Technology Transfer and
Intellectual Property Services
2005
Annual Report
The UCSD Technology Transfer Advisory Committee ( TTAC)
is responsible for general oversight of the UCSD Technology
Transfer Program. This standing committee is appointed
by the chancellor and is chaired by the vice chancellor of
Research. It meets periodically to assess UCSD technology
transfer policy and guide the direction of the overall program.
COMMITTEE MEMBERS (FY2005)
RICHARD ATTIYEH (Chair )
Vice Chancellor, Research
ROGER BOHN
Professor, International Relations and Pacific Studies
MAARTEN CHRISPEELS
Professor, Division of Biological Sciences
FRED CUTLER
Executive Director, UCSD CONNECT
LINDA DALE
Director, Office of Contract and Grant Administration
GARY FIRESTEIN
Professor, Medicine
TOM JACKIEWICZ
Chief of Staff, School of Medicine
WILLIAM KUPERMAN
Professor, Scripps Institution of Oceanography,
Marine Physical Laboratory
JOE BEAR
Executive Director, William J. von Liebig Center,
Jacobs School of Engineering
LAWRENCE MILSTEIN
Professor, Electrical and Computer Engineering
ALAN PAAU (Secretary)
Assistant Vice Chancellor,
Technology Transfer and Intellectual Property Services
GEERT SCHMID-SCHOENBEIN
Professor, Bioengineering
ROBERT SULLIVAN
Dean, Rady School of Management
JOHN WOODS
Vice Chancellor, Resource Management and Planning
Technology Transfer and
Intellectual Property Services
2005 Annual Report
4
Top Five UCSD Innovations
6
Spotlight Start-ups
8
FY2005 Start-ups
12
Community Outreach
14
Results
15
Financials
16
Appendix
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Message from Technology Transfer
and Intellectual Property Services
I am delighted to share with you the FY2005
activities of the UC San Diego Technology
Transfer and Intellectual Property Services
(TechTIPS). The campus reached all-time
highs in several significant areas: 334
disclosures of invention and copyright work
by UCSD researchers; 71 executed licenses
granting industry partners intellectual property rights to develop UCSD innovations;
60 patents issued by the United States
Patent and Trademark Office to protect
novel UCSD inventions; and gross revenues
of over $21 million. They reflected well on
the excellent research of our academic
programs at UCSD and the relationship we
have built with industry through the years.
In the second half of FY2005, UCSD also
began a concerted effort with the UC
systemwide Office of Technology Transfer to
complete the “decentralization” of invention
management started by the UC Office of
the President. By the end of FY2006, the
UCSD campus office will be fully responsible
for the management of all UCSD inventions.
We hope by consolidating the management
responsibility, we can provide more consistent, uniform, and timely services to our researchers and our industry partners. Please
read more about this subject on page 7.
basis of fifteen new businesses formed in
FY2005, some of which are highlighted on
pages 8–10. UCSD innovations continue to
gain market success. In FY2005, five of the
Top 25 revenue-generating innovations from
the entire UC system came from UCSD.
Please read more about them on page 4.
We were again busy promoting UCSD and
UCSD innovations both at home and far
away. We hosted many visitors who came
to UCSD to study our technology transfer program and to exchange technology
management and economic development
ideas. We welcomed and took advantage of
the opportunities to learn from each other.
Please read more about our outreach and
partnering activities starting on page 12.
I hope you find this report informative. If you
have questions or suggestions for future reports, please do not hesitate to contact us.
UCSD TechTIPS welcomes your input.
The entrepreneurial spirit was rekindled at
UCSD as the economy slowly recovered
from the technology “nuclear winter” of
2002–2003. UCSD innovations were the
Alan S. Paau, M.B.A., Ph.D.
Assistant Vice Chancellor
Technology Transfer and Intellectual Property Services
TECHTIPS UC SAN DIEGO ANNUAL REPORT Five UCSD Innovations Among the UC Top 25
In FY2005, five UCSD innovations made their way to the UC Top 25 list of
revenue-generating inventions. Their presence reflected well on UCSD and
included repeat honorees ELMIRON®, a therapeutic for interstitial cystitis;
Ultravist® and Isovist®, two radiographic contrasting media for medical
imaging; and the firefly Luciferase Assay System®, a ubiquitous life-science
research tool. The two new honorees included Amplicor ® and Ampliscreen®,
for the diagnosis and detection of human cytomegalovirus; and Erbutix®, a
biopharmaceutical for the treatment of colorectal and head and neck cancer.
INVENT.UCSD.EDU
ELMIRON®
ELMIRON (pentosan polysulfate) is indicated
for the relief of bladder pain or discomfort
associated with interstitial cystitis. It was
the first and only oral medication approved
by the U.S. Food and Drug Administration
(FDA) for the treatment of interstitial cystitis,
also known as painful bladder syndrome.
