1. Nicole Baute Honorée
LSU System Director of Research & Economic
Development Initiatives
Presented to:
LSU Transition Advisory Team – Commercialization &
Technology Transfer Task Force Meeting
May 8, 2013

2. Overview
 Organizational Structure and Responsibilities
 Research & Tech Transfer Activity Metrics
 Key Areas for Improvement in Campus TTOs
 Enhancing Future Capacity and Opportunity
5/8/2013 2

3. Current Organizational Structure
 Tech transfer offices established separately on various
campuses, beginning in 1985 at LSU A&M
 Each Chancellor determines how to fund, staff, manage
and evaluate tech transfer operation on that campus
 No centralized management of tech transfer at the System
level or the R&T Foundation
 Campuses function separately except when shared
invention disclosures are received
5/8/2013 3

4. How does an LSU Invention Get Licensed?
Campus TTO
receives Invention
Disclosure from
Faculty/Staff
Campus TTO reviews
patentability &
marketability of
invention, decides how
to proceed
Campus TTO markets
invention, files
patents, identifies
partners, conducts
due diligence
Campus TTO negotiates
license terms with
business partner, using
template agreements
System staff reviews
license materials for
compliance, prepares
materials for Board
approval and
Presidential signature
Campus TTO
manages the
license and the
relationship with
the company
5/8/2013 4

5. Roles & Responsibilities for Technology Transfer
Campus System
Chancellor defines the mission and objectives of the
campus Tech Transfer Office (TTO)
Develop template agreements for campus TTOs
Chancellor/designee hires TTO personnel, establishes
budgets and sets performance expectations
Review proposed licenses for compliance with BoS
regulations, policy and standard template language and
prepares materials for BoS consideration
TTO evaluates invention disclosures to determine next
steps in commercialization
Manage PM-67 Process on behalf of President, for all
matters including licenses
TTO retains patent counsel and manages the patent
prosecution process
Offer professional development & resources to campus
TTOs and Research Offices
TTO markets the invention to identify potential
commercial partners
Provide assistance to campus TTOs during staff vacancies
or upon campus request
TTO conducts due diligence to assure that the partner is
capable of bringing the invention to the market
Participate in national organizations, provide input on key
issues and share policy information with campus TTOs
TTO negotiates all types of commercialization-related
agreements
Collect, report and distribute annual activity metrics to
AUTM and other interested entities
TTO should use standard template agreements to
facilitate the negotiation process, assure consistency
with laws & policies
TTO prepares proposed license materials for System
review, Board approval and Presidential signature
TTO implements, monitors and maintains the license
agreement terms and obligations
TTO conducts outreach to faculty for continued
development of disclosures and awareness of IP issues
5/8/2013 5

6. LSU System Support of Technology Transfer
 Developed multiple template
agreements (10) for all types of
licensing transactions
 Licensed relational database for use by
all campuses TTOs in 2006
 Launched LSU Council of Tech
Transfer Officers
 Negotiated statewide license of key
marketing research tool for use by
every university in LA
 Engage external consultants to provide
professional development and
assistance on key issues
 Proposed revisions in 2010 to Bylaws
and PMs relative to tech transfer
 Manage consolidated annual AUTM
metrics reporting
 Streamlined and expedited Board of
Supervisors license review process:
 Shifted proposed license
agreements from Academic Affairs
Agenda to the Consent Agenda
 Eliminated Board approval of non-
exclusive license agreements
 Eliminated Board approval of any
proposed license which is
substantially similar to one already
approved (i.e. crop varietals)
 Allowed campus submission to
BoS of proposed agreements if
negotiations are substantially
complete but not finalized
5/8/2013 6

7. Significant Board Matters: Why Licenses??
 In 2005, Board of Supervisors revised its Bylaws, defined licenses as
“Significant Board Matters”
 Concern over campus TTO failure to adhere to national best
practices, entering into agreements which created unreasonable university
liability or which did not contain due diligence for development or
payments
 In 2007, Board again revised its Bylaws, requested development of a
standard uniform process for licensing with template agreements and
anticipating less Board review
 In 2010, proposed draft policy revisions, developed in conjunction with
System staff, campus tech transfer directors and the General Counsel, were
rejected by three campuses and not submitted to the Board
 Proposed revisions update Chapter VII of Bylaws, incorporate /eliminate
PM-64, revise PM-16 as a vehicle for delegating signature authority
(handout)
5/8/2013 7

8. Research and Technology
Transfer Activity Metrics
5/8/2013 8
Inputs Outputs

9. National University Research Landscape
ALL U.S. Universities
 63% federally funded
 Total R&D $$ change
 One year (FY10-11): 6%
 Five year (FY06-11): 31%
 Federal R&D $$ change
 One year (FY10-11): 9%
 Five year (FY06-11): 32%
LSU System
 42% federally funded
 Total R&D $$ change
 One year (FY10-11): -1%
 Five year (FY06-11): 14%
 Federal R&D $$ change
 One year (FY10-11): 1%
 Five year (FY06-11): 21%
NSF HERD FY2011: $65 billion academic R&D expenditures
$41 billion from federal sources
5/8/2013 9

