1. TECHNOLOGY TRANSFER
BEST PRACTICES-
GEORGIA TECH
Patrick E. Reed
Director, Office of Technology Management
LSU Health Sciences Center – New Orleans

2. • Ranked 8th in ‘09 on The University Patent
Scorecard™
• Ranked 3rd in “Pure” software patents
and 8th in software patents overall in the
Duke Law School Science, Technology, and
Innovation Research Paper Series
• Ranked 11th overall for tech transfer and
commercialization in the Milken Institute
report Mind to Market, 9/20/06
• Inc. Magazine named Georgia Tech among
its list of the five U.S. universities known
for turning campus-based innovations into
start-ups
MENTIONS

3. FY2011
•16 FTEs (5 in licensing positions)
•$714M in Research Expenditures ($45M
from industry)
•384Technology Disclosures
•246 Patents Filed
•79 Patents Issued
•78 Licenses/Options Executed
•5 Startups, over 100 since 2000
•$3.8M Licensing Revenue
THE
NUMBERS

4. • Flexibility
• Accountability
• Transparency
• Efficiency
• Cater to Industry
BEST
PRACTICES

5. • Georgia Tech Research Corporation
– Separate 501(c)(3)
• Performs financial, contracting, and
some personnel functions for Tech
• Patent holder for Tech inventions
• Faster/more flexible negotiations
FLEXIBLE

6. • Georgia Tech is bound by state law, but
GTRC is not a state institution
HOWEVER…
• GTRC must stand ready to assign all of
its obligations to Tech if it was dissolved
–Can argue both ways in negotiations
–Assessment of risk
FLEXIBLE

7. • Choice of IP counsel
– ~$450 for partners and ~$300 for
associates
– A wide range of technical expertise
and experience
– Prompt service with the possibility
of 11th
hour filings
– Able to accommodate inventor
requests for specific counsel
• Could not delay GTRC actions
FLEXIBLE

8. • Licensing Associates responsible for a
portfolio of cases from cradle-to-grave:
– Evaluate and determine patent filing
strategy
• Work with outside legal counsel
– Market
– Negotiate licenses
– Execute licenses
– Post-licensing compliance
ACCOUNTABLE

9. • Signature authority
• No outside review of agreements
– No formal internal review
• Education is important
– University Policy and Procedure,
Export control, IRS regulations,
basic IP law, federal research
guidelines, negotiating skills, etc.
• Associates given special topic areas in
which to become the Office Experts
ACCOUNTABLE

10. • Avoid the Invention Disclosure Black
Hole…..
– Keep inventors up-to-date
– Explain the logic behind the
decisions you make and take pains
to have them agree
– If the decision is made NOT to
pursue an invention, make it as
quickly as possible
TRANSPARENT

11. Commercialization Roadmap
•Scorecard used to review an invention
– Allows for a more objective review
– Used as a conversation starter
•Serves as the document to lay bare the
decision making process
•Ultimately allows for better filing decisions
– This then leads to increased patent
expenditures reimbursement
TRANSPARENT

12. • GT:IPS™- Georgia Tech Integrated
Program for Startups
– Core class requirements plus
electives
– Successful on-time graduation of
the program granted access to a
no-negotiation license agreement
• The recently approved ELFS- Exclusive
License for Startups- contains many of
the GT:IPS™ license provisions
TRANSPARENT

13. • Timely triage of inventions precludes
unwise use of resources
• Make no blind filings
• No foreign filings on technologies that
are not yet encumbered or without a
very high probability of being so
• Extensive use of Knowledge Sharing
Systems TechTracs (KSS)- IP and
Agreements database
– Used on LSU’s campuses
EFFICIENT

14. • If our goal is to create relationships with
companies…BE INDUSTRY FRIENDLY!
• Office of Industry Engagement:
– Office of Technology Licensing
(now called Innovation
Commercialization and
Translational Research)
– Office of Industry Contracts (now
called Industry Collaborations and
Affiliated Licenses)
– International Contracts and
Technology Transfer (new group)
• A one-stop-shop serving as the “front
door” for industry
CATER TO
INDUSTRY

15. • Complete redesign of website
– Licensing
– Sponsored Research Opportunities
– Access to Equipment and Facilities
– Corporate Giving
– Recruit Students
– Executive Education
• Made sure not to lose sight of our main
constituents- the faculty and students
http://industry.gatech.edu
CATER TO
INDUSTRY

17. Make it easy for industry to find what they need!

18. • Each of the three offices have
permanent staff, but are cross-trained
– Consistency of message
– Plug-and-Play
– TRUE cradle-to-grave
• No downtime on an agreement or other
issue if someone is out of the office
– KSS heavily relied upon in order to
maintain this seamlessness
CATER TO
INDUSTRY

19. • Primary focus was maximizing industry
sponsored research dollars
– The majority of license agreements
only bring in ~$10,000 over the life
of the agreement
• TTOs talk to companies all the time
– LEVERAGE THIS FOR OTHER
OPPORTUNITIES
• Licensing is not neglected, it simply isn’t
relied upon as a money maker
CATER TO
INDUSTRY

20. FY2011
•16 FTEs (5 in licensing positions)
•$714M in Research Expenditures ($45M
from industry)
•384Technology Disclosures
•246 Patents Filed
•79 Patents Issued
•78 Licenses/Options Executed
•5 Startups, over 100 since 2000
•$3.8M Licensing Revenue ($1.3M was a one-
time bump from cashed in equity)
THE
NUMBERS

21. • Updated Technology Disclosure Form
– Transparent/Efficient
• Website Redesign
– Cater to Industry/Transparent
• Created an Inventor’s Guide
– Transparent
• Developing a strong marketing presence
– Cater to industry
• Invention inventory review and triage
– Efficient
• Entered all information into KSS
– Efficient
• Hired an LSUHSC PhD as Licensing
Assistant
– Accountable
• FACULTY OUTREACH!
IMPLEMENTING
BEST
PRACTICES AT
LSUHSC-NEW
ORLEANS

22. • More than doubled disclosures over the
three previous years (individually)
• Solid leads from marketing efforts
• Decreased office’s expenses through
triage and drafting provisionals in-house
• Identified a manageable subset of
technologies that are truly “active”
• Re-engaged faculty in the process
• Making good use of KSS and other
available resources
RESULT?

23. QUESTIONS?
Patrick E. Reed, Director
Office of Technology Management
LSU Health Sciences Center – New Orleans
504-568-3619
preed3@lsuhsc.edu
www.lsuhsc.edu/administration/otm/
@LSUHealthOTM