Interstitial cystitis patients struggle with
symptoms of urinary frequency, urgency,
pressure, and/or pain, as well as nocturia
(frequent urination at night), dyspareunia
(painful intercourse), pain, and/or discomfort
while sitting in a car, while driving, and/or
traveling. ELMIRON is sold by Ortho McNeil,
a subsidiary of Johnson & Johnson, and
resulted from pioneering work at UCSD by
Professor C. Lowell Parsons (Surgery).
be achieved over the competing chloramphenicol acetyltransferase (CAT) assay.
This reagent generates light that is nearly
constant for at least one minute and is
compatible with measuring firefly luciferase
in a single-tube luminometer or in a multiwell
plate luminometer with an auto-injector. In
molecular biology, a reporter gene is a gene
that researchers attach to another gene of
interest in cell cultures, animals, or plants.
Luciferase gene expression, because of its
light-emitting reaction with luciferin, is easily
identified and measured. The Luciferase
Assay System line of products is sold by
Promega Corporation. Other products,
using this same cloned gene that resulted
from work by Professors Donald Helinski
and Marlene Deluca McElroy (Biological Sciences) at UCSD, are currently sold by other
companies.
Ultravist® and Isovist®
Ultravist (iopromide) and Isovist (iotrolan,
a dimer of triiodinated isophthalic acid
derivatives) are two commercial radiographic contrasting agents. Isovist is useful
in imaging spaces surrounding the central
nervous system, such as the ventricles,
after injection into the cerebrospinal fluid. It
can also be used to image joint spaces and
in endoscopic retrograde cholangiopancreatography. Ultravist is a nonionic, iodinated,
low osmolar, injectable radiological contrast agent for intravascular administration.
Ultravist is being used today in over 100
countries worldwide with clinical experience
in over 100 million patients. Sales for Ultravist were over 248 million Euros in 2005, and
it is sold by Berlex, a subsidiary of Schering
Ag. These contrasting agents resulted
from work by former UCSD researchers
Drs. Milos Sovak and Ramachandran
Ranganathan.
The Luciferase Assay System®
The Luciferase Assay System is an extremely sensitive and rapid research tool for
quantization of firefly luciferase that catalyzes a reaction with the substrate, luciferin,
in the presence of ATP to produce light as a
reporter gene. Linear results are seen over
at least eight orders of magnitude of enzyme
concentration, and patented technology
incorporated in the formulation has allowed
for less than 10–20 moles of luciferase to
be measured under optimal conditions.
Generally, 100-fold greater sensitivity can
The Human CMV Monitoring Kit
The human CMV monitoring kit is a diagnostic tool that resulted from work by Professor
Deborah Spector (Cellular and Molecular
Medicine) at UCSD and is widely used to
test blood and blood products for the presence of human cytomegalovirus, or hCMV.
hCMV is a common virus that infects many
people worldwide. An hCMV infection is
usually harmless and rarely causes illness. A
healthy immune system can hold the virus in
check. However, if a person's immune system is seriously weakened in any way, the
virus can become active and cause hCMV
diseases. Cytomegalovirus is a member of
the herpesvirus family and attacks the salivary glands. It may be devastating or even
fatal to fetuses. An hCMV infection can be
life threatening for patients who are immuno-compromised (e.g., patients with HIV or
organ transplant recipients). Other members
of the herpesvirus family cause chickenpox,
infectious mononucleosis, fever blisters, and
genital herpes. These viruses all share the
ability to remain alive, but dormant, in the
body for life. The human cytomegalovirus
monitoring kits are sold by Roche Molecular
Diagnostics as in vitro diagnostic kits under
the trade name AMPLICOR®, and as kits for
screening blood and blood products under
the trade name AmpliScreen ®.
Erbitux®
Erbitux (cetuximab) is a new FDA-approved
clinical product for the treatment of advanced colorectal cancer that entered the
market in 2004. In 2005, the FDA further
approved its use for head and neck cancer.
It can be used in combination with another
approved colorectal drug, irinotecan, or
alone if the patients cannot tolerate irinotecan. Erbitux is derived from a monoclonal
antibody developed at UCSD by former professors Gordon Sato and John Mendelsohn
and their associates. The antibody specifically targets and blocks epidermal growth
factor receptors on the surface of cancer
cells and interferes with their growth and
proliferation. UCSD granted license rights
of this innovation to Imclone Systems, Inc.
(IMCL– NasdaqNM) of New York to develop
this cancer therapeutic. Imclone co-promotes Erbitux with its marketing partners,
Bristol-Myers Squibb (BMY-NYSE), in the
U.S. and in Canada, and with Merck KGaA
in Europe. In 2005, sales of Erbitux were
over $400 million in the U.S. alone.
