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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

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Introduction to the Offices of Biotechnology & Business Development

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

  2. 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.

  3. “Technology Transfer” • Definition • “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 • Origin of Field • Bayh-Dole Act 1980 • Encourages universities to patent and license the results of federally-funded research • Universities have rights in intellectual property that resulted from federal research funding • Commercialization of inventions benefit the public good • Royalties are distributed to inventor and reinvested for education and research purposes

  4. University Technology Transfer • Knowledge Transfer • Publications & Presentations • Collaborations • Material Transfers • Sponsored Research • Consulting • Inventions • Licensing

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

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

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

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

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

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

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

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

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

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

  15. Hot Topics in Agreements • Publication Rights • Liability • Intellectual Property Rights • Confidentiality

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

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

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

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

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

  21. Thank You Any Questions?

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