Introduction to the
Offices of Biotechnology &
Business Development
John L. Harb
Director, Office of Biotechnology
__________________________________
October 30, 2008
Our Offices
The Office of Biotechnology serves as the
technology transfer office
of the College. The office facilitates licensing of
College technology to industry and research
collaborations between industry and faculty.
The Office of Business Development is focused on
capturing and/or developing novel or more
aggressive technology transfer opportunities.
“Technology Transfer”

Definition

“Technology transfer is the process of transferring
scientific findings from one organization to another for
the purpose of further development and
commercialization.”
– Association of University Technology Managers

Origin of Field
 Bayh-Dole Act 1980

Encourages universities to patent and license the
results of federally-funded research
 Universities have rights in intellectual property
that resulted from federal research funding
 Commercialization of inventions benefit the public
good
 Royalties are distributed to inventor and
reinvested for education and research purposes
University Technology Transfer

Knowledge Transfer
Publications & Presentations
 Collaborations
 Material Transfers
 Sponsored Research
 Consulting
 Inventions
 Licensing

Your Responsibilities

Acceptance Agreement

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Abide by Einstein’s Patent Policy
Promptly disclose inventions
Assign ownership rights
Third-Party Agreement Obligations

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Publications
Use of Material
Confidentiality
Reporting
Our Responsibilities

Support Einstein faculty researchers
Facilitate technology transfer
relationships
 Protect the school and its faculty
members


Comply with obligations to sponsors
and licensing partners
Services

Invention Disclosures



Licensing
Material Transfer Agreements

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Agent Reagent Program
Industry-Sponsored Research Agreements
Grant required IP management language

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Patent Management
Resources and data sharing plans
Consulting Agreements
Services (cont’d)
Confidentiality Agreements
 Inter-Institutional Agreements
 Review IP language

Clinical Trial Agreements
 Foundation/Non-Profit Grants

Invention Process

Invention Disclosure Form
Details of invention and its reduction to
practice
 Funding & material sources
 Upcoming publications
 Commercial contacts

Patent Committee
 Intellectual Property Protection

Licensing Process
Market, market, market
 Business discussions with
commercialization partners

Confidentiality Agreement
 Terms


License Agreement

Royalty is distributed in accordance with
Einstein’s Official Policy on Patents and
Licensing Agreements (“Patent Policy”)
Patent Policy Distribution
 Net
Royalty is distributed as follows:
 1/3
– Inventors (personally)
 1/3 – Laboratory Research
 1/3 – College
Material Transfer Process

Various forms
Incoming vs. Outgoing
 Academic vs. Industry Partners
 Human material?
 Hazardous material?

mta@aecom.yu.edu &
reagents@aecom.yu.edu
Research Tools

Disclose!

Online, interactive form
Review for commercial value
 Market to companies (“Agent Reagent”)


High volume transfers  repositories
(mice, plasmids, etc.)
Industry-Sponsored Research
PI Role
 Develop Research
Plan
 Develop Budget
Office Role
 Review Budget
 Negotiate
Agreement
Points to remember:
 Overhead policy is consistent with NIH rate
 Involve us in the process early on
 Keep science and business separate
Hot Topics in Agreements
Publication Rights
 Liability
 Intellectual Property Rights
 Confidentiality

Consulting

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Private Agreements
Must be approved by:

Department Chair
Dean (Office of Biotechnology)

Not in place of outside counsel

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Proposed guidelines and suggested language
Clauses of concern
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Conflicts
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Prior rights & Einstein rights
Time commitments
Liability
Distinction from research activities
Student involvement
Office of Biotechnology Staff
John Harb, M.S.P.H.


Director
Assistant Dean, Scientific Operations
David Schoenhaut, Ph.D.

Assistant Director
Benjamin Neymotin, M.A.

Contracts and Licensing Associate
Office of Business Development
Staff
Richard Kosman, Sc.M.M.

Director
David Silva, Ph.D.

Senior Business Development Analyst
Janis Peck, M.B.A.

Business Development Analyst
Contact Us

Website:
www.aecom.yu.edu/biotechnology
Forms & Policies
 News & Publications
 Contact Information

Phone: 718-430-3357
 Office: Belfer Building, 9th Floor

Want to learn more about IP?
Join us…
Tuesday, December 9th
“Intellectual Property Overview
for the Academic Researcher”
Same Room
Different time - Noon
Guest Speaker Kenneth P. George, Partner
Amster, Rothstein & Ebenstein LLP
(intellectual property law firm)
Thank You
Any Questions?