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
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Blog posts to be included in the ORA Newsletter blog site
Quick Reference of the Common Types of Intellectual Property Rights
“Intellectual property” or “IP” generally refers to exclusive rights granted to owners under U.S. intellectual property laws to a variety of intangible assets covering creations of the human mind. Common types of IP rights include copyrights, trademarks, patents (utility and design patents) and trade secrets. Type of Right What it Protects How to Obtain Copyright Original works of authorship, including writings (including computer software) music (including any accompany words and/or music), and works of art (e.g., pictorial, graphic, and/or sculptural works) that have been tangibly expressed Copyright exists immediately and automatically when the work is created, that is, when it is fixed in a tangible copy for the first time A notice of copyright may be designated on the work of authorship by the following: The symbol © (the letter “C” in a circle), or the word “Copyright” or the abbreviation “Corp.”; The year of first publication of the work; and The name of the copyright owner (e.g., Emory University) No publication, registration or other action in the U.S. Copyright Office is required to secure copyright Trademark Word, name, symbol, logo, image design, or any combination used or intended to be used to identify and distinguish the goods/services of a
Continue readingACTSI and Emory: Setting the Stage for Biomedical Commercialization
In 2007, Emory partnered with neighboring institutions the Morehouse School of Medicine and the Georgia Institute of Technology to establish the Atlanta Clinical and Translational Science Institute (ACTSI). This multi-institutional alliance was launched via a Clinical and Translational Science Award (CTSA) obtained from the National Institutes of Health’s National Center for Advancing Translational Sciences (NCATS). ACTSI, CTSA, NCATS? All these acronyms may be hard to keep straight, but one thing is for sure: they mean big opportunities for Atlanta. The mission of the NCATS is to revolutionize clinical science in order to more effectively develop treatments and cures for disease. CTSA grants are awarded in order to improve and accelerate the bench-to-bedside process and have been granted to only 60 institutions in the entire country to date. Emory University’s own David Stephens, M.D., Vice President for Research and Department of Medicine chair is the principal investigator of the award that funds ACTSI. This funding source, renewed in 2012, has made available more than $36 million dollars that ACTSI is using to advance patient care via improved scientific discovery. The work of ACTSI has had a profound impact in short life. To date, ACTSI has contributed to supporting 673 investigators, 520
Continue readingFrom the Director: The Biggest Challenges in Technology Transfer – Today & Tomorrow
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
Continue readingFrom Academic Researcher to Startup Scientist: Leaving the Lab to Pursue Your Innovation
Each year OTT helps launch a number of startup companies based around discoveries made by Emory faculty or staff. In most of those cases the faculty member remains at the university as a researcher or clinician while he or she simultaneously serves in some type of advisory role for the company. In some instances however faculty leave the university environment to strike out into the exciting world of startups. In this piece we talk to former Emory professor Harriet Robinson, PhD, who is now the Chief Science Officer at GeoVax, an Emory startup developing HIV vaccines based on previous work from her lab. Before you created the HIV vaccine technology, had you ever given much thought to the commercialization of university discoveries? Yes, I had previously wanted to commercialize a different vaccine technology that I discovered while at another university. At that time it was not possible due to state restrictions that limited the ability of faculty to license their own findings from the university. Those limitations stemmed from legislation created to curb legislators from awarding contracts to themselves or relatives. What made you decide to follow the technology to a startup company rather than stay in academic research at
Continue readingStart-ups: Words from the Trenches – Part 4
Each year OTT helps launch high-quality start-up companies based on discoveries made by Emory faculty or staff. Over the past few months, OTT set out to interview a selection of the entrepreneurs and VCs we have worked with and pick their brains about what it takes to make a successful startup venture. To visit Part 1: here To visit Part 2: here To visit Part 3: here How has OTT contributed to the success of your start-up? Michael Lee (Chairman & CEO of the Emory start-up Syntermed): By understanding that success does not end with the execution of an agreement, but rather that the execution of an agreement can produce success. Also through ancillary marketing and PR awareness that only the Emory brand and reach can command. Terence Walts (President & CEO of two Emory start-ups, Transfusion & Transplantation Technologies (“3Ti”) and Cambium Medical Technologies): By continuing to be very supportive and patient as well as continuing to serve as an extraordinarily important “co-partner and valued stakeholder” in these ventures. I continue to view OTT as an important part of our team. OTT is also excellent in getting the word out to the local entrepreneurial community on emerging Emory technologies,
