ttt1017 technology transfer tactics · and benchmarking with overseas colleagues in the U.S. on Bruins reach number one in Milken ranking for start-ups UCLA credits environment, change

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In This Issueu Imperial College establishes two tiers

of support for academic inventors. Allinventors are not created equal, nor dothey all need the same level of supportfrom their institutions .................. p. 145

u UCLA credits environment, change inculture for driving start-up success.As economic development has gainedprominence in state government, it hasseen a parallel rise in importance for uni-versities and their TTOs, which arechurning out technology-based compa-nies. Indeed, start-ups are routinely tal-lied as one of the prime indicators ofcommercialization success ........ p. 145

u Old Dominion pulls in $41 million withrisky IPO strategy. What’s the secretbehind a university not necessarilyknown as a research powerhouse com-ing away with $41.6 million from a start-up going public? Being gutsy enough totake the money up front and risk a longdry spell in the future ................. p. 146

u Indiana schools will bundle their IP inlicensing deal with research institute.Four Indiana universities will make someof their innovations available to aresearch institute there so the institutecan commercialize them, then split theproceeds with the schools. The quartet --Ball State University, Indiana University,Purdue University, and the University ofNotre Dame -- signed a Memorandum ofUnderstanding with the IndianaBiosciences Research Institute inIndianapolis that sketches out the detailsof IBRI licensing each university’s “avail-able life sciences technologies at pre-defined terms” ............................ p. 147

u WSU spreads innovation culture witha dramatic shift in program focus. Itwas not that long ago -- 2016 in fact --that Washington State University sawthe launch of the EntrepreneurialFaculty Ambassadors (EFA) initiative, a peer-to-peer mentoring programdesigned to broaden faculty outreachand ultimately lead to more disclosuresand revenue. With a recent announce-ment, however, it has become clear the program will not only be significant-ly expanded, but that it will be guidedby a distinctly redefined shift in messaging ............................... p. 156

Founders Choice’ program allows more equity for experienced innovators

Imperial College establishestwo tiers of support for academic inventors

All inventors are not created equal, nor do they all needthe same level of support from their institutions. Recognitionof that reality was one of the driving forces behind the cre-ation of Founders Choice, a program recently launched byImperial Innovations and Imperial College London that offerstwo different levels of support for inventors based on theirpast experience and, accordingly, how much assistance theyrequire. The program allows the experienced founders whoopt for less support to keep significantly more equity in theircompanies.

The two-tiered program came about through two differ-ent, but simultaneous, developments. “One was discussionsand benchmarking with overseas colleagues in the U.S. on

Bruins reach number one in Milken ranking for start-ups

UCLA credits environment,change in culture for drivingstart-up success

As economic development has gained prominence in stategovernment, it has seen a parallel rise in importance for universi-ties and their TTOs, which are churning out technology-basedcompanies. Indeed, start-ups are routinely tallied as one of theprime indicators of commercialization success. While technologypowerhouses like the Massachusetts Institute of Technology (MIT)and Stanford University have long been recognized for theirprowess in this area, the University of California at Los Angeles(UCLA) has quietly claimed the top start-up score in the UniversityTechnology Transfer and Commercialization Index, a methodologyused by the Milken Institute to rank universities according to theirperformance across a range of technology transfer categories.

continued on page 148


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Old Dominion pulls in $41 million with risky IPO strategy

What’s the secret behind a university not neces-sarily known as a research powerhouse comingaway with $41.6 million from a start-up going pub-lic? Being gutsy enough to take the money up frontand risk a long dry spell in the future.

The $41.6 million total represents the value ofshares of stock transferred from Pulse Biosciences, apublicly traded company formed last year inCalifornia to pursue the discoveries made at OldDominion’s Frank Reidy Research Center forBioelectrics. It is the largest commercialization suc-cess in the university’s history and the largest totalfor a Virginia university in the past year.

The payout is the result of the university takinga different tack on commercialization than most --one that requires a leap of faith and a different wayof looking at TTO funding.

Old Dominion’s approach to commercializationis unique, says Khaled Abul-Hassan, PhD, MBA,CLP, director of innovations commercialization atOld Dominion. For starters, the university offers a50/50 royalty split to researchers, which Abul-Hassannotes is quite generous. A more typical split isaround 35/65.

“That is to encourage entrepreneurship and dis-closure,” he says. “We also have a faculty expeditedlicense agreement, which is used when faculty orstaff want to license their technology developed atODU. We take 5% dilutable equity and 2% nondi-lutable upon exit. The 5% could drop all the way toless than 0.5%, so what we keep in the end is 2% ofthe total exit value, and we und up sharing it 50/50with the inventor.”

For students, the university also has a significant

use IP ownership policy that only kicks in at the$10,000 mark, much higher than most universities,Abul-Hassan says. If the student research surpasses$10,000 of significant use of university resources, OldDominion has a student licensing agreement thatsays the university will take 1% royalty on saleswhen sales exceed $1 million.

“The combination of all of this makes us theonly university in Virginia that does this, and proba-bly the only one nationwide that has this combinedapproach to technology transfer,” Abul-Hassan says.

A valuation challenge

Old Dominion’s bioelectrics research focuses onpulsed power technology. Research includes work onlightning-quick nano-second bursts, lasting just bil-lionths of a second, which have been shown to killcancer cells and might stimulate an immuneresponse that prevents cancer from recurring. Otherresearch involves atrial fibrillation, medical imaging,bacterial decontamination of food, and the removalof diseased tissue.

Old Dominion’s approach to commercializationwas instrumental in reaching the $41.6 million resultfrom the IPO, Abul-Hassan says. Pulse Biosciencesapproached the university about licensing its portfo-lio of nanosecond pulse electrical field technology,which was originally developed for killing tumorcells but has many other applications. The universityhad been working on the portfolio for nearly 20years, incorporating some patents developed by orshared with Eastern Virginia Medical School.

