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Forging Strong Ties
Eric Giegerich
UC Berkeley
AUTM 2016
San Diego
What Are Strong Ties?
How do we forge strong ties
between research and licensing offices?
Forging Strong Ties
Opening Questions
• How do we forge strong ties between
research and licensing offices?
• What varying perspectives do we bring?
• How do our offices relate optimally?
How do our officers relate optimally?
• What are good models for offices large
and small?
Which Ties?
• Tech Licensing Office Contracts and Grants Office
• C&G dominated by federal perspective
• Some C&G offices have dedicated industry person / team
• Tech Licensing Office Industry Contracts Office
• Multiple backgrounds – C&G, TT, Contracting
• Tech Licensing Office Dedicated Industry person
• Embedded in C&G or TT office, orientation depends on context
When Do We Need Each Other?
Licensing Needs Research
• Grant terms in the SRA
• What did we promise to the
sponsor?
• History of negotiation, intent
• Contacts at companies
• Who did you work with there?
• SRA + IP license
• Teaming on joint pitches
Research Needs Licensing
• IP terms in SRAs
• What can we offer to the sponsor?
• Negotiating together
• Major research agreements
• IP centric agreements
• Potential IP and BIP analysis
• BIP reporting
• SRA + IP license
• Teaming on joint pitches
Multiple Perspectives
Licensing
• Object: Inventions, IP,
marketing & biz dev
• People: Inventors
• Company: Small to Medium
• Sometimes corporate, start ups
• Money: Up front Fees,
Royalties, Patent cost
reimbursement
• Reporting: University to Fed,
Company to University
Research
• Object: Proposal / SOW
• People: Researchers
• Company: Medium to Large
• Sometimes small, rarely start ups
• Money: Research costs
• Reporting: PI to Company
Multiple Perspectives
Licensing
• Values: Lab to market, fair
consideration, diligence /
stewardship, leverage research,
economic development
• Drivers:
• Companies filling IP pipeline
• Inventors creating start ups
• Metrics:
• No. of inventions, patents, licenses
• No. of start ups
• Licensing revenue
• Patent reimbursement
Research
• Values: Research integrity,
faculty service, fair
consideration
• Drivers:
• Companies need new IP
• Companies need trained talent
• Faculty need research funding.
• Metrics:
• No. of research agreements
• Research funding
One Face or Multiple?
• How do we position ourselves to companies?
• What is the face of the university?
• Are we one office or two?
• Portal to the university. One stop shop.
• Who is the lead?
Some Best Practices
• Joint case discussion
• Joint staff development
• Joint negotiation on some cases
• Get people involved early
• Teaming by Assignments
• Assignments by department or field
• Discuss academic departments, faculty, and companies
• Attend meetings together
Regional Variety
“Well, that’s fine if you’re
Stanford, Berkeley or Case.
But we’re a little office.”
Options for Small Offices
• Dedicated Industry Contract person in C&G office
• Dedicated Industry Contract person in TT office
• No matter the size, you can meet and share notes
Discussion
• What are examples of strong ties?
• How can research and licensing work together better?

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The Great Divide- Research and Licensing -- Eric's Slides (1)

  • 1. Forging Strong Ties Eric Giegerich UC Berkeley AUTM 2016 San Diego
  • 2. What Are Strong Ties? How do we forge strong ties between research and licensing offices?
  • 3. Forging Strong Ties Opening Questions • How do we forge strong ties between research and licensing offices? • What varying perspectives do we bring? • How do our offices relate optimally? How do our officers relate optimally? • What are good models for offices large and small?
  • 4. Which Ties? • Tech Licensing Office Contracts and Grants Office • C&G dominated by federal perspective • Some C&G offices have dedicated industry person / team • Tech Licensing Office Industry Contracts Office • Multiple backgrounds – C&G, TT, Contracting • Tech Licensing Office Dedicated Industry person • Embedded in C&G or TT office, orientation depends on context
  • 5. When Do We Need Each Other? Licensing Needs Research • Grant terms in the SRA • What did we promise to the sponsor? • History of negotiation, intent • Contacts at companies • Who did you work with there? • SRA + IP license • Teaming on joint pitches Research Needs Licensing • IP terms in SRAs • What can we offer to the sponsor? • Negotiating together • Major research agreements • IP centric agreements • Potential IP and BIP analysis • BIP reporting • SRA + IP license • Teaming on joint pitches
  • 6. Multiple Perspectives Licensing • Object: Inventions, IP, marketing & biz dev • People: Inventors • Company: Small to Medium • Sometimes corporate, start ups • Money: Up front Fees, Royalties, Patent cost reimbursement • Reporting: University to Fed, Company to University Research • Object: Proposal / SOW • People: Researchers • Company: Medium to Large • Sometimes small, rarely start ups • Money: Research costs • Reporting: PI to Company
  • 7. Multiple Perspectives Licensing • Values: Lab to market, fair consideration, diligence / stewardship, leverage research, economic development • Drivers: • Companies filling IP pipeline • Inventors creating start ups • Metrics: • No. of inventions, patents, licenses • No. of start ups • Licensing revenue • Patent reimbursement Research • Values: Research integrity, faculty service, fair consideration • Drivers: • Companies need new IP • Companies need trained talent • Faculty need research funding. • Metrics: • No. of research agreements • Research funding
  • 8. One Face or Multiple? • How do we position ourselves to companies? • What is the face of the university? • Are we one office or two? • Portal to the university. One stop shop. • Who is the lead?
  • 9. Some Best Practices • Joint case discussion • Joint staff development • Joint negotiation on some cases • Get people involved early • Teaming by Assignments • Assignments by department or field • Discuss academic departments, faculty, and companies • Attend meetings together
  • 10. Regional Variety “Well, that’s fine if you’re Stanford, Berkeley or Case. But we’re a little office.” Options for Small Offices • Dedicated Industry Contract person in C&G office • Dedicated Industry Contract person in TT office • No matter the size, you can meet and share notes
  • 11. Discussion • What are examples of strong ties? • How can research and licensing work together better?

Hinweis der Redaktion

  1. 10-15 min per presentation. Speak to a broad array of office types and sizes, negotiating SRAs while anticipating licensing deals, trends. Audience will be licensing officers, and geared more toward licensing officers. A few key open-ended questions in advance for the audience.
  2. 10-15 min per presentation. Speak to a broad array of office types and sizes, negotiating SRAs while anticipating licensing deals, trends. Audience will be licensing officers, and geared more toward licensing officers. A few key open-ended questions in advance for the audience.
  3. -Collect examples of how strong relationships have been forged -Collect examples of success stories Stanford uses info on commercial NERFs. ICO goes to OTL for advice, not permission. Decision is made within ICO.