Category: From the Director

2016 proved to be a very productive year for the Office of Technology Transfer. For starters, we completed our first year as a combined office with Emory’s Industry Contracting Group. Altogether we executed a total of 2,144 contracts — most of them with industry –on Emory’s behalf. While material transfer and confidentiality agreements far outnumber other contract types, it is those other contracts that take the most time and effort to negotiate. Not only have the two offices gotten to know each other much better, but we created additional tools that have improved our ability to more effectively manage our business. Industry funding continues to be crucial component in the support of the academic research enterprise and in 2016 we saw an all-time high of $52.5M in funding from companies. Of this total, $35.5M was received in support of clinical work needed for the approval of new therapies and medical devices. Focusing on products, Emory sub-licensee Blue Earth Diagnostics, received FDA approval for Axumin™ to diagnose recurrent prostate cancer. This technology was invented and disclosed in 1995 by Mark Goodman, PhD from our Department of Radiology. On a similar note, Baxalta received European approval to market Obizur™ for acquired hemophilia

Overall fiscal year 2014 has been a good one for OTT. As to be expected with some highs and lows. OTT processed 225 disclosures, had an all time low of 7 days in processing material transfer agreements, and had received almost $10 million in licensing revenue. Licensing Making deals is the heart and soul of a technology transfer office. OTT completed 40 licensing deals this year that will help seed Emory’s future with new product and revenue opportunities. Three of these deals were with new start-up companies, a cause for celebration when you consider the success our existing startups have had in the past year. A further six of those agreements were what we consider to be high net worth licenses, or those that will lead to a clinical or commercial product with a lifetime revenue to Emory of over $1M. Start-ups Two of our start-ups, Apica Cardiovascular and Velocity Medical Solutions, were acquired by publicly traded companies, Thoratec and Varian Medical Systems, respectively. These acquisitions are an indicator that significant value is being created around Emory technologies. We look forward to working with these companies in the future to help assure that new products advance to the marketplace. Our

There is no shortage of people from outside of our industry discussing what we do and how we can improve. Although many of those groups may have their own agendas, views, and biases, it is difficult to deny that we as a field face a number of changes. As the leader of Emory’s technology transfer efforts, and a former President of AUTM, I am often asked what I think the biggest challenges facing our industry are: here are my thoughts… Now and going forward, the biggest challenge is and will continue to be managing expectations. When I got into technology transfer 24 years ago, the biggest complaint by tech transfer professionals was that no one cared about what we were doing. We cared. We loved what we were doing, and we were perhaps the only ones that believed we had important roles and responsibilities. Now 24 years later, it’s quite the opposite scenario. Everyone is interested in technology transfer. Today, managing expectations is more critical than it has ever been. We are more commonly in the public eye and yet, not everyone understands our profession. There are a lot of debates going on, and unfortunately most people in these discussions

The Atlanta Clinical & Translational Science Institute (ACTSI), led by Emory University with partners Morehouse School of Medicine and Georgia Tech, and Georgia Bio, the state’s life sciences industry association, holds an annual conference to discuss the best methods for academia and industry to work together to translate science discoveries into products on the market and to engage communities in clinical research efforts and outcomes. The 5th Annual Academic & Industry Intersection Conference was held recently and this year, the focus was on medical devices and successful partnerships between academia and industry. We sat down with our Office’s Executive Director, Todd Sherer, who attended and participated in a panel at the conference to discuss the conference. What was a highlight or two for you from the conference? The highlight of the conference was the keynote address from Bill Hawkins. He talked a lot about the challenges associated with the FDA and the regulatory process. He even challenged the country to ask itself if there is a proper balance between being too conservative and getting new medications and devices approved. If we currently use the same process that was used 20 years ago, half the medications on the market wouldn’t have

As technology transfer professionals, we work closely with our faculty inventors to evaluate early stage technologies for commercial potential, determine the best protection strategy for intellectual property, and market our technologies through a variety of channels in hopes of finding a corporate partner. If we find an interested company, then we negotiate appropriate contractual partnerships to ensure that our inventors, our universities, and the taxpayer benefit from the ultimate products. After licenses are signed, we maintain relationships with the corporate partner throughout the life of the agreement, sometimes insisting upon the return of our technology should our partner decide to abandon its development. The passage of the Bayh-Dole Act boldly changed government patent policy, providing ownership and control of any invention made with federal funds to the very universities and small businesses that made them. Since its passage over 30 years ago, the Bayh-Dole Act has proven instrumental in recognizing federal patent policy as an integral part of U.S. competitiveness and is the envy of nearly every other country in the world as evidenced by similar legislation in a wide variety of countries including South Africa, India, China, Japan, South Korea and Taiwan. Its beauty is that it aligns ownership

Intellectual property protection, in particular patent protection, is an important aspect of university technology transfer. Such rights give the licensee a proprietary position that allows for investment in continued development and helps ensure that the public ultimately benefits from basic research that results in commercial product. In terms of patent rights, it will be important to watch in the coming years how new factors such as the Leahy-Smith America Invents Act (AIA) affect academic innovation. The law represents the most significant change to the U. S. patent system since 1952 and switches patent rights from a first-to-invent system to a first-inventor-to-file system. This change presents particularly challenges for us in academic technology transfer as our faculty function in a “publish or perish” environment.  Under the new law, researchers are no longer protected through early conception of an invention, and disclosures to third parties can impair patentability. Most researchers are familiar with the role and necessity of lab notebooks, particularly in determining when an “invention” occurred. This note taking requirement was not eliminated with AIA, but in fact its importance is expanded. Although there are changes, AIA does retain certain protections for researchers, such as the grace period for an inventor’s