Cancer is treated primarily with radiation andchemotherapy, and industry lobbyists representingboth modalities work in Washington to create barri-ers to entry of other technology that might be com-petitive, Abul-Hassan notes. Both radiation andchemotherapy have significant drawbacks, so there


October 2017 WWW.TECHTRANSFERCENTRAL.COM 147

Indiana schools will bundletheir IP in licensing dealwith research institute

Four Indiana universities will make some oftheir innovations available to a research institutethere so the institute can commercialize them,then split the proceeds with the schools. Thequartet -- Ball State University, IndianaUniversity, Purdue University, and the Universityof Notre Dame -- signed a Memorandum ofUnderstanding with the Indiana BiosciencesResearch Institute in Indianapolis that sketchesout the details of IBRI licensing each university’s“available life sciences technologies at pre-defined terms.” But the institute isn’t the ulti-mate licensee; it will relicense the technologies orspin them out to start-ups.

The first technologies IBRI wants involve massspectrometry and high-sensitivity detection for sin-gle-cell analysis, developed at PU, and microfluids,developed at Notre Dame, the institute reports. AndIU’s School of Medicine “is already closely collabo-rating with IBRI, as researchers in complementaryfields work to advance investigation in areas linkedto cardio-metabolic disease.” IBRI also emphasizesdiabetes and poor nutrition.

Combining IP

Christy Denault, the institute’s director ofexternal affairs and communications, says IBRI“functions almost like any other licensee of univer-sity technology; however, one difference is that [it]will not ultimately be the one to market a product,technology platform or service, but will insteadeither license the technology to an industrial part-ner or spin out the technology to a start-up entity.”The current terms in the MOU “are the same foreach university,” she adds, “and contain provi-sions for allocating proceeds among the participat-ing universities in the event multiple technologiesare combined.”

Indeed, IBRI says the document “will enablerapid access to available technologies that can becombined with its own research to create syner-gies and help commercialize technologies morequickly.” Each university chooses which life sci-ences technologies it will make available to IBRIunder the framework established by the MOU, theinstitute adds.

It will continue that way, Denault comments,“as long as the universities and IBRI find it to be anoverall fair and useful framework for furtheringdevelopment of technologies and creating value forthe parties and their respective stakeholders.” Sheadds: “This MOU encourages universities to proac-tively share available life sciences technologies forfurther development.”

On top of the MOU, IBRI “has entered, andseeks to continue entering, collaborative researchprojects with the universities where complementa-ry capabilities or synergies exist.” Denault notesthat “the parties are not disclosing the specificterms of the agreement, but the framework pro-vides a mechanism for sharing consideration withparticipating universities according to contributedtechnologies.”

Agreement streamlines licensing process

The first group of technologies IBRI is work-ing -- combining IP with a view to licensing --formed the basis for the original idea that led tothe MOU. “IBRI had multiple technologies inmind when we started down this path with theuniversities,” Denault confirms, “and we are inthe process of licensing those technologies utiliz-ing the terms of the MOU.” As IBRI continues to“identify its core competencies for further invest-ment,” she adds, it will “inform the universitieswhich technologies will be of interest in thefuture.”

The collaboration started with a simple inquiry.“A conversation about IBRI’s interest in licensingtechnology from Purdue and Notre Dame was thestarting point,” Denault reports. “The initial conver-sations led to an expanded concept and an effort tobring additional universities into one agreementwith IBRI.”

The MOU establishes an overall framework,but individual licenses will be required to transferspecific technologies. It “streamlines” the processfor licensing technologies from the universities --because “the time that would have been spent oncreating a financial model, debating the variousassumptions and negotiating a royalty rate, whichcan take several months, is eliminated,” Denaultexplains. “We’ll still have to negotiate an umbrellalicensing agreement. But with financial terms pre-defined, executing a license can be completed moreefficiently.” She adds that she doesn’t foresee majorproblems. “In signing the MOU, the universities



how they handle equity and licensing withstart-ups,” notes Tony Hickson, BSc, MBA,CLP, RTTP, managing director ofImperial Innovations. The U.S. uni-versities benchmarked, he says,included MIT, Stanford, Columbia,the University of Pennsylvania andCarnegie Mellon.

“At the same time as that, weformed over 150 spinouts and startedto see more second- and third-timearound serial entrepreneurs,”Hickson continues. “They said,‘Thanks for the help the first timearound, but this time we do not needso much -- we have a network of VCs,we can find new managers, and weneed a nice flexible, easy system towork on.’”

Hickson says Imperial learnedduring its benchmarking that theecosystems at universities like MITand Stanford “were unique even inthe USA,” and that while CarnegieMellon focused primarily on engi-neering, “we wanted all sectors, andalso a modular program, with differ-ent levels of equity for different mod-els of service.”

The only U.S. program close towhat Imperial ended up with, he con-tinues, was Penn, which also offerstwo levels of inventor support.“Michael [Poisel, Director of PCIVentures] very happily gave advice,”says Hickson. (More informationabout the PCI program can be foundin the sidebar on page 150.)

“We actually started out bybenchmarking ourselves,” addsSimon Hepworth, DPhil, director ofenterprise at Imperial CollegeLondon, who notes that Imperialmade site visits to MIT and Stanford.“It was also helpful for us to showprogress against government expecta-tions.”

“Then the Imperial College enter-prise team got together with theImperial Innovations venture supportunit and came up with the system,”

says Hickson. “We had lots of discussions oversix months. Faculty and academics were wellconsulted that this was coming; it was heavilytrialed and we took lots of soundings from aca-


Imperial College continued from p. 145

Figure 1 (part A)

Source: Imperial Innovations


demics as well.”“There were really some fine

revisions,” adds Hepworth. “We tookit on a road show to every single aca-demic department (there are 23), sowe have been pretty thorough.” Theprogram launched August 1.

Two options offered

The basic disclosure process atImperial remains the same, saysHickson. “We see between 300 and400 a year, and over time, we start tohave discussions about an appropri-ate route. From my experience, manyacademics that want a spinout oftenknow early on that’s what they wantto do. We encourage them to tell usup front and we can start to map outa route. In some cases there’s a readymade licensee and we move on.”

Those inventors interested inspinouts are offered the two options.“They can choose a high level to helpthem find financing and manage-ment, we will sit on the board of thecompany during the early years, anda whole series of different supportmechanisms [are provided],” saysHickson.

Experienced inventors who arecomfortable with less support can optfor the lower level of support, calledthe Founder-Driven route. The inven-tors find their own funding, as wellas their first launch customer.