TECHTIPS UC SAN DIEGO ANNUAL REPORT UCSD Start-up Acquired by Cisco Systems
In 2005, NetSift, Inc., a UCSD start-up,
was acquired by Silicon Valley-based Cisco
Systems for $30 million. NetSift was formed
in 2004 to commercialize solutions for highspeed communications network security
using technology developed by Professors
George Varghese and Stefan Savage (Computer Science and Engineering), and graduate scholars Sumeet Singh and Cristian
Estan. Varghese and Singh were cofounders
of the company.
CSE graduate student Sumeet Singh (left) and CSE
professor George Varghese.
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TechTIPS provided the original technology
license to establish the start-up and represented the university’s interest in the acquisition negotiation. NetSift originally received
venture backing from a local venture capital
firm, Enterprise Partners Venture Capital,
and employed several alumni from UCSD.
Upon acquisition, the company and its
employees became part of Cisco’s Internet
Systems business unit.
Start-up RedXDefense Teams with Smiths
Detection to Improve Subway Security
Decentralization
The technology transfer program at the
University of California system is moving
towards a decentralization scheme, which
will distribute responsibilities to its various campuses. During the second half of
FY2005, about fifty inventions previously
disclosed to and managed by the systemwide Office of Technology Transfer (OTT)
in Oakland were transferred to UCSD’s
Technology Transfer and Intellectual Property Services (TechTIPS) office. Over the
course of FY2006, all inventions previously
disclosed to and managed by OTT will be
transferred to the campus office.
RedXDefense, LLC, a start-up company
based in Rockville, Maryland, licensed technologies from the research of Professors
William Trogler and Michael Sailor, both of
the Department of Chemistry and Biochemistry at UCSD. The licensed technologies,
together with technologies licensed from
the Wisconsin Alumni Research Foundation, provide a simple, fast, and inexpensive
method to detect trace amounts of explosives using fluorescent detection inks and
silicon “nanowires” that are 2,000 times
thinner than a human hair. The company’s
Explosives Particulates Analysis Kit (XPAK)
product can detect fingerprints left by some-
one who has handled explosives, such as
TNT, DNT, RDX, HMX, PETN, Tetryl, C4, PE4, Semtex, Composition B, and others, even
in a heavy background of other fingerprints.
RedXDefense recently partnered with
Smiths Detection, the world’s leading provider of trace and x-ray detection systems,
to jointly develop for the mass transit environment an advanced explosives screening
system capable of screening 100 percent of
passengers. The two companies will partner
to adapt advanced RedXDefense detection
technology into an explosives screening
system that can meet the high throughput
demands of subway stations.
The target market for this new explosives screening system is every turnstile
in America’s subways. In New York City
alone, there are 468 subways stations that
accommodate 4.7 million passengers daily.
If deployed in New York City, this advanced
explosives detection system would screen
1.45 billion trips per year.
With the consolidation of the entire UCSD
portfolio of innovations to the campus,
we hope to realize several advantages of
local management of these innovations,
including:
• Improved responsiveness to faculty and the San Diego industry community
• Local access to UCSD researchers for
services provided by the local office
• A “one-stop shop” for industry or other third parties interested in licensing UCSD
innovations
• Simplified financial accounting and control of licensing, legal expenses, and income
TECHTIPS UC SAN DIEGO ANNUAL REPORT FY2005 Start-ups
FY2005 was a prolific year for UCSD start-ups with fifteen newly formed
companies entering the business world. Of the fifteen companies, five
were biotechnology/biomedical companies and the rest were engineering/
software development companies. Twelve of the fifteen companies are in
California, and ten of those are in the San Diego area.
ARS Holding Corp.
Cupertino, CA
ARS is commercializing advanced RF
transceivers for wireless handsets using
technologies developed by Professor
Larry Larson (Electrical and Computer
Engineering).
Bettles Gates LLC
Las Vegas, NV
Bettles Gates was formed to bundle,
develop, and commercialize a portfolio of
teleconferencing technologies from patents
donated to UCSD with technologies from
other sources. The company has been successful in licensing the bundled technologies
to other companies for commercial uses.
Blaze DFM, Inc.
Sunnyvale, CA
Blaze DFM, Inc., which now comprises
twenty employees, has attained all of its
benchmarks since closing a $6 million initial
round of venture capital financing in late
2004. Alpha testing of its first product, Blaze
MO, began in March 2005, and the product
was first installed at a beta customer site
INVENT.UCSD.EDU
in October 2005. This spring, a customer
obtained its first product silicon optimized
with Blaze’s software tools.
“Results so far with our first product have
exceeded our customers’ most optimistic
expectations,” says Professor Andrew
Kahng (Blaze co-founder and UCSD faculty
member in Computer Science Engineering).
“Now we want as many chip designers as
possible to benefit from it.”
The “DFM” in the company’s name means
“design for manufacturing” and refers to a
concept of designing integrated circuits in a
way that improves the percentage of chips
on a wafer to meet product specifications
and therefore can be shipped. But as chip
sizes drop and densities increase, improving
yields on sub-100-nanometer (nm) processes becomes an even bigger problem
because of power leakage and manufacturing variability.
