FISCAL from the Directors
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FISCAL From The Directors Dear Colleagues, Advisory Boards for Fiscal 2011 This year marks a decade of strong commitment to technology transfer and economic development at the University of Illinois. It is fitting that this is also the year the Board of Trustees created Urbana the Office of the Vice President for Research and appointed Larry Schook as Interim Vice President, enabling the next step in the evolution of our offices. Bruce Vojak, Chair Van Anderson Advocacy and value creation have been the hallmarks of our Hans Blaschek accomplishments this past year as demonstrated in each Scott Carney initiative and achievement. Proof of concept funding programs Albert Feng on both campuses will help attract licensing partners for our Merle Giles high potential technologies. And joining with other top research Gregory Girolami universities to work with Osage University Partners will help us Gaines Hall realize the financial potential inherent in the preemptive rights Wen-Mei Hwu that are included in most licenses to University start-ups. Jozef Kokini Philip Krein The University of Illinois at Chicago, together with the NIH, Steven Leigh became the first in the world to share patents with Unitaid’s Paul Magelli Medicines Patent Pool, which makes new medicines more Romana Nowak affordable in developing countries. The Urbana campus Michael Philpott developed a unique label license for MIDA boronate technology Jennifer Quirk that enables Sigma-Aldrich and other suppliers to offer its Molly Tracy customers a royalty free license to the University’s intellectual David Weightman property, thus encouraging broad adoption of the technology in Huimin Zhao multiple industries. Chicago The efforts of the past ten years are yielding exciting rewards. Royalties have been strong for the past three years, largely William Beck due to the success of the HIV therapeutic Prezista. Our Offices Sue Fullman licensed a record number of start-ups this year, and in a four Dibyen Majumdar week period three start-ups from the Urbana campus raised more Bellur Prabhakar than $50 million in funding. Brenda Russell Larry Tobacman As always, none of our accomplishments would be possible Sol Shatz without the University’s stellar faculty and their willingness to Christine Wu engage in the technology transfer process. And we continue to be grateful for the support of University administration. There are exciting initiatives underway that indicate the coming year will be one of continued growth. We look forward to partnering with you. Nancy Sullivan Lesley Millar Director Director Office of Technology Office of Technology Management Management Chicago Urbana–Champaign *cover image based on ILinnovations mirror.me profile 2 | FISCAL 2011 The Offices of Technology Management Fiscal 2011 Summary Fiscal 2011 Totals Urbana Chicago TOTAL Disclosures 182 164 346 US Patent Applications Filed 166 183 349 US Patents Issued 68 23 91 Licenses & Options 55 44 99 Start-ups 12 8 20 Patent Reimbursement $1,446,568 $ 361,960 $1,808528 Royalties Earned $ 6,362,548 $ 12,718,808 $ 19,081,356 Fiscal 2011–Urbana Colleges and Units U.S. Patent Colleges and Units Disclosures Applications Filed U.S. Patents Issued Licenses & Options ACES 26 13 8 8 Applied Health Sciences 1 1 Beckman Institute 14 36 13 11 Education 3 1 Engineering 92 118 55 24 Fine and Applied Arts 6 Institute for Genomic Biology 15 10 2 2 Liberal Arts & Sciences 42 56 19 21 Medicine at Urbana 1 NCSA 4 2 2 1 State Surveys 5 1 1 1 Veterinary Medicine 5 2 1 2 Fiscal 2011–Chicago Colleges and Units U.S. Patent Colleges and Units Disclosures Applications Filed U.S. Patents Issued Licenses & Options Applied Health Sciences 3 1 1 5 Architecture & the Arts 1 Dentistry 4 8 1 1 Education 2 Engineering 27 32 6 7 Liberal Arts & Sciences 9 10 2 1 Medicine 91 98 14 27 Medicine - Peoria 2 1 2 Medicine - Rockford 2 2 Nursing 2 1 Pharmacy 19 39 3 4 Public Health 2 Note: As a result of the large amount of interdiciplinary research on campus, inventions are often associated with more than 1 college or unit. As a result, the numbers reported in the table may be counted multiple times, once for each associated college or unit. FISCAL 2011 | 3 University–Wide Updates & Activities Dr. Lawrence B. Schook Named Interim Vice Stanford v Roche President for Research On June 6, 2011, the U.S. Supreme Court issued its decision in Stanford v. Roche, a case involving a dispute over the ownership In November 2010 the Board of Trustees established the office of several patents related to HIV-detection kits. The decision of the vice president for research by re-titling the Vice President analyzed the question of invention ownership under the federal for Technology and Economic Development and expanding that Bayh-Dole Act (“the Act”), and may have an impact on research portfolio to include important responsibilities for the University’s universities, such as ours, which commercialize federally funded vast $725 million-a-year, externally funded research enterprise. inventions. President