Having established different lev-els of support leads to different levelsof equity, Hickson explains. “Quitecommonly in the UK we see a 50/50arrangement, but the reality is weoften create an option call for activefounders, typically more 60/40 or70/30,” he notes. “But if they electFounder-Driven, [only] a 5% to 10%equity stake goes to the university.We will apply a higher level for thera-peutics than software because theyneed to raise a lot of money.” In bothcases, he adds, a royalty-bearing

license is involved.To help faculty determine the route that’s


Figure 1 (part B)

Source: Imperial Innovations



best for them, Imperial Innovations created botha detailed comparison of services offered underthe two models (see Figure 1, page 148-149), aswell as a spreadsheet that allows the facultymember to plug in a variety of variables to seewhat happens to their equity both initially andover the course of three investment rounds. (Seespreadsheet and other support documents athttps://www.imperialinnovations.co.uk/venture-sup-port/founders-choice/.)

Can the academics make a choice, regard-less of their level of experience? “Yes,” saysHickson. “Part of the reason to do this was tomake sure experienced founders had the right

to less support, but it’s next to impossible to tellsome people they can have a choice and otherscan’t.”

There are, however, safeguards againstinexperienced inventors simply opting forFounder-Driven in order to gain a bigger pieceof the pie. “There’s a system we put in place tomake sure the IP is going to sustainable compa-nies; there’s a time period (six to 12 months) forthem to find money or a launch customer andshow their company is viable and solvent,” saysHickson. “Our primary goal is to ensure theyget to market. During that trial time, if they findinvestors or launch customers, and show usthey have them engaged, only then do we



The two-tiered approach to inventor support

recently launched at Imperial College London “is strik-

ingly similar to mine,” says Michael Poisel, director of

PCI Ventures at the University of Pennsylvania, which

is not surprising as Penn was one of the U.S. universi-

ties Imperial benchmarked with before designing their

program. It’s also not surprising that he supports the

model and Imperial’s efforts.

Penn has two main spinout programs. One, the

UPSTART program, is a full-service model. The sec-

ond, called UPADVISORS, a “do-it-yourself” model, “is

very similar to what Imperial College just launched,”

Poisel notes. In the fully hands-on model, since Penn is

a co-founder, the faculty founders get 51%. In the other

model founders receive 90%.

Penn’s patent policy creates some limitations for

the UPADVISORS tier. “Licensing companies can’t be

majority-owned by employees of the university, so the

90/10 model really only works when there’s already an

outside party involved, someone who takes part of the

90% -- an investor, or an unrelated co-founder,” Poisel

explains. “And because there is an outside third party

involved, they take up a lot of the heavy lifting we

would do in the hands-on model.”

UPSTART was launched eight years ago, and

UPADVISORS four. “We actually don’t have significant

demand for the UPADVISORS model -- we maybe start

10% of our companies that way -- but it’s important to

have it because it does occur, and faculty want to have

access to that kind of option, especially if they are

experienced or approached by an outside party. They

need a secondary option available,” says Poisel.

What if an inexperienced inventor sought the

UPADVISORS model? “Certainly we would dissuade

an inexperienced faculty member from going that route

unless they really had help -- and that is implicit in that

model,” Poisel responds.

Has the program accomplished what he had

hoped? “It has, but it’s still challenging,” he says. “We

still have faculty that underestimate how much we do

for them in the hands-on model and how hard it is to

get a company started without a great deal of support.

I’d say we have a much lower success rate in the 90/10

model; I think we do an amazing job for our other

model.”

This makes sense when you look at what Poisel

considers the two keys to start-up success. “One of the

keys is finding the right person to manage the busi-

ness,” he says. “We’ve taken that on in UPSTART and

left it to the founding team in UPADVISORS. The sec-

ond is initial funding; in UPSTART we help companies

apply for SBIR grants. In the other [model] we provide

some help but they are mainly on their own.”

Model may not work for all schools

Lesley Millar-Nicholson, director of the MIT

Technology Licensing Office, has her doubts about a

two-tiered model working for her university and many

others. “There is a risk of people comparing apples to

pears here,” she says. “Imperial College and Imperial

Innovations have a very different approach to begin

with, in the engagement of Imperial entrepreneurs and

assisting them in start-ups, to MIT, and I imagine to

many other tech transfer offices. For example, we [at

Two-tiered approach not right for all U.S. universities



engage a royalty-bearing license. During thattime we bear the cost of maintaining the IP.”

Hickson says the 12-month time line is a notset in stone, and Imperial will be flexibledepending on specific circumstances. “Forexample, if in 11 months they are in negotia-tions with a VC we will not just drop them,” hesays. “We want to go ahead.”

When the inventor opts for a higher level ofsupport, Hickson says Imperial will “work veryclosely all the time,” including regular weeklydialogue. With the Founder-Driven participants,“we ask them to report occasionally how theyare getting on.”

So far, he says, “The reception has beenvery encouraging.” He says there has been anoticeable uptick of interest in the academiccommunity. “The other test will be the responseof investors to the non-diluted provisions,” hepoints out. “It’s more common in the U.S. -- notso much here.”

Expectations for the program, saysHepworth, “are to create more impact overall.We want more academics to find time toprogress their discoveries. They are alreadyvery busy people, so we’re trying to reduce asmany barriers as possible.”

Contact Hepworth at +44 (0) 20 7594 9503;contact Hickson at [email protected]. u


MIT] do not dictate in any way what share of equity the

founding faculty or researchers might get in the start-up

company, because we are removed from the start-up.

We license into the startup, and the myriad of

resources at MIT may assist the start-up company in its

formation, and so forth. Any equity MIT receives in con-

sideration for the license is shared, as other revenue is

shared, with a portion going to inventors.”

(Editor’s Note: Imperial’s arrangement for techtransfer is unusual in that its TTO is a contracted thirdparty service provider. Imperial and Innovations havean exclusive arrangement whereby Innovations is thesole entity protecting and commercializing the College’sIP. Innovations itself is an Imperial spinout companythat later floated on the London Stock Exchange; thewider group has since rebranded to TouchstoneInnovations and focuses on early-stage technologycommercialization across the UK’s Golden Triangle.)

