Johns Hopkins Technology Transfer Bringing the benefits of discovery to the World. Technology Transfer At JHU: Myths, Misconceptions, and Things You Never Knew Wesley D. Blakeslee, B.S., J.D. Johns Hopkins Technology Transfer Medical School Council March 21, 2007 Technology Transfer Office Technology Transfer Office converts JHU inventions to real world products by: Licensing to companies that can advance the technology, or Assisting in creation of new companies to develop the products Emergence Of Technology Transfer As A Priority For The University In the beginning . . . … prior to 1980, all inventions conceived or reduced to practice in the performance of federally funded research … were owned by the federal government. So . . . Technology developed at Universities based upon federally funded research, for the most part went nowhere. • WHY? - because most federally funded research is basic, early stage, and requires a serious investment in capital and time to convert to a marketable product. Drugs – 7 to 10 years, $50 to $100 million. Bayh-Dole Act of 1980 Stimulate the US economy and facilitate technology transfer Universities granted the right to elect to take title to inventions conceived or reduced to practice in the performance of a federal grant, contract, or cooperative agreement and are obligated to... Obligations of Bayh-Dole Disclose each new invention File US & international patent applications Attempt to license inventions to develop the technology Share license revenues with inventors Use remainder to support research & education AUTM Licensing Survey of 2005 • $42 billion in research expenditures • 10,270 new US patent applications • 3,278 US patents issued • 4,932 new licenses and options • 628 new companies formed JHU IP Policy As a condition of employment, Hopkins faculty and staff are obligated to report inventions made with university resources (to JHTT) and to assign title to the University in exchange for a share of net income from licensing the inventions. Revenue sharing 35% inventor’s personal share 15% inventor’s research share 15% inventor’s department 30% school, 5% university with 25/10 to school and university for royalties exceeding $300K Recent Example Started a new JHTT effort 6 Months: Compliance • 1 technology, 3 inventors: $900,000 brought in thus far Inventors share $315,000 How to Report an Invention Report of Invention Disclosure Form (ROI) www.jhtt.jhu.edu Word and .pdf downloadable formats Soon will use online submission Enables JHTT to evaluate the invention Why think about IP? Convert knowledge and research results to products for the benefit of the world Create value, monetary and nonmonetary, for authors, inventors and academic units which support them Myths, Misconceptions, and Things You Never Knew Myth: JHTT is “Paid for” by F & A JHTT expenses are not included in F & A calculations for Federal funding purposes (per the Controller) • Not a direct expense in support of the research mission JHTT is in fact paid for by the schools from their Dean’s office budgets Myth: JHU Tech Transfer Does Not Make Money FY06 Invention Accounting ($000) Agr. Income FY05 Actual $8,512 FY06 Actual $10,734 FY07 Plan $9,720 Patent Exp ($5,090) ($5,011) ($5,020) $3,448 $2,553 $3,263 ($3,279) ($3,379) ($4,339) $3,591 $4,897 $3,624 Reimbur. Office Exp. Net Income Figures include extraordinary income of $292K FY05 and $3M FY06 Hollywood Accounting 40% net profit would be considered good in most businesses But Schools pay the costs and receive only small part of the revenues Distributions to inventors, research accounts and departments made “off the top” from gross receipts less only direct unreimbursed patent expenses Myth: JHTT Is Not As Good As Other Top Schools Licenses Per Licensing Associate School Licensing U. Wisc. 19 MIT 15 JHU1 8.3 Cornell 10 Stanford 13 U. Ill. Chi. 17.5 U. Cal. 63 U. Wash. 16.5 1JHU actual 2005 Agts Agts/TLA 203 10.7 134 8.9 72 8.7 80 8.0 89 