Jim Baxendale, Executive Director
KU Center for Technology Commercialization
Email: [email protected]
Web: www.ctc.ku.edu
Lawrence campus:
Youngberg Hall
2385 Irving Hill Rd.
Lawrence, KS 66045
Tele: 785/864-7783
Fax: 785/864-5272
Medical Center campus:
Wescoe Pavilion, M.S. 1039
3901 Rainbow Blvd.
Kansas City, KS 66160
Tele: 913/588-5439
Fax: 913/588-8214
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