“That said, other universities have actually had

their tech transfer offices assume responsibility for

assisting in the creation of the startup, getting access to

SBIR/STTR funding, creating business plans, pitching

for proof of concept or other funding,” she continues.

“The extent to which these offices actually bake in a

predetermined sharing of equity of the start-up between

founding faculty and the university TTO I don’t know --

I’d be surprised if this was a model commonly used

here. I do think most TTOs keep the equity received as

consideration for the license distinct and separate from

any equity any other organization (or part of the univer-

sity) might receive as consideration for helping set up

the company and build it up.”

Millar-Nicholson is concerned, she says, that tying

these aspects together blurs the various roles and

responsibilities -- and increases the potential for (and

optics of) conflict of interest. “I am sure they have

thought of that and have appropriate mechanisms set

up to alleviate those issues,” she adds.

Overcoming challenges

Despite the clear challenges, Poisel says that

while Penn’s approach was similar to that of only one

or two other universities in the U.S. when it started, a

two-tiered approach is much more prevalent today.

“The challenge for universities is dedicating the

resources,” he says. “We are very fortunate that Penn

is very forward-thinking. I have a team working on this,

while at other universities you would have maybe one

or two people as your core. “

Another challenge, he continues, is the state of the

ecosystem. “Ours is much more developed to help the

start-ups, so the university does not have to get so

involved,” Poisel observes.

Conflict of interest, as noted by Millar-Nicholson, is

one of the other challenges. “I think you always have to

be cognizant of potential conflicts of interest,” says

Poisel. “We monitor it carefully; we are under the

umbrella of the TTO but we actually sit separately in an

incubator, and we try to keep some kind of invisible

barrier between us.”

Still, Millar-Nicholson remains unconvinced. “I am

a firm believer (until convinced otherwise) in tech trans-

fer offices sticking to tech transfer, and letting the

investment, management and technology development

occur in entities that have clear and distinct separation

from the core TT function,” she concludes.

Contact Millar-Nicholson at [email protected];contact Poisel at 215-573-8196 [email protected].

Two-tiered continued from p. 150


Primarily using AUTM licensing data, the indexis based on four-year averages with respect topatents granted, licenses issued, licensing incomeand start-ups. The figures are then normalizedaccording to research dollars received over fouryears. The findings and methodology are spelled outin Milken’s report: Concept to Commercialization: TheBest Universities for Technology Transfer.(http://www.milkeninstitute.org/publications/view/856).

Since Milken unveiled its first report using thisranking system in 2006, UCLA has substantiallyimproved its comparative standing overall, jumpingfrom 45th to 15th place. However, the school’s first-place ranking on start-ups prompted TTT to lookunder the hood to see how the school has trans-formed itself into an entrepreneurial powerhouse.

To be sure, UCLA has all the advantages ofbeing smack dab in the middle of one of the mostpopulous cities in the country. However, the Milkenreport also credits Chancellor Gene Block, whojoined the school in 2007, with re-engineering thecampus culture in a way that prizes commercializa-tion of the school’s rich reservoir of innovations.

Send a message

“When it starts from the chancellor, and hesends a message that we are here to build an entre-preneurial university, that [has an impact],” observesArie Belldegrun, a professor of urology who hasstarted three companies while at UCLA.

Belldegrun notes that back in the 1980s youwere either a scientist or a business person, so thefaculty that wanted to start companies would leavethe university. “At that time the culture was anti-companies … and a message like that has conse-quences,” he says.

However, Belldegrun, who has worked withseveral other UCLA professors on his companies,notes that these days, the school gives entrepreneur-ial faculty very little reason to leave. “UCLA hasenabled us to … continue to develop drugs andproducts and technologies which change the lives ofpatients with cancer, in my case,” he says. “And atthe same time, we are continuing to be professors atUCLA, and none of us looked at [our entrepreneurialsuccess] and thought, ‘here is an opportunity toleave and look for something different.’”

Furthermore, Belldegrun suggests that the busi-ness-friendly approach has enriched the school andthe educational experience for students. “All of us

are highly committed to UCLA. All of us are contin-uing to teach … and to provide access to [our] tech-nologies,” he says. “That is the kind of environmentthat UCLA incubates, so why leave?”

The dollars and cents have worked out well forall involved as well. Belldegrun’s first company,Agensys, was sold to a large pharmaceutical firm for$70 million; his second company, CougarBiotechnology, went for $1 billion; and it was recent-ly announced that his third company, Kite Pharma, isbeing acquired by Gilead Sciences for $12 billion.

While tenured professors still tend to be the fac-ulty engaged in entrepreneurial activities at UCLA,such activities are viewed favorably for purposes ofpromotion and tenure, explains Stephen Smale, aprofessor of microbiology, immunology and molecu-lar genetics, and the vice dean for research at theDavid Geffen School of Medicine. “UCLA has notmade any changes in its official tenure policies withrespect to this issue. However, there is a broadappreciation … of the scholarly value of entrepre-neurship and of its potential positive impacts onhealth and society,” he says. “Therefore, entrepre-neurship activities would be viewed positively bytenure review panels as long as they are pursued in away that is consistent with the university’s missionsof scholarship, teaching and service.”

Smale adds that there is no resistance tountenured faculty engaging in start-up creation “aslong as they have confidence that they can documentmajor accomplishments in the university’s missionsbefore the tenure decision needs to be made.”

Offer guidance, resources

Thomas Lipkin, the head of new ventures atUCLA’s Technology Development Group (TDG),credits much of the school’s start-up success to theentrepreneurial environment that surrounds UCLA.“The landscape here is unique. The faculty membersare imbued with this entrepreneurial spirit, andfrankly, a lot of them see start-ups as a viable com-mercial path to move their technologies from the labto market,” he says.

However, it helps to have abundant resources inplace so that faculty and students get the help theyneed to achieve a successful launch. For example,Lipkin works closely with licensing officers so thatwhen faculty members start thinking about a start-up company, they get connected to his group at anearly stage. “There are a lot of mistakes that facultycan make when they move to incorporate their own

UCLA continued from p. 145



companies and get tied up with entrepreneurs thatmight not be the best fit for the technology,” he says.“Our group can … steer them into the right path at avery formative stage.”

