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good afternoon thank you for joining us for the third of five research compass series events my name is tiffany willoughby research education programs and outreach manager in the office of research joining me today are your speakers brian scott brent schultz and paul nichols brian scott industry contract manager is a dallas native as well as a utv alumnus he is a certified professional contract manager through the national contract management association and has over eight years of experience working in higher education the first individual to join us on this virtual platform to present is brian scott hi good afternoon today i'll be talking about the office of technology commercialization and how we can assist you with contracting with industry so the office of technology commercialization our mission is to enhance the research entrep on enterprise at ut dallas by establishing multi-faceted collaborations with industry partners the types of contracts that the office of technology commercialization can assist you with are any contracts that are solely funded by or directly relating to corporate sponsors we typically deal with non-disclosure agreements when we're beginning discussions with an industry partner about potential avenues of sponsored research we can assist you with material transfer agreements to transfer tangible materials between the university and corporate sponsors we can set up collaboration agreements with industry partners as well as sponsored research agreements we do also help with various agreements like data use agreements software licenses and the like one item to note is the office of technology commercialization we do not process any agreements um that our federal flow through with an industry partner so we do not handle any sbir or sttr subcontracts or allocations of rights those are all processed to the office of sponsored projects and they would be happy to help you with any of those types of agreements one of the items that we are very well equipped to help help our faculty with is developing an adequate statement of work this is one of the items that we always stress should be done first and early in any engagement with an industry sponsor a well-defined statement of work really does set the foundation for successful successful negotiations as well as a successful project a well-defined statement of work should define the who what where when and why as well as the how of the research project effort so it's very important to determine which party will be responsible for what portions of the research up front this is where we identify any third party materials that might be necessary to perform the research which allows us time to negotiate separate agreements to bring those materials into the university it helps establish the expectations of both parties so that both parties at the completion of the uh the project will both be happy this includes the milestones deliverables um that are consistent with the party's expectations also having a full statement of work at the beginning of negotiations allows the contracting officers both on the university side as well as the company side to determine what is the appropriate agreement type we have various different models for engagement so understanding the full project will help us determine the right agreement from the outset we always recommend beginning an industry engagement by outlining a statement of work so please contact us early and we'd be glad to help with that the otc has made a lot of progress lately to streamline negotiations we have simplified our template agreements to offer industry friendly terms up front to reduce the amount of negotiation necessary we've been very active in engagement and outreach to help form and promote partnerships as well as to help industry understand our processes as well as some of the various advantages of contracting with the university as opposed to a contract research organization we def we meet with industry representatives um anytime to discuss questions and again like like i've said we prefer to be involved as early as we can in the discussions um so that we're able to offer creative solutions and help keep the discussions on track the otc is here to offer clear guidelines on intellectual property terms to help minimize negotiations the otc has specialized contract contractual experience that will help benefit the commercial benefit for the sponsor as well as protecting the academic mission and the public benefit of ut dallas performing the research each industry contracting arrangement is unique um i would say not it's very rare that two are the same and so we have expertise to make sure that each engagement is structured appropriately and that each agreement contains appropriate terms uh applicable to the research project that we plan to carry out we recommend contacting us early to have a clear understanding of any background intellectual property that might be used in the research project the otc would be happy to review your intellectual property portfolio so that we can identify what background ip would be necessary to complete the project this is very important in discussions with industry sponsors because a lot of the times the background intellectual property may be subject to third party rights so it's very important that we're engaged in those discussions early so that we can convey to the sponsor what what rights they are in what rights they can obtain to the background intellectual property because that could affect their their desire to fund the project understanding the background intellectual property also helps us to understand what rights we should grant to the foreground intellectual property through the research agreement we try to focus on flexible engagements and one of the items that um we have been able to offer within the past couple years is an intellectual property assignment model so this is a pilot approach to structuring intellectual property with industry sponsors that ut dallas is now offering this will allow the industry sponsor to own the intellectual property that comes out of the project we worked with ut system office of general counsel to offer this as a way to remove intellectual property as a barrier in negotiation these types of agreements we are able to get the agreement in place in about two weeks time which is much faster than most industry contracts because of this streamlined approach this eases the financial uncertainty for industry sponsors there are set criteria and requirements that apply and as long as certain projects meet those requirements we can offer this approach the otc collaborates with stakeholders both internal and external as i mentioned before some research projects might involve third party materials software or specialized equipment the office of technology commercialization uh negotiates those agreements to bring those materials in make sure the agreements are used uh consistently consistently with the um agreement in which we brought them in on um again there might be software licenses necessary and the otc will be happy to to negotiate those we also work with internal uh compliance so anytime there's human subjects involved hazardous materials or export control regulations the office of technology commercialization will work with the other offices on campus to make sure we we have the correct approvals in place next up we have brent schultz brent schultz director of the ut dallas office of technology commercialization has been with the office since its inception in 2008. he holds an mba with a concentration in entrepreneurship from ut dallas and a bs in mechanical engineering from texas a m university brent has extensive experience in ip management new technology translation commercialization licensed contract negotiation business plan development and startup mentoring welcome brent okay thank you tiffany thank you everyone hello i'm brett schultz i'm the director of the office of technology commercialization so in addition to the industry-sponsored research function that brian just spoke about the otc also handles the commercialization marketing and licensing of university technology so we we manage the intellectual property portfolio of the university so here as a org charts we've got