Technology Transfer At JHU: Myths, Misconceptions, and Things You Never Knew

1. Technology Transfer At JHU:Myths, Misconceptions, and Things You Never Knew Wesley D. Blakeslee, B.S., J.D. Johns Hopkins Technology Transfer Medical School Council March 21, 2007

2. Technology Transfer Office • Technology Transfer Office converts JHU inventions to real world products by: • Licensing to companies that can advance the technology, or • Assisting in creation of new companies to develop the products

3. Emergence Of Technology Transfer As A Priority For The University

4. In the beginning . . . … prior to 1980, all inventions conceived or reduced to practice in the performance of federally funded research … were owned by the federal government.

5. So . . . • Technology developed at Universities based upon federally funded research, for the most part went nowhere. • WHY? - because most federally funded research is basic, early stage, and requires a serious investment in capital and time to convert to a marketable product. • Drugs – 7 to 10 years, $50 to $100 million.

6. Bayh-Dole Act of 1980 • Stimulate the US economy and facilitate technology transfer • Universities granted the right to elect to take titleto inventions conceived or reduced to practice in the performance of a federal grant, contract, or cooperative agreement • and are obligated to...

7. Obligations of Bayh-Dole • Disclose each new invention • File US & international patent applications • Attempt to license inventions to develop the technology • Share license revenues with inventors • Use remainder to support research & education

8. AUTM Licensing Survey of 2005 • $42 billion in research expenditures • 10,270 new US patent applications • 3,278 US patents issued • 4,932 new licenses and options • 628 new companies formed

9. JHU IP Policy As a condition of employment, Hopkins faculty and staff are obligated to report inventions made with university resources (to JHTT) and to assign title to the University in exchange for a share of net income from licensing the inventions.

10. Revenue sharing • 35% inventor’s personal share • 15% inventor’s research share • 15% inventor’s department • 30% school, 5% university • with 25/10 to school and university for royalties exceeding $300K

11. Recent Example Started a new JHTT effort 6 Months: Compliance • 1 technology, 3 inventors: • $900,000 brought in thus far • Inventors share $315,000

12. How to Report an Invention • Report of Invention Disclosure Form (ROI) www.jhtt.jhu.edu • Word and .pdf downloadable formats • Soon will use online submission • Enables JHTT to evaluate the invention

13. Why think about IP? • Convert knowledge and research results to products for the benefit of the world • Create value, monetary and non-monetary, for authors, inventors and academic units which support them

14. Myths, Misconceptions, and Things You Never Knew

15. Myth: JHTT is “Paid for” by F & A • JHTT expenses are not included in F & A calculations for Federal funding purposes (per the Controller) • Not a direct expense in support of the research mission • JHTT is in fact paid for by the schools from their Dean’s office budgets

16. Myth: JHU Tech Transfer Does Not Make Money

17. FY06 Invention Accounting ($000) Figures include extraordinary income of $292K FY05 and $3M FY06

18. Hollywood Accounting • 40% net profit would be considered good in most businesses • But Schools pay the costs and receive only small part of the revenues • Distributions to inventors, research accounts and departments made “off the top” from gross receipts less only direct unreimbursed patent expenses

19. Myth: JHTT Is Not As Good As Other Top Schools

20. Licenses Per Licensing Associate School Licensing Agts Agts/TLA U. Wisc. 19 203 10.7 MIT 15 134 8.9 JHU1 8.3 72 8.7 Cornell 10 80 8.0 Stanford 13 89 6.8 U. Ill. Chi. 17.5 88 5.0 U. Cal. 63 273 4.3 U. Wash. 16.5 70 4.2 1JHU actual 2005

21. Percent Of Inventions Converted To Licenses Comparison To PeersAUTM 2004 School RS $$ ROI’s Agts. % U. Wisc. 0.763 405 203 51 Cornell 0.537 225 80 36 U. Ill. Chi. 0.813 262 88 34 U. Wash. 0.833 233 70 30 JHU1 1.03 272 72 26 MIT 1.02 515 134 26 Stanford 0.69 350 89 26 U. Cal. 2.8 1196 273 23 1JHU actual 2005