Amir Naiberg, the associate vice chancellor andCEO and president of the UCLA TechnologyDevelopment Corporation, notes that by having thenew ventures group under the same umbrella aslicensing, IP management and industry-sponsoredresearch, inventor-entrepreneurs get a full view of themany services that are at their disposal. “We also inter-act very frequently with other resources on campus,”he says. “The UCLA Anderson School of Managementhas a competition for business plans; we have numer-ous local incubators and accelerators; and we are look-ing to seamlessly work with all of these organizationsto give an additional edge or boost to start-ups.”

Further, UCLA’s Startup in a Box program(http://tdg.ucla.edu/ucla-startup-box) offers a suite ofdiscounted services geared specifically toward theneeds of someone thinking about starting a compa-ny, notes Lipkin. For instance, it includes connectionsto law firms, banks, human resource services, andinsurance companies, he says. “That can be helpfulto faculty members so that they can focus on the sci-ence,” he says. “It can help them build out their teamand not worry that they are going to incorporatetheir company inappropriately or find the wrongservice provider.”

The “Startup In a Box” concept is somethingUCLA borrowed from QB3, a collaboration of UCSanta Cruz, UC Berkeley and UC San Francisco(http://qb3.org/). “We worked with their programcoordinator at the time to learn some best practicesand receive some connections,” notes Lipkin.“There is an overlap in service providers [betweenthe two programs], although our program is moreLA-focused.”

Lower the barriers

The idea behind such programs and services isto lower the barriers as much as possible for inven-tors interested in going the start-up route. “Ourhypothesis is if we can de-risk our early-stage tech-nologies and add some market diligence, then wecan attract a higher caliber entrepreneur to start thecompany,” he explains. “To that end, we have theUCLA Innovation Fund, which we launched earlierthis year, that does just that. It provides proof-of-con-cept funds to de-risk technologies.”

While the fund is currently focused on life sci-ence innovations, Lipkin notes that there will soon besimilar funds for discoveries in other fields. “If we canovercome some of the early hurdles, and get feedbackfrom both industry and venture capitalists, then ourthinking is that [a discovery] will be a better candi-date for licensing or it will attract a higher caliberentrepreneur to package it into a start-up company.”

Such resources are not just open to faculty; stu-dents can take advantage as well. Brian McVerry,who recently received his PhD in chemistry, notesthat both UCLA and the National ScienceFoundation have allocated funds to push entrepre-neurship on campus. McVerry is a co-founder ofHydrophilix, a company focused on clean energytechnologies. “The university has many programsinternally that helped seed Hydrophilix, like thePhysical Sciences Entrepreneurship and InnovationFund,” he says. “Other programs have also beenlaunched recently like the UC Discovery programand the incubator at CNSi [California nanoSystemsInstitute at UCLA] to help students transition theirtechnologies to commercialization.”

Create synergy

In addition to creating its own entrepreneurialprogramming, the TDG works to create as much syn-ergy as possible between UCLA inventors and com-munity resources. “We have 80 different events opento the public -- so [there is] mixing of faculty mem-bers, students and the local entrepreneurial commu-nity,” notes Naiberg. “At these events connections aremade, and managers or entrepreneurs who are look-ing for projects can see projects and push them for-ward or take them on and open a new company.”

While the TDG does not prioritize start-up cre-ation over any other commercialization pathway, anumber of factors tend to nurture start-up connec-tions. “I think it is a combination of having an entre-preneurial faculty base, a large portfolio of technolo-gies and geography that make collaboration far, fareasier and far better,” observes Lipkin. “We have avery small footprint from a campus perspective, buta huge population.”

Further, a major metropolitan hospital is adjacentto UCLA’s life sciences core. “Interdisciplinary collab-orations happen more easily here just organicallythrough collision events than perhaps they do at uni-versities where the medical school is geographicallyseparated from the main campus,” suggests Lipkin.

Naiberg adds that the investment community is




close at hand as well. “We are right in between SanDiego and San Francisco,” he says. “These two areasare densely populated with investors, so it is relativelyeasy for our spinout companies to reach out to thosecommunities, in addition to the local LA investor com-munity, and find resources to grow their businesses.”

Accept some risk

What can other universities and TTOs learn fromUCLA’s entrepreneurial success? Lipkin’s advice is toget off campus as much as possible. “It is really acommunity effort, so if the investors are in the BayArea or in Boston, you go to where the investors areand build relationships to the point where you canpick up the phone and talk to them,” he says. “Thesame goes with industry. You need to be very proac-tive in finding the correct contacts with industry that,in essence, can be the champion for whatever technol-ogy you are trying to get in front of them.”

McVerry recommends allocating resources forbusiness plan competitions and classes for entrepre-neurship as well as funding for other entrepreneurialendeavors. “Fifty to a hundred thousand dollars

given to a good business plan is not enough to start acompany, and in most cases students don’t have thenetworks to find that next round of funding,” hesays. “Universities should use their name recognitionto connect students to university alumni/donors andbring in angel and venture capitalist firms. This willgreatly help de-risk the idea of launching a start-upas a student instead of taking a job in industry.”

While it is always good to learn from the experi-ences of others, Naiberg’s advice is not to take thisapproach too far. “Don’t copy and paste somethingthat worked somewhere else, because each ecosys-tem is unique and has its own challenges,” he says.“Build programs that are suitable to your own uni-versity and area.”

Universities interested in spinning out morehigh-tech start-ups need to take some risks, observesBelldegrun. “Just like anything in business, it is highrisk, high gain or no risk and no gain,” he says.“What makes a difference is how much risk you arewilling to take, because at the end of the day this canbe a very lucrative business for the university.”

Contact Belldegrun at [email protected];Lipkin at [email protected]; McVerry at [email protected]; Naiberg at [email protected]; andSmale at [email protected]. u


is a need for an alternative that is effective in killingtumors without major side effects.

Although Pulse Biosciences expressed interest inthe portfolio, he says, the potential pushback fromthe radiation and chemotherapy industries injected agreat deal of uncertainty about how a start-up com-pany would fare after launch.

Negotiations focused on challenges such as val-uation, the number of shares to issue, and the totalamount of equity that would be provided to OldDominion in the final license.