10. National Commercialization Landscape
Benchmarks for Technology Transfer Activity
 1 invention disclosure per ~$2.5 million in R&D
 Patent apps filed on ~60% of new disclosures
 ~25% of disclosures eventually get licensed
 1 start-up company per ~$100 million in R&D
 ~47% of legal expenses reimbursed
 ~0.5% of licenses generate >$1 million
 Average ROI for Universities ~ 3.3%
Source: Speaker Analysis of AUTM FY2011 Repot
5/8/2013 10

11. $0
$50,000
$100,000
$150,000
$200,000
$250,000
$300,000
$350,000
$400,000
$450,000
LSU System Annual R&D Expenditures
(without UNO, dollars in thousands)
Total
Federal
LSU Average
Fed as % of
Total : 38%
5/8/2013 11

12. LSU System Invention Disclosures
0
20
40
60
80
100
120
140
160
180
2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012
Actual vs. Expected Invention Disclosures
(expect 1 per every $2.5 million in R&D expenditures)
Actual
Disclosures
Expected
Disclosures
5/8/2013 12

14. LSU System Invention Disclosures, By Campus
0
10
20
30
40
50
60
70
80
2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012
LSU A&M
Ag Center
Pennington
HSC-NO
HSC-S
LSU-S
5/8/2013 14

15. LSU System Licenses & Options Signed, by Campus
0
5
10
15
20
25
30
35
2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012
HSC-S
HSC-NO
Pennington
Ag Center
LSU A&M
5/8/2013 15

16. Start-up Companies based upon
LSU System Inventions
0
1
2
3
4
5
6
7
2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012
Actual Start-ups
Expected Start-ups
Expect 1 start-up company for each ~$100 Million R&D
5/8/2013 16
Express License for
Faculty Start-ups
(ELFS) template
agreement launched
12/2012 to further
increase start-ups

17. LSU System License Income & ROI
(licensing income as % of R&D expenditures)
0.00%
0.50%
1.00%
1.50%
2.00%
2.50%
3.00%
3.50%
$0
$2,000,000
$4,000,000
$6,000,000
$8,000,000
$10,000,000
$12,000,000
$14,000,000
ROI
LicensingIncome
Avg. University ROI: 3.3%
5/8/2013 17

18. LSU System License Income, By Campus
$0
$1,000,000
$2,000,000
$3,000,000
$4,000,000
$5,000,000
$6,000,000
$7,000,000
$8,000,000
$9,000,000
$10,000,000
$11,000,000
$12,000,000
2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012
LSU A&M
Ag Center
Pennington
HSC-NO
HSC-S
Home Run: Ag
Clearfield Rice
Home Run: Ag Cotton
5/8/2013 18

19. LSU System License Income, without “Homeruns”:
Scale Changes Entirely
-$200,000
$0
$200,000
$400,000
$600,000
$800,000
$1,000,000
LSU A&M
Ag, w/o Homeruns
Pennington
HSC-NO
HSC-S
5/8/2013 19

21. LSU System Campuses:
Tech Transfer Office Staffing Levels
(System total FTE in white box, year office launched in legend)
0
1
2
3
4
5
2008 2009 2010 2011 2012
LSU A&M (1985)
Ag Center (1986)
Pennington (2000)
HSC-NO (1999)
HSC-S (2001)
LSU-S (2006)
5/8/2013 21

22. Looking to the Future
5/8/2013 22

23. Key Areas for Improvement
in Campus TTOs
 Implement best practices in operations, agreements and
accounting (address common audit findings, next slide)
 Maintain coordinated and consistent data management
 Enhance faculty outreach to increase activity
 Consistently use template agreements
 Rely on legal expertise for complex arrangements
 Hire trained staff with significant experience
 Establish better linkages with industry
relations, sponsored research and economic development
offices
5/8/2013 23

24. Internal Audit Findings:
Campus Tech Transfer Office Issues
Common, pervasive deficiencies found in all campus tech
transfer offices include:
 Lack of proper due diligence regarding the suitability of
potential licensees and of proposed agreements
 Lack of adequate intellectual property valuation practices
 Lack of licensee performance monitoring to ensure adequate
progress in commercialization
 Lack of invoicing and collection of amounts due to university in
accordance with the terms of executed contracts
 Lack of proper management of conflicts of interest and
conflicts of commitment
 Lack of sufficient campus attention to key performance
metrics
5/8/2013 24

25. Potential Organizational, Policy & Procedural Changes
 Implement key changes in Bylaws, as per 2010 proposal, including approval of
agreements at a level below the Board of Supervisors
 More effectively use R&T Foundations, university research parks and incubators
around the state
 Inventory current campus TTO expertise and resources to determine potential for
greater sharing and identify additional needs
 Obtain access to expanded and specialized legal expertise
 Require regular and consistent use of all aspects of KSS database
- Data tracking - Financial Accounting - Marketing
- IP bundling - Agreement monitoring - Faculty contacts
 Provide enhanced educational opportunities and/or mentoring of new staff and
greater involvement in AUTM
5/8/2013 25

26. LSU Must Expand Commercialization Ecosystem
Source: Malakoff, D. “The many ways of making academic research pay off”. Science, February 15, 2013.5/8/2013 26

27. Discussion & Questions
5/8/2013 27