Sponsored Projects and Technology Transfer:

1. Sponsored Projects and Technology Transfer: Working Together to Build Successful and Effective Industry-University Cooperative Research Centers NCURA Region VI & VII Meeting April X, 2010 Newport Beach, California Sherylle Mills Englander, Director Randall Draper, Director Office of Technology & Industry Alliances Office of Contracts and Grants University of California Santa Barbara University of Colorado, Boulder

2. Introduction • What is a Center? • An organizational unit established to enhance the working relationship between industry and universities characterized by: • industrial relevant fundamental research; • industrial support of and collaboration in research and education; • direct transfer of university developed ideas, research results, and technology to industry.

3. Introduction • What are the benefits to industry? • Proprietary information for sponsors; • Rapid technology transfer to the sponsors; • Leveraged resources = research savings; • Access to faculty, students, and facilities; • Exposure to new ideas; • Interaction among sponsors, faculty, and student researchers.

4. Introduction • What are the benefits to universities? • Alternate sources of funding; • Levering existing resources; • Long-term partnerships with industry: • Seed grants; • Intellectual property; • Student support (e.g. REU); • Student placement; • Exclusive research opportunities.

5. Introduction • How are Centers structured? • Industry/University Cooperative Research Center (IUCRC) Model • Federally Funded Research and Development Center (FFRDC) Model • University Affiliated Research Center (UARC) Model • Other, e.g. Engineering Research Center

6. Introduction • How are Centers organized? • By-Laws • Membership Agreements • Operations Memorandum • Other: • Letters of Commitment • License Agreements • Non-Disclosure Agreements

7. Introduction • Who are the players? • Government (Federal and/or State) • Industry • Other (e.g. NOAA/NIST/NREL) • Universities: • Faculty Investigators • Center Administrators • Business Developers • Industry Representatives • Central Administrators (sponsored projects/technology transfer)

8. Introduction • What are some of the potential governance issues? • Single Institution – Multiple Institutions • Large Businesses – Small Businesses • Single Focus – Multiple Foci • Advisory Committee – Executive Committee • Shared Research – Exclusive Research • Faculty initiated – Strategically initiated

9. CU Case Study # 1 • The Center for Membrane Applied Science and Technology (MAST) • NSF IUCRC, established in 1990 • CU is the lead institution with participating investigators from NJIT, CSM, CSU, Clemson, Cincinnati • Industry/Laboratory Participation • Anasys Instruments Corporation Pall Corporation • Compact Membrane Systems QinetiQ North America • Conoco-Phillips • EPRI National Renewable Energy Laboratory • Eli Lilly and Company U.S. Army Tank Automotive R&D Center : • W.L. Gore & Associates U.S. Bureau of Reclamation • Millipore Corporation

10. CU Case Study # 1 (MAST) • Research and Educational Mission: • To advance the technology of membrane separations, including basic research and related developmental activities for the use of membrane technologies in separation processes; timely and effective technology transfer ; promotion of education in membrane science and technology. • Research opportunities for 35 Ph.D. and 26 M.S. degrees and 218 undergraduates • Annual Revenues: $650,000 • Projects: 80 • Faculty/Researchers: 30

11. CU Case Study # 1 (MAST) • Costs: $50,000/year membership fee; 3 year agreement • Benefits: • “Proprietary” research and information; • Cutting edge research results; • Efficient technology transfer; • Leveraged resources; • Low overhead (6%); • Access to faculty members, students, and facilities; • Student recruitment • Intellectual Property: 7 patents

12. UCSB Case Study No. 1:

13. The ICB Structure • “UARC” (university affiliated research center) funded by the U.S. Army • UCSB is lead, with Caltech and MIT as subawardees • Five primary research foci, each with separate funding task orders under master agreement: • Biomolecular Sensors • Bio-Inspired Materials/Energy • BioDiscovery Tools • Bio-Inspired Network Science • Cognitive Neuroscience • 60 faculty and 150 researchers across the three institutions

14. ICB: Industry Program • Motivations for ICB Industry Partnership Program: • Accelerated tech transfer is key metric in Army evaluations • Need for additional funding to help meet matching requirements • Attract as many companies as possible • Big, small, local, national, in any market area.

15. ICB: Industry Partnership Program • Tiered Benefits (annual fee): • Top Level (paid membership fee required): • First right to negotiate a license to inventions fully developed on ICB’s 6.1 (basic) DOD research funds. • Second Level (no fee; free membership): • Companies have right to submit proposals for 6.2 funds allocated to ICB for research collaborations between company, university and Army lab. • UCSB provides a first option to negotiate an exclusive license in an appropriate field of use • Both levels: • members receive invitation to attend annual research symposium and various ICB events throughout the year.

16. ICB: Complexities • Intellectual Property • Intellectual property benefits did not prove to be a driving force! • IP can be needlessly tied up in election periods for companies that clearly have no interest • Assuring IP Policy works for UCSB, Caltech and MIT • Cat herding was a key skill • Post-award: assuring all three universities are implementing policy • Automatic license rights to 6.2 collaborators • Is the company in the best position to bring the technology forward?

