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Office of Technology Management chnology ent O Te M m ffi of a e c na g e e g a o c n fi e a f f m T M e O e c y n h g t n o l o o l o n g h y c O t M e n f T fi e a f c n e o m a e o e g g c f e a fi T m f n e a e O c n h M t n y o g l o U I C Office of Technology Management Fiscal Year 2007 Annual Report • University of Illinois at Chicago Office of Technology Management • University of Illinois at Chicago (MC 682) 1853 West Polk Street, Suite 446 • Chicago, Illinois 60612 312.996.7018 • [email protected] • www.otm.uic.edu Copyright © 2007 The Board of Trustees at the University of Illinois All Rights Reserved Contents From the Director 03 About the Office 04 Invention Disclosures 05 Licensing Activity 05 Patent Activity 06 Income Distribution 08 Income and Expenses 08 FDA-Approved Drug 09 Technologies 10 Contacts 14 Reporting Looking Ahead: Fiscal 2008 Goals The Office of Technology Management (OTM) reports to Dr. A report on fiscal 2007 activity would be incomplete without Avijit Ghosh, the Vice President for Technology and Economic looking ahead to fiscal 2008. Our focus in the coming year Development, and also works closely with the Interim Vice will be on the following areas, each designed to build on or Chancellor for Research, Larry H. Danziger. consolidate the gains we’ve made over the last few years: Mission • Host intellectual property seminars and events for OTM works to ensure that UIC maintains its reputation as faculty and graduate students. a world class research institution with an outstanding faculty. • Attend tradeshows and conferences, We rely on our staff, external contacts, and legal, business, acquiring qualified contacts at each. and financial expertise to support inventors and help partner • Implement feedback mechanisms for faculty and companies develop UIC technologies. licensees; address survey feedback as appropriate. • Update information systems and other processes, Two of our most critical missions are supporting and including an update of the office website and installing encouraging UIC inventors and helping commercial firms a new content management system. license UIC technologies. Fiscal 2007 Snapshot Disclosures 117 U.S. Patents Filed 162 U.S. Patents Issued 10 Licenses and Options 12 Licenses to Start-up companies 1 Royalties $4,052,586 Patent Expense Reimbursement $291,324 2 2007 Fiscal Year Annual Report From The Interim Director, David Gulley In 2007, the UIC OTM had a very productive and successful year. Our first FDA approved drug went to market—PrezistaTM, a new protease inhibitor for drug- resistant strains of HIV. This was the result of research collaborations in the 1990s among several groups, including UIC’s Arun Ghosh (now at Purdue University). You can read more on page 9. Our 2007 customer satisfaction survey reported the satisfaction level of our licensees and inventors. Eighty-seven percent (87%) of our licensees responding to the survey reported their interactions with the OTM were either satisfactory or very satisfactory, while about 88% of UIC inventors felt the OTM had met or exceeded their expectations. Other accomplishments for 2007 included improvements to our licensing and other agreements; the introduction of a new start-up license template; educational seminars for faculty and others; focused business partnering at industry events; preparing for the OTM’s move into new space; and a successful collaboration with the College of Business to enable teams of MBA students to develop business plans that won regional and national competitions. For 2008 our plans include completing the relocation of the OTM; increasing our level of engagement and targeting of potential licensees; continuing our patent enforcement and license compliance efforts; expanding our educational programs for faculty and staff; enhancing our relationship with the College of Business Administration; and increasing our collaboration with UIUC’s OTM to support scaled- up web-based marketing and communications. Since April 2007, it has been my pleasure to work with such a dedicated and enthusiastic team of professionals at the OTM. I thank them for their commitment to making a difference and posi- tively impacting people’s lives. We look forward to a successful 2008 and I welcome your feedback on how we can improve our service to you and the campus. David L. Gulley, Ph.D. Interim Director and Associate Vice President for Technology and Economic Development 3 2007 Fiscal Year Annual Report About the Office of Technology Management The Office of Technology Management (OTM) currently has 14 full-time equivalent employees, 6 part-time student interns, and numerous outside business and legal consultants at its disposal. The office has adopted a documented, systematic and timely process for the analysis, protection, and commercialization of university intellectual property. In addition, the OTM has developed ongoing productive relationships with faculty, staff and industry. Due to the foresight, efforts and support from