Michael J. Hogan appointed Lawrence B. Schook to serve as Interim Vice President for Research. The Supreme Court limited its review to the issue of whether the Bayh-Dole Act automatically vested title in federally funded Dr. Schook will facilitate collaborative research opportunities, inventions to Stanford. It held that the Act does not automatically streamline related policies and procedures, and act as a coherent, vest title to inventions in the federal contractor. The Court ruled unified voice for U of I research. that the Act did not contain adequate language to explicitly vest title to federally-funded inventions to universities and other federal contractors. This non-explicit language could not displace the Rankings and Recognition presumption that an inventor owns his/ her inventions. It is noteworthy that the Court said that it’s holding did not undermine The University’s technology transfer and economic development the scheme of the Act, whereby federal contractors may elect to system was nicely acknowledged this past year. retain title in inventions and commercialize the inventions. This is because many universities either institute policies to obtain • The University of Illinois Research Park was selected as one assignments from employees, or require their employees to sign of “10 Startup Incubators to Watch” by Inc.com. contracts requiring assignment of inventions. • A report by the Intellectual Property Owners Association (IPO) In light of the decision, the University of Illinois is reviewing its listing the top 300 organizations granted U.S. patents in 2010 own practices and assessing whether any changes will need to be included the University of Illinois as one of only 14 universities made to best practices going forward. among that group. • In addition, TechWeek, a conference celebrating technology, Start–Up America: Illinois Partnership web and interactive communities named John Banta, CEO & Managing Director of IllinoisVENTURES, to their list of the 100 In May, entrepreneurs from across Illinois gathered to launch most innovative names in Chicago technology. “Startup Illinois,” a branch of the Startup America Partnership. Startup Illinois enables mentors, funders, major corporations, service providers and state government organizations to Record Number of Start-ups collaborate to help entrepreneurs start and scale new companies in the state. Startup Illinois doesn’t fund new businesses; rather The University of Illinois licensed intellectual property to 20 start-up it links them to established advisors and organizations. Startup companies in Fiscal 2011, a collective record in one fiscal year Illinois is focused on helping young companies with high growth and also a record for each campus individually, 12 in Urbana and potential. 8 in Chicago. In a time of slow economic growth for the state and the nation, the Offices of Technology Management mark this as Startup Illinois is leveraging the best practices and national a significant achievement and further evidence that the stellar network of the Startup America Partnership, and combining them research conducted by our University’s faculty really is an engine with our growing state network to give Illinois entrepreneurs access of job creation and economic development. to valuable resources. illinois.startupamericapartnership.org 4 | FISCAL 2011 The Offices of Technology Management Mobile Apps Diamond v. Chakrabarty 30th Anniversary This past year the University began supporting iOS and Android Ananda M. Chakrabarty, Ph.D., is a Distinguished University development on campus and is set up to deploy apps to the Apple Professor at the University of Illinois College of Medicine at App Store and Android Market. Chicago. Prior to joining the faculty at UIC, Dr. Chakrabarty worked at General Electric, where his research led to the development The iOS Developer Program License Agreement and the Android of a genetically-manipulated microorganism that later became Market Developer Distribution Agreements have been signed so the subject of a landmark decision from the Supreme Court of the Offices of Technology Management can help the University the United States. At issue was whether genetically modified community access iOS and Android developer tools. The Offices organisms could be patented since the law held that living things are also managing the submission of University-owned apps to were not patentable. In the 1980 decision the court ruled in favor of Apple’s App Store and to the Android Market. Dr. Chakrabarty stating that “the fact that micro-organisms are alive is without legal significance for purposes of the patent law.” U of I partners with Osage University Partners In September the University of Illinois celebrated the 30th anniversary of the Diamond v. Chakrabarty decision with a series of special events on the Urbana campus, including a public lecture Osage University Partners has raised a $100 million venture fund and a symposium focusing on the legal and business aspects and partnered with a lineup of some of the country’s top research of the decision.