22. Income leaders • Columbia - $220 M (90% from 4 technologies, no longer participating in AUTM survey) • New York University - $109 M • Stanford - $47 M • University of Minnesota - $45.5 M • WARF - $47 M • Florida State - $14 M - royalties down from $52 M in 2002 from Taxol • MIT - $25.8 M

23. JHU Knowledge Transfer Results for FY04 • First in country in federal funding (second to entire system of California), $1.016B • First among peers* in filing for patents on inventions disclosed • 4th (last) quartile among peers in average royalty revenue per license and total revenue earned per research dollar * Top 15 universities in U.S. with research expenditures over $500M and with medical schools

24. Reasons for relatively low $$$ Chronic under funding of Johns Hopkins Tech Transfer

25. Staffing: Comparison to PeersAUTM 2004 School Licensing Support Research $$ JHU1 9.3 11 1.10 Billion U. Cal. 63 103 2.80 MIT 15 19 1.02 U. Wash. 16.5 39 0.833 U. Ill. Chi. 17.5 15.8 0.813 U. Wisc. 19 22.5 0.763 Stanford 13 11.5 0.69 Cornell 10 10 0.537 1JHU Current 2006

26. Staffing: Comparison to PeersAUTM 2004 School TLA RS $$ $$/TLA TT $$ Bill’s Millions Millions U. Cal. 63 2.80 44 74.2 JHU1 9.3 1.10 114 9.6 MIT 15 1.02 68 25.8 U. Wash. 16.5 0.833 50 22.8 U. Ill. Chi. 17.5 0.813 46 5.7 U. Wisc. 19 0.763 40 47.7 Stanford 13 0.69 53 47.3 Cornell 10 0.537 53 7.2 1JHU Current 2006

27. Reasons for relatively low $$$ • Basic research. • JHU/APL federal funding $1.43 Billion. • Nearly twice as much as next highest. • Federal dollars generally applied to basic research with no immediate commercial value.

28. Reasons for relatively low $$$ • Low number of Reports of invention relative to research $$ (AUTM 2004) School RS $$ ROI’s RS $$$/ Millions ROI U. Wisc. 763 405 1.88 Stanford 693 350 1.98 MIT 1,027 515 1.99 U. Cal. 2,791 1196 2.34 Cornell 537 225 2.39 U. Ill. Chi. 813 262 3.10 U. Wash. 833 233 3.57 JHU 973 217 4.83

29. Reasons for relatively low $$$ • Early stage inventions. • Nature of research results in inventions that are basic science, far removed from a commercial product. • Less interest by licensees.

30. Reasons for relatively low $$$ • Primary interest in advancing technology, not revenue • Benefits of commercialization not fully understood by all faculty • Entrepreneurship not internally encouraged or rewarded

31. Increasing activity and revenue • JHTT now fully open to business • Entrepreneurial benefits recognized by increasingly larger percentage of faculty • Schools understand benefits in encouraging inventive faculty

32. JHTT Goals • Improve faculty service • More licensing staff needed • Implement standard processes • Transparency for faculty • Advisory services on various matters

33. JHTT Goals • Increase deal flow • Expand licensing staff • Add flexibility to negotiations • Emphasize deals over maximum profit from each deal • Outreach to industry/licensees

34. JHTT Goals • Increase Net Revenue • Better and quicker market/value assessment • Increased Marketing • Value per license/increased deal flow • Reduce expenses

35. JHTT Goals • Increase Reports of Invention • Licensing associates interact with faculty • Benefits of inventions publicized • On-line systems make process easier • Customer service is a central focus

36. JHTT Goals • Start ups (new ventures) • Raise funding to advance early stage inventions to licensable status. • Create companies to either develop and market product, or to be sold to larger entity. • Be a part of the Angel/Venture community

37. www.jhtt.jhu.edu Johns Hopkins Technology Transfer Wesley D. Blakeslee, B.S., J.D. Johns Hopkins Technology Transfer wdb@jhu.edu 410-516-8300 Bringing the benefits of discovery to the World. www.jhtt.jhu.edu