Technology Transfer At JHU: Myths

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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
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