Office of Technology Transfer

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Office of Technology Transfer

• Todd Keiller Director, Technology Transfer
• Kerry Swift Technology Licensing Officer
• Amy Parry Business and Office Manager
• The Office of Technology Transfer (OTT)
  facilitates the practical application of
  knowledge by protecting, marketing, and
  negotiating the sale of rights of commercially
  viable intellectual property to partners that can
  bring the property to market.

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Technology Transfer

• Results of Funding
• Data and Information
• New Materials
• New Technologies
• Patentable Inventions
• Is there a Product?
• Who can commercialize that product?

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How does it work at UVM?

• Invention Disclosure
• Call, meet, e-mail with idea, paper, abstract
• Invention Disclosure Form
• Type of IP and Patentability
• Funding Obligations and Federal Compliance
• Patent Application
• Search for Commercial Partner(s) or creation of
  new Start-up companies
• License
• Commercialization

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The Results - Technologies

• Non-Hodgkins lymphoma chemotherapy agent in Phase
  III clinical trials
• FDA fast-track NDA 2007(?)
• Cheese Whey-Based Wood Finishes
• Colon Cancer Diagnostic (14 licensees)
• Device and Method for Evaluating Connective
  Tissue
• VERMEDX Diabetes Information System

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The Results - Businesses

• Acadia
• Bio-Tek
• Biomosaics
• Haematologic Technologies
• Microstrain
• Green Mountain Antibodies
• Vermont Clinical Decision Support
• Apollo SRI, LLC

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The Results Potential Income

• Share in Income from UVM Inventions
• 45 to the inventor
• 55 to UVM to support research

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Resources

• UVM OTT Webpage www.uvm.edu/techtran
• To see what companies see www.uvminnovations.com
• Kerry.Swift_at_uvm.edu 802-656-9964
• Todd.Keiller_at_uvm.edu 508-497-2497
• Amy.Parry_at_uvm.edu 802-656-8780

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What does this have to do with me?
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New Industrial Relationships

• Establishing CDAs with companies.
• Discussing with the PI intellectual property and
  other issues that may come up with company
  funding.
• Developing and negotiating agreements for both
  background IP and the contract itself.

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Renewal/End of Grant Compliance

• Reporting of IP to the Federal Agency
• Bayh-Dole Act
• Reporting to the Agencies - iEdison
• Confirming with OTT

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Bayh-Dole Act

• A federal statute (35 USC 200-212) that governs
  what can be done with IP developed under federal
  funding.
• Prior to 1980, the US government retained title
  to all inventions developed under federal funding
• Each agency had their own licensing/ownership
  policy and only 4 of over 28,000 patents were
  ever commercialized over a 40 year period.
• Lots of new research, but little transfer into
  new products that the public could benefit from.

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Bayh-Dole Act

• The entity receiving funding can take ownership
  in any IP developed provided
• They report that technology
• They commercialize that technology
• They give the US Government a license to use the
  technology for its own uses.
• Bayh-Dole provides incentives to commercialize
  funded technologies to those who received federal
  funding
• Fosters partnership with government, academia,
  and industry

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The iEdison System

• https//s-edison.info.nih.gov/iEdison/
• An online reporting tool for Bayh-Dole compliance
  developed by the NIH
• One-stop shop for IP reporting for nearly all of
  the federal agencies

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Confirming IP Reporting with OTT

• E-mail Amy Parry or Kerry Swift at OTT
• Provide PIs name and a general name or
  description of the invention
• If weve reported the invention, well give you
  the iEdison Invention Report number.
• If we have not yet reported the invention, well
  contact the PI directly requesting a disclosure
  of the invention referenced and report to
  iEdision.

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Release of Unpublished Data

• Why would your PIs need to do this?
• How do they do this?

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Release of Unpublished Data

• Establishing new collaborations
• Proof of concept/validation of experiments
• Working with industry
• Other Reasons?

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Confidential Disclosure Agreements

• CDAs govern the transfer of information between
  entities
• No disclosure of the information to third-parties
  without permission from the disclosing party.
• Governs use of that information limited and
  specific purposes (to determine if the parties
  want to collaborate)
• One-way or two-way. Incoming or outgoing.

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How do we get a CDA done?

• Incoming
• Send CDA to OTT for review
• OTT negotiates any necessary changes
• OTT obtains signatures for final CDA
• Outgoing
• OTT drafts and sends CDA out to other party
• Negotiates any necessary changes
• OTT obtains signatures for final CDA

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Distribution/Receipt of Materials

• Why would your PIs need to do this?
• How do they do this?

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Distribution/Receipt of Materials

• Need certain materials for specific experiments
• Establishing new collaborations
• Proof of concept/validation of experiments
• NIH Guidelines for Dissemination of Biomedical
  Research Resources

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Material Transfer Agreements

• MTAs govern the transfer of tangible materials or
  organisms between entities
• Need to exchange materials for proof of concept
  and to further basic research
• Often materials took a lot of time, effort, and
  money to make. Need to protect that investment.
• MTAs maintain relationships reports,
  publications, and compliance with other MTA terms
  may lead to further collaborations and potential
  licensees.

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What makes up a MTA?

• Definitions of the recipient and provider.
• A definition of the material
• The approved use of the material
• General research or a specific experiment
• Who can use it and where it can be used
• Rights to publish and acknowledgment
• Intellectual property and license options
• Liability and compliance with laws
• Term of the Agreement and disposal of material

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How do we get an MTA done?

• Incoming MTAs
• Send draft MTA from provider to OTT along with a
  completed Incoming MTA Questionnaire (MTA will
  NOT be reviewed or signed with out this!)
• MTA will be reviewed and, if necessary,
  negotiated by OTT
• OTT obtains signatures for final CDA

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How do we get an MTA done?

• Outgoing MTAs
• Non-profit MTA
• PI and OTT draft MTA
• Send draft MTA to recipient institution
• Negotiate any necessary changes
• OTT obtains signatures for final MTA
• For-profit MTA
• PI and OTT determine if MTA is best option
• Send draft MTA to recipient company
• Negotiate any necessary changes
• OTT obtains signatures for final MTA

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MTA Resources

• MTA processes, MTA Questionnaire, and MTA
  templates all available here
• http//www.uvm.edu/7Eospuvm/?PageForms/MTA-1.ht
  m