South Texas Technology Management A Regional Tech Transfer Office

1. South Texas Technology Management A Regional Tech Transfer Office Ken Porter UTPA UTB UTHSCSA UTSA

2. Transform single-campus OTV to regional STTMMajor Benchmarks1. Stand-up office2. Gain traction at UTHSCSA3. Expand services across 4 institutions

3. Gain Inventor Buy-In for STTM

4. Sustainability of STTM

5. Stakeholders Increase (long-term) shareholder (stakeholder) value • Faculty — theresource • Students — interns, innovators: science, business, law • Administration • Campus —associate deans for research, chairs • System — RTT, Texas Ignition Fund • Business community • local — advisory committee, start-up management • state — SATAI, Emerging Technology Fund • Nation — SBIR, STTR • world — export controls, developing country considerations • Public — the benefactors and beneficiaries

6. question: Why a Regional Office? answer:Human Resources Small OfficeSTTM 1 or 2 people 5 licensing FTE; 6 support Jack of All Trades Specialization Licensing StaffTechnology, institution, strategic portfolios Key Support Staff License Manager STTM gets paid Patent Administrator Private PAIR, training, MPEP Marketing Manager inventor handbook, current web site, virtual business network

7. STTM STTM Assist. VP & Director FinancialManager Administrative Support Staff Patent Administrator Licensing Associate Licensing Associates Licensing Associates Licensing Associates License Manager Marketing Coordinator Since 8/07 8 FT hires4 new jobs Everyone Licenses Ken Porter PhD Chemistry, MBA Director Open Office Manager Licensing Staff Support Staff Sean Thompson MS Biotech, MBA Finan Sr Licensing Assoc Chris Burke PhD Molec BiologySr Licensing Assoc Victor Saenz BA Finance Financial Manager Mary Kay Mastracci AA License Mgr Ruben Lopez MOT, MBALicensing Assoc John Fritz MOT, MBA MarketingLicensing Assoc Natalie Eary JD Patent Manager Richard Rodriguez BS EE, MBA Marketing Mgr, DBA Joseph Agyin PhD Organic Chemistry MBA Finance & Tech MgmtLicensing Assoc, PT Claude Longoria MBA EntrepreneurshipLicensing Associate John Cole MSc, PhD Special Asst to VPR Formerly VP CTRC

8. Why Use STTM? (inventors and partner institutions) to gain access to valuable resources • Skilled professionals; science & business training • Access to IIPAC; technical & entrepreneurial resource • Funds to advance inventions to market, POCsparc,rr • Partnerships withattorneys • Full timemarketing manager • Standard contractsflexibility for business • Providecertainty of title • Research network forcollaborations, e.g., UTPA pt • Business network, e.g., capital and management, STTM lends credibility, personal contact essential

9. POCsparc; $1M FundProof of Concept — short proposals to accelerate research commercialization$10k or $25k, 6 mos, objective & milestone driven, Spring and Fall RFPsProposals:Invention disclosure form (IDF) on file at STTM; Case Manager assigned;PIs must be faculty at STTM-served institution Grants from STTM will support solely projects of high commercial interest;Can be used to generatepreliminary results for TIF application.April, October 2008 and April 2009 RFAs46 proposals received, 28 funded$500k total to UTB, UTPA, UTSA, and UTHSCSA4 proposals funded through POCroadrunner, which is an ETF supplement to UTSAApril 2009 in processApril 17 proposals due, May 11 selections complete, June 1 research commences

10. Partner IP Attorney Firms Fulbright and Jaworski (Austin) Jackson-Walker (San Antonio) Winstead (Houston) Meyertons et al (Austin) • Local or nearby firms • encourage personal inventorcontact • increase STTMcapacity • The value proposition is to stretch STTM IP • budget over many technologies, i.e., Create Opportunity

11. Invention Timeline: Conception to Patent Protectionpat app is a resource allocation tool $10 3 $10 4 $10 5 PTO File US Patent File PCT Provisional Patent PCT National Phase Priority 12 30 Date months months TTO Invention Disclosure Form (IDF) Provisional Patent Marketing and Patenting Licensing Research Observation Hypothesis Prediction Experimentation INVENTION

12. STTM Patents Inventions Invention requires: • Conception – formulation in the mind of the inventor • Reduction to practice • Creation of the invention (demonstrate how to make it) • Testing or validation (explain how it works) Patentable invention must be, under title 35 US Code: Useful §101Novel §102 Non-obvious §103 In view ofPrior Art Prior artis anything published or publicly disclosed before the date of invention,including combinations Recently in KSR v. Teleflex the Supreme Court raised the bar for nonobviousness, i.e., chapter 35 section 103 no longer relies on TSM (teaching-suggestion-motivation), which increases the likelihood that hindsight may creep into decisions

13. Marketing to Industry • Three Questions • What does it do? • What problem does it solve • Why does it matter to industry and customers • Patentably distinct • What are the alternatives? • How big is the opportunity? • Market size • Market window • Competitors • Identify single application • No flock or school • Inventor’s ideas • Industry trends • Identify companies • Inventor contacts • TTO contacts, existing and sought out • Online search • Identify individuals • Inventor contacts • Professional societies • Conferences • Industry publications • Cold calls Go / No Go Financial Decisions Based on Economic Analysis

14. When you make money, we make money Expenses • STTMcannot subsidize business,e.g., ongoing patent costs • But can offer: • Reasonable payments over time • POC funds Revenue • when Licensee earns a return, STTM must earn a return • finance-able event triggers milestone payment • Licensed Product sales yield royalty Azaya, 1stexclusive, diligence-based license • Quarterly reports & payments • Clinical development milestones & payments • Merck, 1st revenue-bearing license for UTSA • Single digit percentage royalty, which increases with annual sales • 8-figure development/sales milestones • 7-figure research to UTSA/UTHSCSA

15. Market, Management, and Moneymarket analysis drives IP managementmarket success drives financial returni.e., Reality-Based Technology TransferSTTM is Open to Business 4 criteria to obtain an Exclusive License to Intellectual Property for a Start-UpCompany • Business Plan — Prove the market, go-to-market strategy, finance plan, and timing • Management— Research drivers and skill sets are not the same as commercial drivers and skill sets • COI management plan for faculty • Access to capital — Engines run on Gas!

16. Strategic Plan Overcome BarriersGovernance Council Agreement • Geography • Culture Exploit Assets • Full Technical Complement IP Portfolio • Clinical, Life, Physical, and Engineering Sciences • Industrial Engineering will support transportation-challenged economy Transform Technology Transfer; philosophy & practice • from: Passive patent-centric, Inventory Model • to: Active license-centric, Just-in-Time Model • Case Manager focus • Marketing & Portfolio Management, e.g., Stage-Gate Model (Cooper) • Efficiency • ROI

17. FY2009 Actions • POCsparc, rr • Review April 2008 award reports • $200k invested, $5M proposed external funding • Progress reports for selected projects • Streamline process, 6 weeks from submission to account activation • Progress Report • Introduce staff and inventors • Announce new web site, www.utsttm.org • Highlight recent events, e.g., SATC, KCI, Witte, TPR • Publish Inventor Handbook • Inventory to Just-in-Time approach • Active inventor participation, drive for consensus • Announce October 17 POCsparc RFP • STTM Reference Guide • Regional office established and staffed • Just-in-Time approach implemented • Bedrock principles include focus on faculty support • License-centric operations; diligence-based licenses • License revenue supports enhanced STTM resources