“The valuation model was not common, andbecause there were no sales we didn’t know howmuch it was worth or what the other competingtechnologies would do if this went to market,” hesays. “There was so much risk involved, and thecompany had to go raise money to address that risk.Coming up with a fair value was challenging.”

Theoretically the university could have estimat-ed that the company would take a certain marketshare from radiotherapy and chemotherapy andshow steady growth for years -- a typical model forlooking at a business life cycle, Abul-Hassan says.

Rather than such a speculative approach, headds, universities generally prefer to take a moretiered, de-risking approach involving up-fronts, min-imal annuals, milestones, and royalties.

“Typically, you come up with discount rateswhile you de-risk the project; otherwise, the higherthe risks, the lower the valuation. However, in thiscase, the uncertainties with estimation, firm-specificfactors, and macroeconomic conditions were multiple,large, and mainly futuristic,” Abul-Hassan explains.“Therefore, we initially suggested valuation modelscapable of accommodating wide types and ranges ofuncertainties, e.g., Monte-Carlo simulations on dis-counted cash flow models or real-options on decisiontrees, at the time of negotiations. The licensee, howev-er, preferred a trader-valuation approach. Finally, theuniversity thought that investor-based valuations maynot result in acquiring highest value in comparisonwith trader-valuations, especially considering that thelicensee was interested in an IPO from the get go.”

Ultimately, “it all boils down to negotiations,”he says. “Initially the shares for the university tocompensate for licensed patents started about 34%and we came to an agreement that helped us live


Old Dominion continued from p. 146


have indicated their willingness to work collabora-tively with IBRI to get technologies further devel-oped,” she says, “which has the potential to benefitthe institutions.”

Bundling IP brings more opportunity

Denault says the more important aspect is that“getting these technologies into the hands of indus-try partners or start-up entities will provide a boostto the economy, which benefits our mutual stake-holders in the state of Indiana.”

The individual school technology developmentofficials deferred to IBRI in responding to requestsfor comment on the arrangement. But it seemedclear from their public statements that they see

value in bundling their IP for better licensing andstart-up opportunities.

Rainer Fischer, IBRI’s chief scientific and inno-vation officer and incoming CEO, is said in a state-ment: “With this arrangement, IBRI will be able tounlock the value of discoveries being made at thestate’s top research universities by bringing [them]quicker to market.”

Added Notre Dame’s Vice President ofInnovation, Bryan Ritchie, “in this new environ-ment, the potential for larger, faster and moreimpactful commercialization outcomes is nowmuch greater than it has ever been.”

Bill Stephan, vice president for engagement atIU, predicted that the MOU will allow the schoolsto “more rapidly move innovations to market,”while Dan Hasler, chief entrepreneurial officer at


with sharing the risks and rewards of uncertainties.” The university also had to factor in the fact that

some patents were jointly owned with EVMS, andtwo core patents were already licensed to a separatecompany.

“It wasn’t easy. It took something like a year anda half going back and forth to determine how muchof a percentage the university should share,” Abul-Hassan says.

Metrics get skewed

He points out that this approach might not meshwell with the goal of many tech transfer programs tokeep a steady supply of revenue coming in the future.

“Universities are keen on keeping a steady rev-enue stream over a very long period of time. TTOsneed to prove their performance, and that is reflectedin how much money they make annually,” he says.“If you have a deal where you essentially got paid alarge lump sum early on, it will be hard for a techtransfer office to ensure there is money coming in[future] years to show a steady performance.Moreover, that value is in a volitile stock. If youdecide to monetize a drug when it goes to marketand get all the revenue today, the university couldtake that money and put it in whatever activity theywant and then next year the revenue could drop likea stone.”

For that reason, to make a lump sum paymentwork for the TTO, the university needs a holistic

approach to commercialization that includes buy-infrom upper management, Abul-Hassan says.

“Everyone needs to understand that if we cashout our stock early, we risk having no revenue forthe next 10 or 20 years,” he says. “It’s like when youhave a patented drug on the market and it comes tothe end of its patent life. The university may have toto scramble to find creative ways to bring back thatrevenue.”

Many universities would not be willing to beton the lump sum stock up front being a better dealthan the revenue extended over many years, he says.

“I’m not sure how many universities wouldbuy into this model because it requires an under-standing from the upper management about thepotential risks and how this will affect yearly rev-enue,” he says. “I could see some smaller TTOsdoing it, but it will be a hard sell for big universitiesthat have huge budgets and need huge revenuecoming in.”

Getting buy-in from the right stakeholders canbe challenging, Abul-Hassan says. Some might readi-ly agree. The president of the university is not goingto say no to an immediate payment of $30 million or$40 million, and the faculty would rather get theirmoney up front than waiting over the next 20 years.

“The problem is going to come from the TTOitself,” Abul-Hassan says, noting that it’s the TTO’smetrics that would likely face a major hit in futureyears. “How do you get them to do it? That’s a realproblem, because I haven’t seen a single TTO thatwould like something like this.”

Contact Abul-Hassan at 757-683-5052. u

Old Dominion continued from p. 154

Licensing deal continued from p. 147


Purdue Research Foundation, said the deal “sets thegroundwork for stronger research and tech transfercollaboration among Indiana universities.” Haslerstated later in response to ISRM’s request for com-ment: “Leaders of Indiana-based universities agreethat joining forces to make Indiana-born technolo-gies available for advancement through IBRI bene-fits everyone.”

Choosing technologies under MOU

According to Dehault, “the universities choosewhich technologies to make available” for commer-cialization through IBRI. Each of the universityTTOs, Denault says, is “aware of IBRI’s interestswithin life sciences, which will help inform whichtechnologies may be of interest. As we work togeth-er through research collaborations, the knowledge

base and awareness for licensing technologiesshould be enhanced.”

The schools themselves aren’t commenting onhow they choose which technologies to let anotherentity commercialize for them.

Denault says the model “could be replicated byother schools with a research institute like IBRI orwith other stakeholders in their region.” It helps,she adds, if there’s “a common goal, such as eco-nomic benefit for residents.”