“DFM is the semiconductor industry’s only
hope for a cost-effective continuation of
Moore’s Law,” says Kahng. “It’s been my
research focus since 1997. I felt I had to do
something to help solve critical challenges of
variability, power and cost—if only as a safety net for the industry. I am grateful to UCSD
for having provided me with this opportunity
to translate university research into practical
impact. The strong interest, support, and
follow-through from the technology transfer
staff at UCSD has been very gratifying, as
has been the sight of my research turning
into commercial products.”
Kahng's new technology does DFM with a
twist. He calls it “Electrical” DFM. Most of
the DFM tools used today have a geometric
mindset: they focus on whether the shapes
of circuit features in silicon exactly match
the layout as designed. But, argues Kahng,
shape fidelity is not the same as maximizing
the number of sellable chips per wafer (and
therefore revenue per wafer). To optimize the
yield of chips on a wafer, he says, designers
must take into account electrical requirements, notably power and timing.
“Leakage power is a big part of the problem at the sub-100nm level,” notes Kahng.
“Because of leakage currents, a fast chip
may burn too much power and be unusable
in, say, a mobile application, and a slow chip
may not be usable either. Electrical DFM
looks at these electrical requirements and
optimizes the chip design so that manufactured silicon meets parametric specifications
while burning as little power as possible.
Our products also directly mitigate the
manufacturing variation that is so challenging at leading-edge process nodes.”
Digital Media Research, Inc.
dba Immersive Media
Research, Inc.
Del Mar, CA
Digital Media Research was formed with
vortex surround technology developed by
Professor Peter Otto (Music). Vortex surround facilitates the creative and expressive
manipulation of individual sounds in space
as well as the combining of these sounds
into multichannel sound cues and fully immersive soundscapes. Three applications
(Vortex Surround Designer, Vortex Surround
Mixer, and Vortex Surround Encoder) form
a surround authoring system, and may be
used individually or together as elements
of a complete production chain. They also
work transparently with other audio applications and can be used to provide multichan-
nel sound capabilities for authoring environments that are otherwise less capable.
Eilean Technologies, LLC
Las Vegas, NV
Eilean, a holding company, was formed
to explore bundled communicationsrelated technologies developed by university
researchers, including UCSD Professors Pamela Cosman, Larry Larson, Peter Asbeck,
and Ian Galton (Electrical and Computer
Engineering); and Mark Zumberge (Institute
for Geophysics and Planetary Physics). The
technologies utilize advanced signal processing techniques that will prove invaluable
in tomorrow’s mixed-signal and portable
power applications.
HiGene Therapeutics, Inc.
San Diego, CA
HiGene was formed with technology
developed by Professor Yang Xu (Biological Sciences) that allows the production of
humanized antibodies using a specialized
transgenic mouse. Human or humanized
monoclonal antibodies have proven to be
very effective therapeutics against a variety
of cancers, autoimmune diseases, and
inflammatory diseases. This new technology
will allow a more cost-effective production of
future antibody therapeutics in a less laborintensive and time-consuming manner.
HypoxyGen
La Jolla, CA
HypoxyGen was formed with technology
developed by Professor Randall Johnson
(Biological Sciences) and his associates
that enhances bacterial killing by the immune system. The UCSD inventors have
shown that use of hypoxia mimetics, iron
chelators, and other compounds that
up-regulate the HIF-1 hypoxia responsive
transcription factor—or inhibit hydroxylase
action—accelerate the killing of bacteria by
white blood cells. The potential of pharmacologically increasing the killing capacity of
white blood cells, alone or in conjunction
with antibiotics, holds significant clinical
and market promise.
Clockwise from top left: Yu-Hwa Lo co-founder of Rhevision; ARS
founder and Eilean collaborator, Larry Larson; Geert Schmid-Schoenbein,
whose patented discoveries contributed to the founding of InflammaGen;
Blaze co-founder and UCSD faculty member Andrew Kahng; Ortiva
technology developer Sujit Dey.
TECHTIPS UC SAN DIEGO ANNUAL REPORT InflammaGen, Inc.
La Jolla, CA
InflammaGen was founded to commercialize
specific patented discoveries of Professor
Geert Schmid-Schoenbein (Bioengineering). UCSD researchers have discovered
that blocking the action of inflammatory
mediators dramatically increases survival
rates among laboratory animals. In humans,
obstructing the chain of biochemical events
involved in shock may be able to save tens
of thousands of lives annually in the United
States and an even greater number on a
global scale. Additionally, there is mounting
evidence that suggests that inflammation
is the underlying cause of degenerative
diseases including arthritis, Alzheimer’s,
coronary artery disease, diabetes, and even
some cancers. The company is committed
to testing and commercializing technologies
to reduce severe inflammation in order to
ameliorate disease and preserve human life.