Continue readingStart-ups: Words from the Trenches – Part 3
Each year OTT helps launch high-quality start-up companies based on discoveries made by Emory faculty or staff. Over the past few months, OTT set out to interview a selection of the entrepreneurs and VCs we have worked with and pick their brains about what it takes to make a successful startup venture. To visit Part 1: here To visit Part 2: here What was your biggest fear/apprehension going into starting your first company? Ed Cannon (President & CEO of the Emory start-up NovAb): Thirty years ago, when I started, the only “rule” was “there are no rules,” which allowed us to make up the rules as needed. My biggest fear and anxiety then was recruiting talented scientists as I knew the technology was well-developed and the commercial opportunities were obvious. My business partner’s biggest fear on the other hand was obtaining adequate financing for the company. We were fortunate on both counts as Boston was, and continues to be, overflowing with scientific and technical talent. Local venture groups were likewise flush with cash from successes and looking for the next “Big Thing.” In fact Boston, like the Bay Area, was rich with all of the infrastructure needed to support the
Continue readingStart-ups: Words from the Trenches – Part 2
Each year OTT helps launch high-quality start-up companies based on discoveries made by Emory faculty or staff. Over the past few months, OTT set out to interview a selection of the entrepreneurs and VCs we have worked with and pick their brains about what it takes to make a successful startup venture. To visit Part 1: here What do you recommend/what is a piece of advice for someone looking to start a company? Daniel White (President & CEO of the joint Emory/Georgia Tech start-up Clearside Biomedical): Take an honest assessment of who you are. What are the things that may hold you back. 1) Is it experience? (Investors will want someone who has done this before). 2) Does the intellectual property stand alone or are you only solving an incremental problem? 3) Are you requiring too much money to reach success? 4) Do you have enough and the right human capital supporting the project? (I have seen many a company fail because the president is too stingy with stock to bring in the right talent to get the job done.) As I look back at my career as an entrepreneur, there are four characteristics that I believe separate the people who
Continue readingStart-ups: Words from the Trenches – Part 1
Each year OTT helps launch high-quality start-up companies based on discoveries made by Emory faculty or staff. Over the past few months, OTT set out to interview a selection of the entrepreneurs and VCs we have worked with and pick their brains about what it takes to make a successful startup venture. What got you thinking about becoming an entrepreneur and starting/joining a start-up? Terence Walts (President & CEO of two Emory startups, Transfusion & Transplantation Technologies (“3Ti”) and Cambium Medical Technologies): I headed the department of New Business Development at CIBA Vision until 1998. During that time, I did due diligence on a very early stage start-up concerning refractive surgery in which CIBA ultimately invested $6 million. I got so excited about this start-up, its potential, and the opportunity to help create and build something new that for my last three years at CIBA, I got an agreement to vacate my business development responsibilities and work full-time with the management team of this start-up with plans to join them full-time after 1998. I took this risk because I believed in the technology, the founders, and the opportunity–and believed that my personal business development and market focus skills had uncovered
Continue readingFrom the Director: Academic & Industry Partnerships and Medical Devices
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
Continue readingPutting a Face on an Emory Tech Transfer Success Story
For those who don’t know, our office is very active in AUTM (Association of University Technology Managers), the leading organization for technology transfer professionals. In an effort to enhance public awareness of the benefits of technology transfer, this past fall AUTM started the “Put A Face On It” project. Casting a wide net, AUTM offered seed funding to universities for the creation of videos that featured the people who have benefited from university-developed innovations. Their goal is to emphasize the real-world impact and real-world connections between technology transfer professionals, their work, and its ability to transform people’s lives. Here at OTT we have the same goal of sharing stories about the impact our innovations and discoveries can have and how our technologies help people around us, even our very own inventors. We are proud to unveil here our first “Put a Face On It” video. It focuses on the Emory Cardiac Toolbox and how it helped Dr. Ernest Garcia. Keep your eyes peeled for the twist! View this new video here. Find additional success stories on our website here. To view other AUTM “Put A Face On It” vidoes look here.