It does not require a lot of staff, she notes, butshe emphasizes that “you need to have executivechampions who keep the big picture in mind andfully support such activities.” This deal, she says,“is an example of one of the creative and innovativeways we are working to speed discovery and inno-vation to get products to patients as quickly as pos-sible and to create added economic value.”

Contact Denault at 317-417-6322 or [email protected]. u

Licensing deal continued from p. 155

WSU spreads innovationculture with a dramaticshift in program focus

It was not that long ago -- 2016 in fact --that Washington State University saw thelaunch of the Entrepreneurial FacultyAmbassadors (EFA) initiative, a peer-to-peermentoring program designed to broaden facultyoutreach and ultimately lead to more disclo-sures and revenue (See TTT February 2016).With a recent announcement, however, it hasbecome clear the program will not only be sig-nificantly expanded, but that it will be guidedby a distinctly redefined shift in messaging.That new theme, put simply, is that “everyone isan entrepreneur.”

“As we were forming the group we startedour effort to go around campus to socialize andexpand it, but as we did that in the early stageswe kept running across ‘horror stories’ of facul-ty members hitting roadblocks and resisting,”recalls Brian Kraft, program manager for EFAand director of innovation and industrialresearch engagement for the Office of Research.“Sometimes it was personality, sometimesadministrative, sometimes a lack of clarity onwhat to do” to engage with innovation

resources, he notes. “Our systems were eithernot communicated well or outlined well, includ-ing what we should do as an institution” to sup-port faculty innovators.

As a land grant institution, he continues,WSU “does really well when we’re under exten-sion, but when it gets to areas where dollarsmay come in it’s a bit scary for the university,and people are reluctant to engage.”

As a product of this challenge, Kraft notes,the group started to reach out to universityleaders. “This led to an external review of oursystems for innovation and entrepreneurship,”he says. The body created for that review, calledERIE (External Review of Innovation andEntrepreneurship), was led by Glenn D.Prestwich, PhD, President’s DistinguishedVisiting Professor at Washington StateUniversity-Health Sciences Spokane, who ledthe launch of EFA after successfully implement-ing a similar program at the University of Utah.In addition, there were several participants fromother universities. The review committee “was amixture of administration and faculty memberswith successful spinouts, with administratorsboth on the programmatic and regulatorysides,” Kraft explains.

As part of the review process, a surveyseeking feedback on innovation and entrepre-



neurship at the university was also distributedto “pretty much everyone who was research-active,” says Kraft. He reports there were about650 respondents, which represented an impres-sive 35% response rate. “There clearly was inter-est on campus,” he comments.

The review process culminated with “twodays of on-campus meetings involving 120 or sopeople at all levels -- from the front lines of theTTO all the way up to the President.” Thisresulted in a report that came out last spring.

Survey points the way

It was the survey responses, in fact, whichled to the EFA program’s shift in focus, notesPrestwich, and a change in emphasis that wentbeyond the EFA to the entire culture aroundinnovation. “One of the key things that cameout of the survey was, ‘This does not apply tome; I am not an entrepreneur,’” he notes. “Wereframed the concept: Entrepreneurship is virtu-ally everyone,” he continues. “Everyone on cam-pus has to organize, design and create their ownprograms if they’re going to succeed fromscratch, figure how to fund it, be in charge ofmanaging it, and maintaining focus amidst thechaos of everyday life -- whether it’s a studentwith five classes a day or faculty with grants towrite and people at the lab who have problems.And they have to deal with communicationacross all sorts of audiences -- tax attorneys orgrant committees -- across disciplines very fre-quently, and they have to rebound from nega-tive criticism whether to a grant proposal or apaper that’s been turned down or a companyabout to fail.”

In the midst of all this chaos and nega-tivism, Prestwich observes, the “entrepreneur”needs to maintain optimism and passion,remain motivated and motivate those aroundthem. “Basically, it’s a way of thinking and act-ing at a university -- especially at a land grant,where the mission is to make a difference,” heexplains.

“When you’re starting a business you’reexploiting a gap in the market,” adds Kraft. “Anacademic, on the other hand, addresses gaps inknowledge. Their return is slightly different, butthe way they operate intrinsically is entrepre-neurial; it’s really a natural fit.”

“This is exactly what I had to fall back ontowhen I had to become acting CEO of my compa-ny,” says Amit Dhingra, PhD, associate profes-sor in the Department of Horticulture, who hasreplaced Prestwich as head of the EFA group. “Ihad no experience; the only thing I could fallback on was how I do my program -- and it wasclear to me that you can fall back onto thatinformation.”

The response to this new approach made itclear the group was on the right track. “Once wereframed the message, it became “Let’s make adifference in peoples’ lives and in our landgrant mission,” Prestwich shares. “All of a sud-den it became a rallying cry.” As a Utah col-league said, “We’re not here to make money, butto make a difference.”

“As we worked to implement the recom-mendations we met almost no resistance,” saysKraft. “The focus is on being faculty-friendly; itfeels like it’s working on all cylinders.”

The ERIE recommendations for areas need-ing improvement ended up echoing the survey’sresponses virtually point by point. The key rec-ommendations were:

• Clarify, communicate, and support themission

• Develop incentives for faculty• Tighten the focus of the Office of

Commercialization• Overhaul the COI process• Build on innovation and entrepreneurship

momentum at WSU-Spokane to engage acrossthe state

(To view the entire report, go tohttps://research.wsu.edu/office-research/report/innovation-and-entrepreneurship-review/.)

A focus on incentives

“A lot of the review focused around incen-tive structures -- what is it that we reward, andcommunicating what we value to the institu-tion,” says Kraft. “Grants and papers were allwe did historically.”

“We also realized, thanks to Glenn, that youget what you reward at an institution; that’swhere these recommendations came from,”notes Dhingra.

“One of the things that popped out in thesurvey was that the primary motivation peoplehad for disclosure really had to do with wanting

WSU continued from p. 156



to make it available for the public,” adds Kraft.“One of the lowest was that they wanted tomake money. The incentive structure of a gener-ic university is income off royalty; the surveydata told us that’s the last thing they wantedmoving forward.”

“We’re also trying for a cultural change,”says Dhingra, noting that the EFA being raisedto the presidential task force level underscoresthat effort.