IQ Analog
San Diego, CA
IQ Analog is a semiconductor design company providing improved mixed-signal data
converter technology for Radio Frequency
(RF) systems.
Partnering with researchers at the university,
the company is developing the latest digitally calibrated analog interface technology
to provide practical, cost-effective commercial applications. The technologies include a
digital-analog converter technology developed by Professor Ian Galton (Electrical and
Computer Engineering).
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Mushroom
Networks, Inc.
La Jolla, CA
Mushroom Networks was formed to commercialize a smart network-sharing technology for broadband Internet access developed by Professor Rene Cruz (Electrical
and Computer Engineering).
Ortiva Wireless, Inc.
San Diego, CA
Ortiva Wireless provides enhanced wireless
content delivery. The company’s technology
compensates for real-time wireless channel
fluctuations to ensure the highest quality
mobile user experience by expanding both
capacity and reach of wireless networks.
Professor Sujit Dey (Electrical and Computer
Engineering) is the developer of the technology and co-founder of the company.
Proveri, Inc.
San Diego, CA
Proveri focuses on improving the diagnosis
and prognosis of prostate cancer by developing tests that distinguish aggressive and
indolent prostate cancer. The company’s
technology was jointly developed by researchers at UCSD and the Sydney Kimmel
Cancer Center (La Jolla, CA), and utilizes
biomarkers that are statistically indicative
of aggressive prostate cancer. These biomarkers were identified in a large clinical trial
that was funded by a $4.7 million grant from
the National Institutes of Health.
Rhevision Technology, Inc.
San Diego, CA
Rhevision was founded to commercialize
revolutionary technologies on tunable smart
optics for mobile and miniature imaging.
Licensed technology was developed by
Professor Yu-Hwa Lo (Electrical and Computer Engineering), and the company was
founded by UCSD faculty and scientists.
StemTech, Inc.
San Diego, CA
Stem Tech was formed with licensed
technology developed by Professor Alberto
Hayek (Pediatrics) that allows the maintenance of pluripotency and propagation
of human stem cell in culture without the
use of a mouse embryonic fibroblast (mEF)
feeder cell layer or a conditioned medium
using mEF. This technology holds promise as a stem cell research tool as well as
a preferred production tool as stem cell
research advances ever closer to practical
therapeutic applications.
TECHTIPS UC SAN DIEGO ANNUAL REPORT 11
Community Outreach and Partnering
AUG 2004 Presentation at the Amylin “Friend Raising”
NOV 2004 Life Science Innovators Roundtable with
JAN 2005
Evening (sponsored by UCSD External
Relations)
presentation by Professor Juan Lama Life Science Innovators Roundtable
with presetations by Professors Virgil
Woods, Jr., Nicholas Spitzer, Laura
Borodinsky, and Wolfgang Dillmann
UCSD Technology Road Show to Weihai, China (hosted by the International Biotechnology Center of the Shantung University)
Physical Science Innovators Roundtable with
presentations by Professors Edward Yu,
Kenneth Vecchio, Raymond de Callafon,
and Yu-Hwa Lo
FEB 2005
AUTM Annual Meeting
Presentations and technology exhibition at the Taiwan Invention Exposition and
TechnoMart Convention, Taipei, Taiwan
Start-up Seminar: Forming a New Company
—Legal Issues to Consider
UCSD Technology Road Show to Hsinchu, Taiwan (hosted by the Industry Technology Research Institute)
UCSD Technology Road Show to Industry
Technology Research Institute (Hsinchu, Taiwan)
Intellectual Property Seminar at Scripps Institution of Oceanography SABPA Second Annual Career Development Conference at UCSD
TransMed program presentations at
CONNECT Frontiers in Science
Life Science Innovators Roundtable with
presentation by Professor Robert Mattrey
Innovators Showcase and TechTIPS Tenth
Anniversary Celebration
APR 2005 CONNECT Springboard for TheraPei
CONNECT Most Innovative Product Awards Judging Presentation
Technology exhibition at the LARTA T2
Conference (Los Angeles)
sored with San Diego Center for Molecular Agriculture)
SABPA Company Profile 2 (co-hosted by TechTIPS and SABPA)
JUN 2005
San Diego BioPharma Conference 2005
(co-sponsored with SABPA)
Presentation at the National Roundtable