Continue readingWhat do Those Extra Letters Mean? Professional Designations in Technology Transfer
Many members of our team carry additional letters behind their names, most being readily recognizable such as Ph.D., J.D., or M.B.A.; but what do the others you see mean, such as CLP and RTTP? Like many professions, these are certifications and designations attained by those in the technology transfer and licensing fields that are conferred and administered by the professional societies our team members participate in, namely, the Licensing Executive Society and the Alliance of Technology Transfer Professionals. For our field, these designations signify that a technology transfer professional has met a certain level of proficiency and experience; for our organization these designations add an additional level of credibility with those whom we do business, both externally and internally. Certified Licensing Professional (CLP) – Administered by the Licensing Executives Society, CLP distinguishes professionals who have demonstrated their experience, knowledge, and skill in the fields of licensing and commercialization of intellectual property. More than 900 individuals worldwide that work in the areas of patenting, marketing, valuation, IP law, negotiation, and intellectual asset management have earned the CLP credential. Candidates for the CLP designation must have at least 3 years of licensing experience, have a Bachelor’s degree, and pass a proficiency exam.
Continue readingInventorship: Who is an Inventor?
Inventorship could be the million dollar question. In a university setting where collaboration is common place – who is an inventor? Most scholars understand “authorship,” but this concept shouldn’t be confused with “inventorship.” Being listed as an author on a journal article discussing the invention does not automatically make one an inventor on the patent itself. As a general rule, an inventor is one who has substantially contributed to the “conception” of an invention. Whereas, someone working at the direction of another, using routine skill without making a substantial conceptual contribution, is not considered to be an inventor under U. S. patent law. Credentials, such as degrees or titles, do not play a role in whether someone is an inventor on a particular patent. Disputes regarding inventorship often arise when a person with involvement in testing or construction of the invention believes they should be named as an inventor. Whether that person should be named as a joint inventor is not simply a courtesy or straightforward yes/no decision, it is a fact-intensive inquiry based on conceptual contributions of the person to the invention. Two real world examples illustrating these points are provided below. In the first one, highly reputable scientists
Continue readingFrom the Director: Kauffman FastTrac Program
For two years now Emory has helped bring the Kauffman FastTrac® TechVenture™ program to Atlanta. During this 7 week program aspiring and current entrepreneurs learn about the nuts and bolts of running a business from other successful entrepreneurs. In this blog post we pick the brain of our Executive Director, Todd Sherer, on the importance of entrepreneurship, training our faculty, and why the program has been so successful. What was behind bringing this curriculum to Emory? There has been a lot of pressure during the global financial crisis for universities to do a better job of spinning out technology and creating not just companies, but jobs. We knew that in order to do this we would have to provide more formal training for faculty who are typically and traditionally trained to be research scientists, but don’t receive training to be an entrepreneur. We knew it was going to be critical to our success if we wanted to improve impact in the technology transfer space by providing more focused training around becoming a successful entrepreneur. What is your thought on the role of entrepreneurial training? I think the role of entrepreneurial training is critically important. Again, in a peer reviewed
Continue readingFrom the Director: Making Technology Transfer Stronger for the Future
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
Continue readingHow are Medical Device Patents Different?
A medical device is defined as an instrument, application, or implant that is used in the diagnosis or treatment of a disease or other medical condition. Medical device patents differ from patents on biologics or pharmaceutical products in that there is less need to establish the efficacy of the device, actually build a prototype, or provide supporting data. In many cases, once the inventor has thought of the idea and how it would be implemented, a patent application for a medical device can be pursued. When a new medical device is disclosed to the Office of Technology Transfer, our case managers analyze the potential market for the product, what development still needs to occur for the product to be commercially viable, and perform a preliminary prior art search. Subsequently, if the market and initial patent analyses suggest that the idea is commercially feasible, the Emory Patent Group will get involved to develop a patent strategy, perform additional prior art searches, and draft a patent application. From an intellectual property (IP) standpoint, there are different options to protect a medical device when compared to a biologic or small molecule therapeutic. For any of these products, a utility patent application that covers
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