Technology Transfer From a UARC Perspective

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Technology Transfer From a UARC Perspective

• Norma Lee Todd
• Technology Transfer Assistant Director

Norma Lee Todd [phone] Norma.lee.todd_at_jhuap
l.edu www.jhuapl.edu/ott
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Divisions of theJohns Hopkins University
Divisions of theJohns Hopkins University
School of Arts Sciences Whiting School of
Engineering School of Professional Studies in
Business Education
School of Hygiene Public Health School of
Medicine School of Nursing
Applied Physics Laboratory
Nitze School of Advanced International Studies
Peabody Institute
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JHU/APL At a Glance

• University-Affiliated Research Center (UARC)
• Focus on National Security
• Major Efforts in Space Science Technology
• Partner in Johns Hopkins Commitment to Education
  Medicine
• 360 acres
• 4,000 Employees
• 800M Annual Revenue (est)

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JHU Applied Physics Lab - APL
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APL Business Areas
APL Business Areas

• Air Missile Defense
• Biomedicine
• Civilian Space
• Homeland Protection
• Infocentric Operations
• National Security Space
• Precision Engagement
• Science Technology
• Strategic Systems
• Undersea Warfare
• Warfare Analysis

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Program BreadthUniversal Reach Nearly Infinite
Domain
In Space
In the Air
At Sea
On the Land
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What is a UARC?

• A strategic US DoD research center located within
  a university
• Six official UARCs
• JHU/APL
• Penn State ARL
• U of Texas at Austin ARL
• U of Washington APL
• Georgia Institute of Technology/Georgia Tech
  Research Institute
• Steven Institute of Technology/Systems
  Engineering Research Center

United States Department of Defense, From
Wikipedia, the free encyclopedia, Retrieved
September 10, 2009, from http//en.wikipedia.org/w
iki/University_Affiliated_Research_Center
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What is a UARC?

• Affiliated with or part of a university
• Provides essential DoD engineering, research or
  development
• Receives sole source contract funding
• Maintains a strategic relationship with the DoD
• Responsiveness to sponsors requirementsquick
  capability.
• Comprehensive knowledge of sponsors problems.
• Broad access to information, including
  proprietary data.
• Broad corporate knowledge.
• Independence and objectivity.
• Current operational experience.
• Freedom from real and/or perceived conflicts of
  interest.

Director of Defense Research and Engineering,
Memorandum for Assistant Secretary of Defense,
Dated May 13, 1996. Subject University
Affiliated Research Center Management Plan
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JHU/APL Technology Transfer

• APL Office of Technology Transfer (OTT)
• Formed in July 1999
• 9 Staff 5 technology managers with licensing
  expertise in IT, biotech, biomedical, sensors,
  chemical engineering, telecommunications, space
  technology
• APL technology transfer program customized to
• Technology base
• Sponsor-focused environment
• Currently under management
• 1600 inventions
• 350 active patents
• Patents pending
• Mission

To broaden the impact of APLs scientific and
technical contributions by transferring
APL-developed technology to industry to benefit
the local economy, the Laboratory and our
sponsors.
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JHU/APL Innovation

• Prolific inventors On average, staff disclose
  2-3 inventions/week one every other day
• Goal of OTT is to facilitate the transfer of
  these inventions to the commercial sector via
  licensing - best way to realize benefits to
  society
• Howard County
• Maryland
• National
• International

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JHU/APL Technology TransferTen-year profile

• 1,299 inventions disclosed
• 272 U.S. patents issued
• 1,377 U.S. patent applications filed
• 238 license agreements executed
• gt31 million in licensing income
• 20 new companies created
• 16 in Maryland
• 40 new products on the market

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Technology Transfer at JHU/APL

• Occasionally engage in research partnerships
• CRADAs
• Space Act (NASA GSFC)
• Educational Partnership Agreement (AFIT)
• Inventor/Program driven
• Service to organizationnot included in OTT
  metrics

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Technology Transfer at JHU/APL

• OTT operations closely aligned with core mission
  of the APL
• Broaden the impact of APL-developed technology
  where possible
• Metrics for OTT success
• Licenses and income
• Products on the market
• Jobs created
• Downstream funding
• OTT metrics provide a window on JHU/APL
  technological relevance and innovation

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JHU/APL Technology Transfer

• Primary focus on licensing
• Commercial entities
• Dual-use technology
• Government sales
• Government Agencies
• State/local
• Federal
• Start-up companies (1 2 per year)
• Drives all OTT metrics for success
• Maintains institutional support for technology
  transfer

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JHU/APL Technology Transfer

• Organizational Conflict of Interest (OCOI)
  Mitigation is criticalgreatest risk to OTT
• Open communication/transparency of operations
  vital
• Departmental Technology Transfer Team senior
  reps from all Business Areas flow information
  between OTT and JHU/APL Executives
• Quarterly management reports on company
  engagements
• Post active licenses for supervisors
• Annual check-in with licensees
• Benchmark peers

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JHU/APL Technology Transfer

• Formal risk mitigation plans when required
• Licensing strategy
• 1st Tier Commercial entity removed from US
  government work/sales
• 2nd Tier Commercial entity works for or sells
  to US government with limits on FOU and
  exclusivity, firewall technical staff
• Walk away
• Mock term sheets routed through affected Business
  Areas or programs
• Standardize agreements
• Minimize exclusivity

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JHU/APL Technology Transfer

• Minimize JHU/APL technical contributions
  post-license execution
• Minimize on-going financial consideration
• Up-front payment
• No royalties
• Balloon payment high sales milestone is reached
  (anti-embarrassment clause)
• Licensee assume patent prosecution and costs
• License language includes APLs TDA role to the
  sponsor (i.e. TE)
• Require disclosure to the government by both APL
  and licensee

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JHU/APL Licensees
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JHU/APL Programs In-reach

• Educate staff, promote innovation, motivate
  participation
• Innovation x? Lunchbox Seminar Series
• Under Armour, Google, Cisco, Discovery Studios
• Inventor focus groups
• Communities of Practice
• Relationship building/networking within JHU/APL
• Annual Invention of the Year Awards to recognize
  inventions for the calendar year
• OTT IRD fund, OTT Patent fund

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JHU/APL Programs Outreach

• TEDCO partnerships UTDF awards expand OTT IRD,
  showcase events
• Ongoing work with DBED, UMBC Activate Program,
  SBA (STTRs/SBIRs), Howard County EDA/Neotech
  Incubator, FLC
• Maryland Licensing Executives Society
• MIT Enterprise Forum
• OTT Newsletter New inventions/opportunities,
  New partnerships, New technologies

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JHU/APL OTT Contact Information

• Kristin Gray, Director 240-228-7927
• Norma Lee Todd, Assistant Director 240-228-4528
• Teresa Colella, Life Science 240-228-3782
• Heather Curran, Biomedical Devices 240-228-7262
• John Bacon, Sensors 240-228-8309
• Leslie Martinelli, Finance Agreements
  240-228-3541

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Norma Lee Todd Technology Transfer Assistant
Director [phone] Norma.lee.todd_at_jhuapl.edu
www.jhuapl.edu/ott