campus, University leadership, and the University’s Board of Trustees, the OTM is surrounded by a more vibrant entrepreneurial environment than ever before. This environment facilitates technology transfer activities, the formation of start-up companies, and ultimately local and state economic development. The OTM Process U.S. Patenting / U.S., Foreign Patenting Licensing Research Summaries Screening Assessment Marketing License Compliance Disclosed Evaluation Negotiations DISCLOSURES OF RESEARCH SUMMARIES The OTM actively reaches out to faculty to encourage invention disclosures, called “research summaries” of potentially commer- cializable intellectual property. LICENSING ● Screening Evaluation ● Marketing Within six to eight weeks of receiving a disclosure, a screening Considerable time and resources are devoted to researching team presents a business-case analysis, called a screening and contacting the best possible licensing partners. evaluation, to the office with a recommended course of action ● License Negotiations regarding commercialization. The results of the screening The OTM conducts license negotiations with interested industry evaluation are then presented to the inventors. partners, taking care to formulate the best possible agreements. ● Assessment ● Compliance When warranted, a more thorough business analysis is After a technology is licensed, the OTM continues to monitor completed which may involve the services of outside consultants the licensee to ensure all terms and conditions are adhered to, to connect with industry experts. This adds to the OTM’s and the technology is successfully taken to market. understanding of the potential market for the technology and 4 helps determine further patenting and marketing actions. 2007 Fiscal Year Annual Report Invention Disclosures The Office of Technology Management provides a variety of Fiscal 2007 Disclosures by College/Unit educational and informative events for the campus community. Applied Health Sciences 2 Liberal Arts and Sciences 14 In fiscal 2007 we focused on department specific events and Dentistry 1 Medicine 61 one-on-one meetings with faculty across campus. We also Education 1 Nursing 1 hosted an inventor recognition gathering co-sponsored by Engineering 20 Pharmacy 14 the Colleges of Business, Pharmacy, and Medicine. Fiscal 2007 Disclosures by Type Campus Invention Disclosures: The types of disclosure are determined by OTM and used on Fiscal 2003-Fiscal 2007 our website and flyers to facilitate industry identification of During the fiscal year, ending June 30, 2007, 117 inventions technologies of interest. were disclosed by the Chicago campus. • Anitbodies 1 • Health Information 3 • Cardiovascular 6 • Immunology 3 150 • CNS 5 • Infectious Disease 4 • Communications 2 • Inflammation 3 120 122 • Data Organization 12 • Materials 3 117 • Dental 2 • Miscellaneous 24 90 • Diagnostic 4 • Oncology 8 87 83 84 • Drug Delivery 10 • Opthamology 2 60 • Engineering 12 • Proteomics 1 s • Graphics, Visualization 2 • Research Tools 2 30 • Hardware 1 • Stem Cells 4 • Health Imaging 4 FY03 FY04 FY05 FY06 FY07 Disclosure Licensing Activity Licenses and Options: Fiscal 2003-Fiscal 2007 Number of Start-Ups: Fiscal 2003-Fiscal 2007 35 33 30 8 28 25 7 6 5 5 5 15 4 14 12 3 2 5 1 1 1 1 FY03 FY04 FY05 FY06 FY07 FY03FY03 FY04FY04 FY05FY05 FY06FY06 FYFY07 Fiscal 2007 Licenses and Start-up Companies Licensed in Fiscal 2007 Options by College/Unit OrthoAccel Technologies, Inc. Dentistry 4 OrthoAccell Technologies designs, develops, markets, Engineering 1 and sells a revolutionary orthodontic device which reduces Liberal Arts and Sciences 2 the treatment time for braces by half. Medicine 4 Public Health 1 5 2007 Fiscal Year Annual Report Patent Activity A patent is a property right granted by the U.S. Government Provisional applications can be filed without claims, inventor- or other foreign government that allows inventors (and patent ship determinations or formal papers. They merely “hold the owners) to receive value for their intellectual innovations by date of filing” however, and will not result in a patent issued by providing the patent holder with a time-limited (20 years in the the U.S. Patent and Trademark Office. They must be followed U.S.) exclusive monopoly. In exchange, the patent describing up with a regular (non-provisional) U.S. patent filing within a the new innovation is published, thereby advancing general year’s time in order to obtain patent protection. knowledge and contributing to growth in that field. Patent property rights are like other property, and can be In the U.S., patent applications can be of two general types: sold, leased or transferred to others for “royalties,” most often provisional or non-provisional (“regular” applications). Provisional through licensing. applications are often used to file quickly when necessary to preserve the right to file US or foreign applications at a later time. Fiscal 2007 Patent Activity Fiscal 2007 U.S. Patent by College/Unit Filed Issued U.S.
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