on Technology Transfer, Science and Trade (co-hosted by TAMU and University of Hawaii with support from the U.S. State Department)
Mentoring services to the Rady School of
Management: Lab2Market class
SEPT 2004 Life Science Innovators Roundtable with
presentation by Professor Michael Sailor
CONNECT Springboard Event for Hekko
OCT 2004 Life Science Innovators Roundtable with presentation by Professor Ajit Varki
Presentation at the meeting of the Control and Accountability Committee on
Relationship Risks
Presentation at the Oceanids Annual
Conference
Breakfast with TechTIPS with presentation by Professor Sujit Dey
Licensing Executive Society Annual Meeting
UCSD Technology Road Show to Boston (hosted by PureTech)
UCSD Technology Road Show to
Shanghai, China (co-hosted by Crimson Pharmaceuticals, Paul Hastings, and the BayHelix Group)
AgBio Annual Conference (co-hosted by TechTIPS and the San Diego Center
for Molecular Agriculture)
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MAR 2005 PharmaSTART Drug Development Seminar
Intellectual Property Seminar (co-sponsored with Center for Wireless Communications)
MAY 2005 Plant Intellectual Property Seminar (co-spon-
DEC 2004 CONNECT Most Innovative Product
Awards Banquet
Life Science Innovators Roundtable with
presentation by Professor Yitzhak Tor
Welcome
JUL 2004 Representatives from University of
DEC 2004 Hong Kong Science and Technology Park
–Dr. Joseph Liu and Mr. Jim Huang
MAY 2005 Université de Montréal Vice Recteur a la
Récherche–Alain Caille
AUG 2004 Technion University, Israel–Dr. Eizenberg
BioRiver ABCD Regional Consortium of Germany–Annette Traude and Josef Steffinn
Invest New Zealand–Gabriella Riera, Bret Morris, and Adam Podmore
Swedish Office of Science and Technology
–Mr. Anders Asperen
University of Hong Kong
–Professor Paul Tam
JUN 2005
University of Hong Kong
–Professor Wong Kam Fai
Wollongong, New South Wales, Australia
SEP 2004
Kyoto Trade Mission/Kyoto Research Park Corp./JETRO of Japan
JAN 2005
BioVentures–Mr. Micky Kim
A*STAR, Singapore–Sze Tiam Lin
Merck & Co.–Dr. James Schaeffer
EMD Biosciences and Merck KgaA
FEB 2005
Steve Tomlin of Avalon Ventures
Northwestern University–Professor Burton Weisbrod
San Diego Union-Tribune
–Teri Somers (biotech reporter)
New Zealand Government Science Council
–Counselor Brian Young and Tim Blackmore
China State Intellectual Property Office Delegation
Texas A&M University Delegation
Beijing University Delegation
Yunnan University Delegation
China Ministry of Science and Technology
OCT 2004 Domain Associates, LLC­–Dr. Brian Halak
NOV 2004 Polaris Delegation of Science and
Technology Park of Sardinia, Italy
Hsinchu Biomed Park Delegation of Taiwan
Institute for Information Industry
(Taiwan/UCSD Extension hosted)
Technion R&D Foundation, Ltd., Israel
–Ami Lowenstein
Tokuyama College of Technology, Japan
–Professor Takashi Hara
MAR 2005 University of New England, Armidale, NSW,
Australia–Professor Grant Harman
APR 2005 Universidade Federal do Rio Grande do Sul, Porto Alegre, Brazil–Professor Jose
Antonio Martinelli
Dr. Dale Cooper, Head of Bioscience,
BD–Americas, Procter & Gamble
Changchun Botai Biotech–Dr. Xun Zhu
JAN 2005
Hong Kong Science and Technology Park
–Dr. Joseph Liu
Sharing Experience
AUG 2004 SRI BioAsia Licensing and Deal-Making Summit
SEPT 2004 UC Technology Transfer Managers Dialog with Science and Engineering Deans
UC Systemwide Intellectual Property
Managers Conference
Kansas City/San Diego Leadership Exchange
OCT 2004 China Beijing Bioengineering and Pharma
Industrial Park Delegates (co-hosted by
TechTIPS and SABPA)
NOV 2004 Presentation at the National Association of
University Attorneys Meeting
Presentation at the National Association of
State Universities and Land-Grant Colleges
(NASULGC) Annual Meeting
Presentation at “Invention to Ventures”
Conference (hosted by UCSD von Liebig Center)
Presentation at the Rady School FlexMBA Seminar
APR 2005 Presentation at the University of South Florida Moffett Cancer Center Seminar
Finnish Delegation (co-hosted by TechTIPS, IR/PS, and Global CONNECT)
Presentation at the UCSD BioBusiness
Extension Class
Ontario Delegation of University Vice
Presidents for Research (hosted by Global CONNECT)
Presentation at the SDSIC Entrepreneur Forum: Technology—Acquire or Develop?