17. ICB: Complexities • Non-IP Issues • Smaller companies may not have worked with federal grants before. Significant hand holding by Sponsored Projects to assure subrecipient compliance • contract delays common with no IDC rates and need for additional admin controls • Sponsored Projects cannot control which company is selected. • Some companies found funding paperwork intensive – used to researching with less administrative burden • Due to diversity of research thrusts, hard to attract higher level, fee-paying members

18. ICB: Points to Ponder When working with a new Center: • Understand from the faculty (and design structure accordingly): • What research areas/markets are involved • What companies they want to attract • Whether they anticipate start up companies forming • Sophistication of person responsible for industry outreach director • Engage your tech transfer to understand (to prevent needlessly encumbering IP): • What types of rights do the particular markets run on? • How critical will patent rights be for product development? (software v. pharma compounds)

19. CU Case Study # 2 • Center for Biorefining and Biofuels (C2B2) • Strategic Center, established in 2007 • Part of the Colorado Collaboratory for Renewable Energy supported by the State of Colorado • Consortium of CU, CSU, CSM, and NREL • Industry participation: Catchlight Energy GICON Ceres Korth O”Neil Engineering Cobalt Biofuels Live Fuels ConocoPhillips Mascoma Ecopetrol OPX Biotechnologies Flad Architects Shell Global Solutions General Motors Solix Biofuels Genesis Biofuel Valero Gevo ZeaChem

20. CU Case Study # 2 (C2B2) • Research and Education Mission: • C2B2 exists to improve fundamental understanding and develop new technologies in areas relevant to the future commercialization of integrated, sustainable biorefining, and biofuels processes in accordance with the following objectives: • Integrating renewable sources of materials and energy into the chemical industry; • Providing relevant training for students and industrial scientists; • Creating a vertically and horizontally integrated research and training environment.

21. CU Case Study # 2 (C2B2) • Research Thrusts: • Feedstock Engineering, Plant Biotechnology & Crop Science; • Biochemical Engineering; • Thermochemical Engineering; • Process Engineering; • Product Engineering; • System Assessment and Analysis. • Projects: 29 • Faculty Investigators: 168

22. CU Case Study # 2 (C2B2) • Annual Revenues: $1M; $1.5M; $1.5M; $500K • Cost: $50,000/year membership fee for large companies; $10,000/year fee for small companies; 2 year agreement • Benefits: • Expertise in virtually all aspects of biofuels and biorefining research • World-class facilities: CU, CSU, CSM & NREL • Talent for hire: Outstanding students and post doctoral researchers • Networking: Interaction with diverse C2B2 member companies • Return on investment: Access to intellectual property rights and substantial institutional and state matching contributions

23. CU Case Study # 2 (C2B2)

24. CU Case Study # 2 (C2B2) General Issues: Purpose Industry: University: Business Focus Mission Focus Private Purpose Public Purpose Private Knowledge Public Knowledge Product Development Personnel Development

25. CU Case Study # 2 (C2B2) General Issues: Culture Industry: University: Profit Non-Profit Protection Publication Competition Collaboration Centralized Decentralized Line Authority Diffuse Authority Single Pt. of Contact Multiple Pts. of Contact Fast Turnaround Deliberation/Consensus

26. CU Case Study # 2 (C2B2) Specific Issues • Multiple “Participating Institutions” • Conflicting business culture w/ National Lab • Complicated structure and functions • Pressure to perform (“Seamless Business Model”) • Growth and sustainability • Moving members from “shared research” to “exclusive research” • Intellectual Property • Publication/Disclosure • Exclusivity/Non-Compete

27. UCSB Case Study No. 2:

28. SSLEC Structure • Funded 100% by for-profit sector • 14 multi-national companies pay $500,000/year • UCSB has top researchers in area. • Mission: to develop novel solid state based technologies for energy efficient lighting and displays, power electronics, and renewable energy

29. IP Powerhouse from “Day One” 118 invention disclosures received from SSLEC/SSLDC research since 2002. 80% of inventions under active license or option with member(s). (92.5% before October, 2008) Invention Disclosures Over Time

30. Industry Members: Structure • SSLEC runs without research contracts • SSLEC has an IP Policy that outlines the membership’s access in detail • Members remit payment • Upon payment, SSLEC issues letter indicating the company is entitled to the benefits outlined in the SSLEC IP Policy (attached to letter for clarity) • Elected inventions added to one umbrella single license/option agreement between UCSB and the Member Streamlined, highly efficient administration.

31. SSLEC: Points to Ponder • A contract is not always needed! • Can unduly complicate member’s entry into center, particular with foreign companies • For a potentially “IP intensive” center: • Review center visitor procedures very carefully to avoid IP “gaming” (where a company asserts joint ownership to get free rights) • Work with tech transfer to assure obligations to membership are affordable • Long election period with lots of inventions could be unaffordable!

32. Lessons Learned • Experiences from the audience • What can you share with us about starting and supporting successful (or unsuccessful!) Centers