6.8 88 5.0 273 4.3 70 4.2 Percent Of Inventions Converted To Licenses Comparison To Peers AUTM 2004 School U. Wisc. Cornell U. Ill. Chi. U. Wash. JHU1 MIT Stanford U. Cal. 1JHU RS $$ 0.763 0.537 0.813 0.833 1.03 1.02 0.69 2.8 actual 2005 ROI’s 405 225 262 233 272 515 350 1196 Agts. % 203 80 88 70 72 134 89 273 51 36 34 30 26 26 26 23 Income leaders • Columbia - $220 M (90% from 4 technologies, no longer participating in AUTM survey) • New York University - $109 M • Stanford - $47 M • University of Minnesota - $45.5 M • WARF - $47 M • Florida State - $14 M - royalties down from $52 M in 2002 from Taxol • MIT - $25.8 M JHU Knowledge Transfer Results for FY04 * First in country in federal funding (second to entire system of California), $1.016B First among peers* in filing for patents on inventions disclosed 4th (last) quartile among peers in average royalty revenue per license and total revenue earned per research dollar Top 15 universities in U.S. with research expenditures over $500M and with medical schools Reasons for relatively low $$$ Chronic under funding of Johns Hopkins Tech Transfer Staffing: Comparison to Peers AUTM 2004 School Licensing JHU1 9.3 U. Cal. 63 MIT 15 U. Wash. 16.5 U. Ill. Chi. 17.5 U. Wisc. 19 Stanford 13 Cornell 10 1JHU Current 2006 Support 11 103 19 39 15.8 22.5 11.5 10 Research $$ 1.10 Billion 2.80 1.02 0.833 0.813 0.763 0.69 0.537 Staffing: Comparison to Peers AUTM 2004 School TLA U. Cal. JHU1 MIT U. Wash. U. Ill. Chi. U. Wisc. Stanford Cornell 63 9.3 15 16.5 17.5 19 13 10 1JHU Current 2006 RS $$ Bill’s 2.80 1.10 1.02 0.833 0.813 0.763 0.69 0.537 $$/TLA Millions 44 114 68 50 46 40 53 53 TT $$ Millions 74.2 9.6 25.8 22.8 5.7 47.7 47.3 7.2 Reasons for relatively low $$$ Basic research. • JHU/APL federal funding $1.43 Billion. • Nearly twice as much as next highest. • Federal dollars generally applied to basic research with no immediate commercial value. Reasons for relatively low $$$ Low number of Reports of invention relative to research $$ (AUTM 2004) School U. Wisc. Stanford MIT U. Cal. Cornell U. Ill. Chi. U. Wash. JHU RS $$ Millions 763 693 1,027 2,791 537 813 833 973 ROI’s 405 350 515 1196 225 262 233 217 RS $$$/ ROI 1.88 1.98 1.99 2.34 2.39 3.10 3.57 4.83 Reasons for relatively low $$$ Early stage inventions. • Nature of research results in inventions that are basic science, far removed from a commercial product. • Less interest by licensees. Reasons for relatively low $$$ Primary interest in advancing technology, not revenue Benefits of commercialization not fully understood by all faculty Entrepreneurship not internally encouraged or rewarded Increasing activity and revenue JHTT now fully open to business Entrepreneurial benefits recognized by increasingly larger percentage of faculty Schools understand benefits in encouraging inventive faculty JHTT Goals Improve faculty service • More licensing staff needed • Implement standard processes • Transparency for faculty • Advisory services on various matters JHTT Goals Increase deal flow • Expand licensing staff • Add flexibility to negotiations • Emphasize deals over maximum profit from each deal • Outreach to industry/licensees JHTT Goals Increase Net Revenue • Better and quicker market/value assessment • Increased Marketing • Value per license/increased deal flow • Reduce expenses JHTT Goals Increase Reports of Invention • Licensing associates interact with faculty • Benefits of inventions publicized • On-line systems make process easier • Customer service is a central focus JHTT Goals Start ups (new ventures) • Raise funding to advance early stage inventions to licensable status. • Create companies to either develop and market product, or to be sold to larger entity. • Be a part of the Angel/Venture community www.jhtt.jhu.edu Johns Hopkins Technology Transfer Bringing the benefits of discovery to the World. www.jhtt.jhu.edu Wesley D. Blakeslee, B.S., J.D. Johns Hopkins Technology Transfer wdb@jhu.edu 410-516-8300