FEB 2005
Presentation at the ENG100L (Teams in
Engineering Service Program)
MAR 2005 UC Riverside Technology Transfer and
Economic Development Advisory
UC Systemwide Independent Substantive
Review Committee Seminar
Hong Kong Science and Technology Park
International Technology Conference
Chinese Medicine CEO Business Round-
table (co-hosted by the Hong Kong Jockey Club, Institute for Chinese Medicine, and the
Hong Kong Science and Technology Park)
Presentation at the SRI Biotech/Pharma
Licensing Summit
Presentation at the California Western School of Law Intellectual Property
Conference
MAY 2005 MultiLaw IP Special Interest Group
VentureForth Biotechnology Conference
JUN 2005
Presentation at the Carmel Valley Section
of IPLA Presentation at the Fish & Richardson Video Seminar
TECHTIPS UC SAN DIEGO ANNUAL REPORT 13
Results
IP Disclosures
IP Protection
The basis of UCSD’s intellectual property portfolio
starts with an invention or copyright disclosure from our
researchers. These disclosures are the foundation for
seeking statutory protection and licensing of protected
rights for commercialization to serve the university’s missions. In FY2005, we reached 334 disclosures—another
all-time high for the campus.
UCSD’s technology transfer program continues to
achieve high numbers for patent prosecution and
protection, ranking second to UCSF in the UC system.
In FY2005, 239 patents were filed of which 172 were
U.S. provisional or secondary filings and the remaining 67 were foreign applications. An all-time high was
achieved with 147 issued patents, 60 U.S. and 87
foreign patents.
Agreements
TechTIPS agreement activity increased to over 700
agreements in FY2005, a new high for the campus. This
number included licenses, options, letters of intent (LOI),
material transfer agreements (MTA), and other administrative agreements.
1999
2000
2001
2005
22
95
96
97
98
99
96
97
00
01
02
03
04
05
95
99
00
1995
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
U.S. Provisional
–
–
–
–
60
55
74
75
127
144
133
Non-Provisional
107
70
94
96
87
87
76
86
45
44
39
0
4
11
40
37
22
40
41
69
94
67
107
74
105
136
184
164
190
202
241
282
239
14
27
30
36
40
58
59
42
51
50
60
International
TOTAL FILED
Patents Issued
U.S. Issued International Issued
TOTAL ISSUED
INVENT.UCSD.EDU
44
26
28
56
16
98
Table 1 Patent Activities
Filings
265
592
41
11
139
2004
50
15
137 2
2003
18
03
04
05
4
2002
23
76
Inventions
Copyrights
41
242
Inventions
Copyrights
23
236
Inventions
Copyrights
187
Inventions
234
12
Copyrights
28
15
34
6
250
19
290
1998
2
288
Inventions
Copyrights
41
294
Inventions
Copyrights
24
255
Inventions
Copyrights
194
Inventions
Copyrights
25
Inventions
16
1997
Copyrights
489
1996
1995
576
3
626
23
1
5
200
Inventions
Copyrights
21
161
Inventions
Copyrights
6
699
Inventions
Copyrights
Intellectual Property Disclosures
713
Tech Transfer Agreements
Licenses of Inventions and Copyrights
1
1
3
41
51
33
36
39
69
79
87
15
28
33
77
91
91
95
81
120
129
147
01
02
Financials
Income
Expenses
UCSD intellectual property income in FY2005 was approximately $21.6 million. Income included over $15.5
million in license fees and royalties from inventions, over
$214,000 in license fees and royalties from copyrights,
over $578,000 in fees from the transfer of tangible
research materials, and over $5.3 million in patent cost
reimbursement. For a categorical breakdown of total
income, please refer to the appendix.
UCSD’s technology transfer program incurred total
expenditures of $12.1 million. Expenditures included
approximately $2.3 million for UCSD office operations,
$890,000 for systemwide office operations and assessments, and $6 million in patent prosecution costs. A
detailed categorical breakdown of total expenses is in
the appendix.
distributions to researchers and authors, research
laboratories, academic departments, copyrights, tangible
research materials, and sponsored research pledges as
a result of licenses and matching grants from the UC
Discovery Grant Program.
Research Impact
Mandatory Distributions
UCSD’s technology transfer program continued to have a
positive impact on UCSD research programs. TechTIPS
distributed license income to support research by providing incentives in the form of research support share and
inventor/author share of the net income for faculty retention and recruitment. In addition to the mandatory distributions of income under UC Patent Policy and UCSD
campus guidelines, TechTIPS negotiated additional
funding for research in its license agreements whenever
appropriate. In FY2005, the total research impact was
estimated to be $5.9 million. These estimates include
In FY2005, TechTIPS distributed over $8.5 million.
Distributions were made to inventors, joint titleholders,
participating academic units for research support, and
the California State General Fund Pool in accordance
with the UC systemwide patent policy and UCSD campus guidelines. Invention income distributed is based on
income received in the prior fiscal year. Copyright income
and tangible research materials income distributed is
based on income received in the same fiscal year.
Estimated Research Impact
In addition to distributing license income to encourage
and support research, TechTIPS assisted in finalizing
agreements for several research initiatives including the
establishment of the Center for Networked Systems, a
collaboration between the Department of Radiology and
GE Healthcare, a gift from Sammy Studios of gaming
software to the Center for Research in Computing and
the Arts, and a gift from the William K. Warren Foundation to support the Celiac Disease Program. These gifts
totaled almost $25 million.