“Raising the stature of EFA also creates afocal point on these broader institutionalefforts,” says Kraft.

Implementing recommendations

The report was issued in February. “Sincethen,” says Kraft, “we’ve pretty much executedthe recommendations of ERIE.” For example, agroup of entrepreneurial faculty organized byKraft has come up with recommendations onhow to develop the incentive structures.

“These incentives could range from sabbati-cal policy to new definitions around tenure andpromotion,” says Kraft. Already, he says, a fac-ulty award for innovation and entrepreneurshiphas moved through the Provost’s office. The“Amazon Catalyst” program, an ongoing jointeffort with Amazon, is offering up to $100,000 inseed money; it is open to all current students,faculty and staff at all campuses.

Increased communication efforts are alsoongoing. A flier describing the various optionsfor those interested in entrepreneurial effortsreflects the new program theme, posing the fol-lowing questions: “Do you want to CreateChange? Improve the World? Make aDifference?” (See Figure 1.)

“Just being about commercialization willnot work; it’s almost a bad word,” Kraft asserts.“We want to clarify what we mean and alsocommunicate it more consistently. I’m workingwith the Vice President for Communication andthe President’s office on messaging aroundthis.”

Work has also begun on a speaker seriesfocused on innovation. “We’re asking eachdepartment for speakers on what innovationmeans for their area,” Kraft explains. “We haveChemistry and English coming up.” The presen-tations, he explains, will offer concrete examples

of an entrepreneur from that specific discipline.“We’ll take that activity and couple it with din-ners -- and discuss faculty incentives relevant tothat department,” he adds.

“There will be similar forums for COI poli-cies; we’ve streamlined some processes,” addsKraft. “And the reformed population of thecommittee [will] include more faculty who areentrepreneurial.”

Kraft has also developed a constellation ofstudent groups involved in entrepreneurship in adifferent way. “There will be a series of teamingevents this fall to get graduate students with busi-ness students in a business plan competition,” heexplains. “We’re developing more routes to small[amounts of] money for the kids.”

That effort is reaching into academic areasthat are not typically technology or entrepre-neurially focused, Kraft notes. “We’ve had peo-ple from Fine Arts and English wanting to get



Figure 1

Source: Washington State University Innovation and Industrial ResearchEngagement Office of Research


involved. In a meeting yesterday we also hadDesign and Architecture.”

“Students are the young ones with passion,and time to make something of themselves,”says Prestwich. “They have a high risk toler-ance; faculty have a much lower risk profile,”making them more difficult to engage with oninnovation concepts. “Consistent with that, weneeded both grass roots involved faculty asmentors, but also a top-down mandate from thePresident saying ‘I want this to happen.’ Thistwo-pronged support is essential.”

The ERIE recommendations also push for abit of evangelism from WSU’s most active inno-vation arena -- the Spokane medical school cam-pus -- which Prestwich sees hopes will supportthe other campuses in a “hub and spoke”model. “Spokane has a medical school comingon line, and they’re building it out with the con-cept that it has an economic development man-date,” he comments. “There has been all kindsof energy and enthusiasm, so why not makeSpokane our prototype?”

The school’s dean, he adds, has hired twoassociate deans -- one for commercialization andone for economic development. “He is alreadywriting a 10-year plan that includes entrepre-neurship as part of tenure and promotion,” saysPrestwich. “They’ve started an incubator with afocus on med-tech, with 20 companies and $500million in funding…. We have the right peopleon board, and the right people atthe top makes all the differencein the world.”

A broad vision

Looking to the future,Dhingra has several goals. “WhenI took on the role as chair I tookfrom Glenn the role of developingan internal ecosystem for culturalchange, but we also need to con-tinue a recent emphasis on tryingto do more innovation across thestate -- bridging the internal andthe external,” he says. “Plus, weneed to expand the EFA groupand peer-to-peer contact. We havegrants to go to the different cam-puses and meet [with faculty].”

Cultural change, he notes, “will not happenthrough e-mail -- you must have face to facecontact.” Dhingra adds that he wants EFA toreach out informally as well as formally,addressing “how people can learn to not beafraid of thinking in a new direction.”

“We want to make it normal and natural foracademics of any discipline to have a pathway toseeing public benefit for their work,” adds Kraft.

What can other TTOs learn from the EFAexperience? “You need to have a way for effec-tive communication with leadership,” saysKraft. “People on the ground are the best to tellyou what’s working and what is not, but youneed leadership to buy in.”

Prestwich says some institutions struggle dueto policy issues, or even legal constraints, but hestresses that the one factor they can help changeis the culture and the attitude toward innovation.

“Basically other universities are constrainedboth legally and by the policies in the institution-- and by attitude,” Prestwich says. “We man-aged to change Utah and WSU because wesocialized the messaging component; that’s ahard thing for every school to embrace. Somewant to make [innovation and entrepreneur-ship] elite; they are almost doomed to failure.You need it to be ecumenical -- that’s what istransformational.”

Contact Dhingra at 509-335-3625 or [email protected]; Kraft at 509-335-3959 [email protected]; and Prestwich at 509-335-5526 [email protected]. u


License to Laugh

“We’ve decided to rebrand the Technology Transfer Office. We’re now theOffice of Technology Licensing and Commercialization, Venture Creation,

Industry Liaison, Economic Development and Societal Impact.”


Editorial Advisory BoardDr. Marc DonohueAssociate Dean For ResearchDirector, Advanced Technology

LaboratoryWhiting School of EngineeringJohns Hopkins University

Dr. Pat FrainPast Chair of the Board, PROTON EuropePast Chair, Association for University

Research and Industry Links (AURIL)Past Director, Nova UCDUniversity College Dublin

Ronald L. GrudzieckiPast President, Licensing Executives

Society InternationalPartner; Drinker Biddle & ReathWashington, DC

Prof. Nicos NicolaAssistant DirectorWalter and Eliza Hall Institute of Medical

ResearchMelbourne, Australia

Dr. Donald SiegelPresident, Technology Transfer SocietyProfessor and DeanSchool of BusinessUniversity at Albany, SUNYAlbany, NY

Dr. Robert L. TaberVice ChancellorCorporate and Venture DevelopmentDuke University Medical Center

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