Introduction to the Offices of Biotechnology Business Development

Introduction to the Offices of Biotechnology & Business Development John L. Harb Director, Office of Biotechnology _________________ October 30, 2008

Our Offices The Office of Biotechnology serves as the technology transfer office of the College. The office facilitates licensing of College technology to industry and research collaborations between industry and faculty. The Office of Business Development is focused on capturing and/or developing novel or more aggressive technology transfer opportunities.

“Technology Transfer” n Definition n “Technology transfer is the process of transferring scientific findings from one organization to another for the purpose of further development and commercialization. ” – Association of University Technology Managers n Origin of Field n Bayh-Dole Act 1980 n Encourages universities to patent and license the results of federally-funded research n Universities have rights in intellectual property that resulted from federal research funding n Commercialization of inventions benefit the public good n Royalties are distributed to inventor and reinvested for education and research purposes

University Technology Transfer n Knowledge Transfer n Publications & Presentations n Collaborations n Material Transfers n Sponsored Research n Consulting n Inventions n Licensing

Your Responsibilities n Acceptance Agreement n n Abide by Einstein’s Patent Policy Promptly disclose inventions Assign ownership rights Third-Party Agreement Obligations n n Publications Use of Material Confidentiality Reporting

Our Responsibilities n Support Einstein faculty researchers n Facilitate technology transfer relationships n Protect the school and its faculty members n Comply with obligations to sponsors and licensing partners

Services n Invention Disclosures n n n Licensing Material Transfer Agreements n n n Agent Reagent Program Industry-Sponsored Research Agreements Grant required IP management language n n Patent Management Resources and data sharing plans Consulting Agreements

Services (cont’d) Confidentiality Agreements n Inter-Institutional Agreements n Review IP language n n Clinical Trial Agreements n Foundation/Non-Profit Grants

Invention Process n Invention Disclosure Form n Details of invention and its reduction to practice n Funding & material sources n Upcoming publications n Commercial contacts Patent Committee n Intellectual Property Protection n

Licensing Process Market, market n Business discussions with commercialization partners n n Confidentiality Agreement n Terms n License Agreement n Royalty is distributed in accordance with Einstein’s Official Policy on Patents and Licensing Agreements (“Patent Policy”)

Patent Policy Distribution n Net Royalty is distributed as follows: n 1/3 – Inventors (personally) n 1/3 – Laboratory Research n 1/3 – College

Material Transfer Process n Various forms n Incoming vs. Outgoing n Academic vs. Industry Partners n Human material? n Hazardous material? mta@aecom. yu. edu & reagents@aecom. yu. edu

Research Tools n Disclose! n Online, interactive form Review for commercial value n Market to companies (“Agent Reagent”) n n High volume transfers repositories (mice, plasmids, etc. )

Industry-Sponsored Research PI Role n Develop Research Plan n Develop Budget Office Role n Review Budget n Negotiate Agreement Points to remember: n Overhead policy is consistent with NIH rate n Involve us in the process early on n Keep science and business separate

Hot Topics in Agreements Publication Rights n Liability n Intellectual Property Rights n Confidentiality n

Consulting n n Private Agreements Must be approved by: n Department Chair Dean (Office of Biotechnology) n Not in place of outside counsel n n n Proposed guidelines and suggested language Clauses of concern n Conflicts Prior rights & Einstein rights n Time commitments n n Liability Distinction from research activities Student involvement

Office of Biotechnology Staff John Harb, M. S. P. H. n n Director Assistant Dean, Scientific Operations David Schoenhaut, Ph. D. n Assistant Director Benjamin Neymotin, M. A. n Contracts and Licensing Associate

Office of Business Development Staff Richard Kosman, Sc. M. M. n Director David Silva, Ph. D. n Senior Business Development Analyst Janis Peck, M. B. A. n Business Development Analyst

Contact Us n Website: www. aecom. yu. edu/biotechnology n Forms & Policies n News & Publications n Contact Information Phone: 718 -430 -3357 n Office: Belfer Building, 9 th Floor n

Want to learn more about IP? Join us… Tuesday, December 9 th “Intellectual Property Overview for the Academic Researcher” Same Room Different time - Noon Guest Speaker Kenneth P. George, Partner Amster, Rothstein & Ebenstein LLP (intellectual property law firm)

Thank You Any Questions?