21.6
Total Income from Intellectual
Property Management
$.91
1995
1996
1997
$4.3
$8.3
$6.6
million
million
million
1998
1999
2000
2001
$5.9
2002
2003
2004
2005
3.0
million
95
96
97
98
6.1
$4.9
million
4.3
$6.3
million
3.7
$6.4
million
5.3
9.1
million
10.7
$1.6
15.0
million
17.0
$.85
million
8.4
$.64
million
99
00
01
02
03
04
05
Dollars in Millions
Table 2 Mandatory Distributions of IP Management Income
Inventor/Author Share
Joint Titleholders Share
Research Labs/HAU#/
Department Share
State General
Fund Share†
Total Distributions
1995*
1996*
1997*
1998
2004
2005
TOTALS
$643,705
$848,778
$907,112 $1,171,430 $2,512,878 $1,597,695 $2,154,601 $2,097,659 $4,055,993 $2,666,558
$3,716,953
$22,373,358
13,178
11,413
46,882
38,359
94,221
59,635
196,770
633,082
303,719
295,219
190,694
1,883,173
–
–
–
451,008
345,741
980,352
928,614
1,990,384
1,003,550
1,267,438
1,987,232
8,954,320
252,930
243,952
299,023
1,081,503
235,872
730,140
(411,621) 1,519,149 (1,218,547) 1,007,431
2,658,331
6,398,163
$909,813 $1,104,143 $1,253,017 $2,742,300 $3,188,712 $3,367,822 $2,868,364 $6,240,274 $4,144,715 $5,236,646
$8,553,210
$39,609,013
1999
2000
2001
2002
2003
* Inventions Only # Home Academic Unit † FY01 and FY03 show credit
TECHTIPS UC SAN DIEGO ANNUAL REPORT 15
Appendix
Income
1995
1996
1997
1998
1999
2000
2001
2002
$2,204,002
$2,389,128
$2,901,369
$3,057,487
$4,042,919
$5,476,522
$5,627,139
$7,240,086
Copyright
–
–
–
11,649
74,223
83,581
46,083
202,503
156,608
314,268
214,418
1,103,333
Tangible Research
Materials
–
–
–
–
–
647,401
595,253
1,122,889
474,311
405,074
578,315
3,823,243
761,687
1,287,424
1,377,230
2,259,994
2,028,760
2,848,046
2,032,033
2,898,996
3,677,680
2,896,168
5,336,046
27,404,064
–
–
–
3,000,000
–
–
55,779
5,552,353
–
–
–
8,608,132
$2,965,689
$3,676,552
$4,278,599
$8,329,130
$6,145,902
$9,055,550
Invention
Legal Cost
Reimbursement
Extraordinary Income†
Total Income
2003
2004
2005
TOTALS
$6,367,907 $11,472,540 $15,506,214
$66,285,313
$8,356,287 $17,016,827 $10,676,506 $15,088,050 $21,634,993 $107,224,085
† Extraordinary income includes nonrecurring items such as legal settlements.
Expense
Patent Prosecution
Copyright
Campus Operations
UCOP & OTT
Assessment
Extraordinary
Expenses*
State General Fund
Total Expense
Net Income
1995
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
TOTALS
$1,297,086
$1,679,763
$2,092,643
$2,750,577
$2,154,597
$3,503,079
$3,104,498
$3,832,578
$4,026,056
$4,645,062
$6,054,754
$35,140,693
–
–
–
5,000
2,500
7,500
5,000
937
2,901
60
3,630
27,528
380,773
519,248
699,279
689,296
892,006
1,213,967
1,386,222
1,696,395
1,981,436
2,263,301
2,272,051
13,993,974
473,215
426,701
513,131
650,648
472,203
438,171
602,743
862,383
901,692
877,272
892,459
7,110,618
3,915,960
2,992,514
6,566,816
2,789,449
257,504
17,380,611
1,519,149
(1,218,547)
1,007,246
2,658,331
6,397,978
$8,602,802 $10,903,956 $12,260,354 $11,582,390 $12,138,729
$80,051,402
–
163,795
35,924
40,865
397,190
220,594
252,930
243,952
299,023
1,081,503
235,872
730,140
$2,404,004
$3,033,459
$3,640,000
$5,217,889
$4,154,368
$ 6,113,451
$561,685
$643,093
$638,599
$3,111,241
* Extraordinary expense includes unbudgeted legal expenses for litigation and settlement.
INVENT.UCSD.EDU
$1,991,534
$2,942,099
(411,621)
$(246,515) $6,112,871 $(1,583,848) $ 3,505,660
$9,496,264
$27,172,683
Technology Transfer and Intellectual Property Services University of California, San Diego
9500 Gilman Drive, Dept # 0910 / La Jolla, California 92093-0910 / (858) 534-5815 / invent.ucsd.edu
0607-007