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Benefits of Technology Transfer Versus Company IP

Presented by:

Michael J. Dailey, Principal

Next Level Performance Consulting LLC

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Research Funding Background

In 2002 the Economist called the Bayh/Dole Act of 1980

“. . . possibly the most inspired piece of Legislation to be enacted in America over the past half-century”

US Government spent $405 billion in 2011 - 40% of total global spending

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Research Funding Background

Bayh- Dole Act of 1980

Changed the rules for ownership of inventions made with federal funding

Encouraged licensing of Government Owned Inventions

Stephenson-Wydler Innovation Act of 1980 & Federal Technology Transfer Act of 1986

require federal laboratories to actively engage in the technology transfer process

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Extramural Research *

* FY-2013 NIH Fiscal Policy for Grant Awards

• Engine for Research and Innovation

• Over 80% of the NIH budget

• 2013 Annual Budget: $29 billion

•Over 50,000 awards annually• 325,000 extramural researchers (mostly universities)• Over 3,000 research organizations

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NIH Licensing *

• $ 7 billion in product sales

• $ 116 million in royalties collected

• 576 invention disclosures

• 312 licenses executed

• 79% of royalties on drugs and biologics

* FY-2013 Annual Report NIH Office of Technology Transfer

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How Tech Transfer Works

Federal/Academic researchers collaborate with private companies under specific contracts called CRADAs

Upon conclusion of project, private company Licenses IP from Federal Lab/Academic institution

Private company commercializes technology (sells product) and pays royalties to Federal Lab/Academic Institution

RESEARCH

LICENSE

SELL

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Advantages For Tech Transfer• CRADA provides additional resources from Federal

Labs/Academic Institution with unique capabilities

• Cost of IP is typically paid up front by Federal Lab/Academic Institution providing Company favorable repayment terms

• Collaborator (Private Company) has first rights in licensing

• Bestows instant marketplace credibility to new invention because of Federal Lab/Academic Institution’s reputation

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Example Tech Transfer Successes

Product Company Use

FluMist® MedImmune Influenza vaccine

Havrix® GlaxoSmithKline Vaccine against hepatitis A

Taxol® Bristol-Myers Squibb Treatment of solid tumors and Kaposi’s cancer

Taxus® Express Boston Scientific Treatment of coronary artery disease (drug-eluting stent)

Thyrogen® Genzyme Therapeutics Adjunct to thyroid cancer treatment

Velcade® Millennium Pharmaceuticals Inc.

Treatment of multiple melanoma

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Thank You

Michael J. Dailey, Principal

Mike.Dailey@NLPCLLC.com(301) 788-0201