Office of Technology Management (OTM) Functions at WashU

Office of Technology Management (OTM)
Functions at WashU
RA forum
March 23, 2015
Sara Ahmed, PhD
Technology Transfer Trainee
otm.wustl.edu
Office of Technology Management
• Moved December 2013
• @4240 Building in the CORTEX
District
Bayh-Dole Act
– Passed by Congress in 1980
– Applies to all federally funded research (e.g. NIH, NSF
grants)
– Mandates that Patent Rights vest to the University
– Universities to manage IP from federal grants
– The University has the responsibility to promote public
utilization/commercialization of inventions at “fair
market value”
– Share of revenue by University with Inventors
WU Intellectual Property Policy
• All intellectual property (including lab notebooks, cell lines
and other tangible research property) shall be owned by the
University if :
 significant University resources were used, or
 it is created pursuant to a research project funded through
corporate, federal or other external sponsors
• Applies to all WUSTL faculty, staff, graduate students and
post-docs (but not undergraduate students, unless they are
employed by WUSTL)
OTM Mission
To promote the public utilization of University
innovations created by faculty and employees
through the formation and management of
commercial partnerships
OTM Service Focus
• Promoting education and awareness of tech transfer
• Material Transfer Management (MTAs)
Academic Institutions
WUSTL Materials
Industry
• Triage all WUSTL invention disclosures; file patents or return
IP to inventors
• Management of WU patent portfolio
• Licensing of patented and unpatented Intellectual Property
• Licensing revenue distribution to WU and inventors
OTM Initiatives – Tech Transfer Education
Technology
Commercialization
Seminars
OTM Trainee
Program
Technology
Transfer
Workshop
Balsa Intern
Program
Faculty
Workshop
Women Innovation
and Entrepreneur
Project (WIE)
BioGenerator/I6
collaboration
Bear Cub
Program
Inventions
Therapeutics
Diagnostics
Software
• Novel compounds
• New use for existing
compounds
• Device to detect marker
• Questionnaire
• Technical information
• Object/Source code
• Computer programs
• Diagnostic readouts
Research Tools
Methods
Devices
• Transgenic animals
• Antibodies/hybridoma
• Protein/peptide
• Research reagents
• Proprietary assays
• Technical information
• Surgical/medical device
• Machinery
• Add-on technology
OTM Technology Assessment Process
60 Days
Submission
of an
invention
disclosure
Inventor
Meeting
with OTM
Stage 1
OTM
Diligence:
How to
protect the
invention?
OTM
Diligence:
Market
Need/
Market Fit
Feedback
and/or
Possibly
File Patent
Stage 2
Stage 3
Decision
Patent Prosecution Timeline
File
Provisional
Patent
Application
File Regular
Patent
Application
and/or PCT
Patent
Application
Published
Invention
Disclosed
to OTM
Invention is
conceived and
reduced to
practice
+ 12
months
0
+6
months
12 months
US and/or
Foreign Filings
+ 12
months
Patent
issues
Office Actions
and
Responses
30 months
48-60
months
Licensing the Invention
IP Protection
Licensing the Invention
Marketing
IP Protection
Licensing the Invention
Licensing
Exclusive or non-exclusive
licenses
Marketing
IP Protection
Moves university technology
into the public domain
Start-up Companies based on WU Technology
LipoSpectrum
XTEND ENERGY
EYECYTE THERAPEUTICS, INC.
BIOCLASSIFIER
AcuPlaq, LLC
CardiaLen
Toward pain-free defibrillation™
OTM Statistics
FY08
FY09
FY10
FY11
FY12
FY13
FY14
Invention Disclosures
98
125
104
136
143
151
142
US/PCT Filed Patents
94
106
76
83
98
107
113
Licenses (Technologies)
42
44
41
48
40
35
30
Licenses (copyright to
industry)
n/a
n/a
n/a
2
3
9
16
MTAs (academic)
674
817
718
700
639
810
624
MTAs (Industry)
51
62
61
95
88
116
105
$17.0M
$7.9M
$6.4M
$6.3M
$6.2M
$7.0M
$9.0M
4
2
2
2
2
4
4
Revenue
Start-up Companies
License Revenue
25% to
OTM
35% to the
inventor(s)
40% to the
School
OTM Organization - 2015
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Website: otm.wustl.edu
Phone: 314-747-1910
Campus Box 8013
@4240 Duncan Avenue
(314) 747-0920 (phone)
(314) 362-5872 (fax)
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– Group : Washington University in St. Louis – Office of
Technology Management