Stretch Your TTO’s Budget
Michael Rondelli, J.D., M.B.A
Director, Technology Transfer Office
San Diego State University Research Foundation
Agenda
• Why do you have a TTO on campus?
– What does it do?
• What value does it create?
• Who are the stakeholders?
• How do you create a reputation and
leverage it?
Why do you have a TTO on Campus?
•
•
•
•
•
What does it do?
Generate royalty?
Legal requirements?
Recruit faculty?
Other?
– Grants for TT
– Econ Development
TTO Activities
• Identify proprietary
intellectual property
• Protect IP with confidential
disclosure agreements
(CDAs) and material transfer
agreements (MTAs)
• Manage the patents,
copyright and trademark
process
• Negotiate and manage IP
licenses and royalty
agreements
• Manage IP in Sponsored
Research and contractual
agreements
• Educate faculty and students
about IP matters
• Help manage conflicts of
interest and commitment
issues
• Help faculty spin-off new
companies
• Incubate new companies
• Represent the university in
local, national and
international organizations
• Work with community and
economic development
organizations
Types of deals
•
•
•
•
•
•
CDAs
Licenses
MTAs
Corporate grants
Corporate job-shopping
Development of plays/works of art
Royalties
•
•
•
•
Up-front
Back-end
Equity
Sponsored research
– Faculty desired?
• Anything else?
Legal Requirements
• Federal law
– Bayh-Dole Act
• State law
•
•
•
•
Unjust enrichment
Use of space
Use of resources
Use of students
• University policy/charter
Bayh-Dole Objectives
• Promote utilization of federally-funded
inventions
• Encourage small business engagement in
federally-funded R&D
• Promote collaborations between universities
and industry
• Promote commercialization in the U.S. of U.S.made federally-funded inventions
• Protect the government’s rights to federallyfunded inventions
Compliance
• Some tasks are more appropriate for
TTO some are more appropriate for SRA
• Successful reporting requires intentional
institutional systems
• Violation risks forfeiture of invention title
• Violations of reporting requirements are
widespread (U.S. General Accounting
Office)
Recruit/Retain faculty
• Larger royalty share to faculty
• Larger support to faculty labs
• Personal attention to faculty: people matter;
treat them well and they treat you well
• What is important? Royalties or Grants?
• Other
– SBIR
– Campus companies
– Campus venture contacts/funds
Value creation
•
•
•
•
•
•
•
•
•
Royalties
Faculty
Grants
Students
Publications
Economic development
Relations with city/state/federal
Demonstrate expertise in an area
Reputation
Stakeholders
•
•
•
•
•
•
•
•
•
•
Faculty
Deans
Alumni
City
State
Local industry
– Need students with skills
– Need new companies
– Need more science
HR – recruit/retain
Facilities
Support industries
Local angels/vc/banks/insurance/accounting
Create a reputation
• Who do you want to be?
• Stay on point; if one deal is off message,
do not waiver from your stance
• Tell it to everyone
• Show up
• Don’t be afraid to pick a fight
• Find a niche, actually, grab a few, they
are small
Leverage - example
• SDSU is much smaller and no where
near as experienced as other local TTOs
• We’re smaller, so more nimble, greater
attention to serving our stakeholders
• Never fall into calling names; stay on
point… we do it this way because that is
who we are and what we are able to do
Anatomy of a Deal
• What is being
Transferred?
• Exclusive/Non-Exclusive
• Term
• Laws
• Milestones
• Payment
Timing/Formation
• Compensation
• Pullback
• IP Costs
• Confidentiality
• Relationship to
Other/On-Going
Research
• Indemnification
Language
• Future IP
• Right to Publish/Practice
Non-Commercially
• Relationship to Faculty
Deal Terms
• Pick a few that matter to you, fight those
battles
• Give up the other ones
How does this tie in?
• TTO impacts sponsored research/grants
– Should they pay for part of the overhead of
the TTO?
– Do they know to include IP terms?
• TTO impacts Marketing/Communications
• Charitable gifts
– TTO has the faculty and alumni capable of
BIG gifts; or use TTO science to entice a
donor to endow research that will impact a
desired outcome
Thanks! Any questions?
Michael Rondelli, J.D., M.B.A
Director, Technology Transfer Office
San Diego State University Research Foundation
mrondelli@foundation.sdsu.edu
619-594-3336