marvin young he's our intellectual property manager he's also a patent agent and reporting to him is robert min he's our technology analyst and also a patent agent we have dan stovall our patent specialist and then brian scott who just heard from industry contracts manager and uh and reporting to him is julie saturday she's our industry contract specialist and uh we just closed out fy20 just a few stats 192 active patents 200 patent and provisional patent applications pending 48 active licenses and options and we broke 4 million in license revenue which was a record year for us we're very proud of that okay so board of regents rules 9101 now i'm sure everybody has read and probably memorized board of regents rules but um but i thought it would be important to go through a few sections that we frequently get questions on so there's a link to uh 9101 right there so section two ownership of intellectual property uh this section defines what board of regents considers to be intellectual property and i'm going to read it it's uh for purposes of this rule intellectual property includes but is not limited to any invention discovery creation know-how trade secret technology scientific or technological development research data work of authorship and software regardless of whether subject to protection under patent trademark copyright order laws clearly that's a very very very broad definition but there are a few carve outs that we'll get to in sections five and seven so section three individuals subject to this rule basically if you're an employee of ut dallas you're subject to this rule section 4 intellectual property subject to this rule so that is defined as intellectual property developed within the course and scope of employment of the individual or resulting from activities performed on ut system time or with support of state funds or resulting from using facilities or resources owned by ut system or any ut system institution other than incidental use incidental use being you know power lighting hvac that sort of thing section five intellectual property not subject to this rule is basically the inverse of section four it's ip that's outside the individual's course and scope of employment not developed on utd time and without the use of ut system resources so for example if you're a polymer chemist and you're at home over the weekend and you develop a new polymer that ip would be owned by the board of regents because polymer chemistry is within your your course and scope of employment however if you're a polymer chemist and you're at home over the weekend and you write a cookbook that would not be owned by the board of regents because coming up with delicious recipes is not within your scope of employment utd so i also include section 7 here which is a carve out for scholarly works which states the board of regents will not assert an ownership interest in the copyright of scholarly or educational materials artworks musical compositions and literary works related the author's academic or professional field section six covers students intellectual property so generally speaking board of regents does not assert ownership in student intellectual property unless they're an employee of the university and that ip was developed within their scope of employment and lastly section 11 it covers an employee's obligation to disclose new ip to the otc and it reads before intellectual property owned by the board of regents is disclosed to any party outside the ut system to the public generally or for commercial purposes and before publishing same the creator shall submit a reasonably complete and detailed invention disclosure of such intellectual property to the president or designee which is the otc for determination of board of regents interest okay so the technology disclosure process so so when should you disclose well section 11 of 9101 talks about when you should disclose but i also wanted to mention that it's possible to disclose prematurely so in order for us to get a patent the us patent trademark office requires that the invention be enabled which means that the invention is described in sufficient detail so as to allow someone of average skill in the art to practice or use the invention without undue experimentation or further invention so if an invention cannot be described to this level of detail then we can't file a patent application on it and it's likely that more work needs to be done to further develop it now having said that we definitely invite you to contact us early and often to keep us in the loop on your progress of your work and next step is how do you disclose well that's very easy you just fill out a technology disclosure form and send it to us so the link right here provides the technology disclosure form this is what the first page looks like and you just fill it out send it to us it just includes basic information like a short title of the technology the inventors that contributed to the conception of the invention um a description of the technology obviously or a manuscript that you're working on that that discloses an enabling description of the technology funding sources that led to the development of the invention that's really important because a lot of times we'll have there'd be some sort of obligations associated with the funding if it's funded by corporation we may have granted them some sort of rights to it if it's federally funded we have obligations to to report to the government on those also it includes information on public disclosures has it been publicly disclosed yet or if not is there a pending publication because that could be very important okay so assessing and i p protection so we'll receive a new disclosure and we will take a look at the novelty uh non-obviousness and enablement we've already talked about that so uh in order to get a patent on something it has to be novel and non-obvious so novel means that it has not been disclosed by anyone else anywhere in the world ever and non-obvious means that it's not just a simple combination of two or more different things or it's not an improvement on something that exists that would be obvious to someone of average skill in the art so we will do a prior search to just get a feel for potential novelty or non-obviousness issues and and we mostly do those in-house but sometimes we we outsource that patent search work once we're if patentability is looking good then we'll move on to assessing the commercial viability and so this is this is even more important than patentability in my opinion so we try to understand what problem does this technology solve and how does it solve that problem better than current solutions so even if um even if something is patentable if it's not commercially viable it doesn't matter we won't be able to license it and so it has to be commercially viable and i would i would comment that the most successful and lucrative license utd has ever had is to a non-patented technology so certainly patents are are important and valuable but without commercial viability there's nothing that we can do there so if patentability and commercial viability is looking good then we'll make a determination if we should invest the university resources in in pursuing ip protection that's either for that's by filing a patent for inventions or for software we can file copyrights okay so once we have we're pursuing patent protection or some kind of i.t protection then we go into the the marketing and the licensing phase so having uh contacts in industry is absolutely critical to successful licensing i went back and looked at um at all the license a few years back i went and looked see all the licenses that we had executed since the office was formed in 2008 and almost every single license that we executed could be traced back to a industry contact that our inventor had so it's really really really important we will market the technologies by creating non-confidential summaries and we will post those on our technology portal and we'll also you know work with the inventors to identify different applications the technology different uh industries and companies that may be interested in learning about this technology and we'll we'll cold call and we'll perform outreach to those companies it's in my experience it's it's it's not very common that industry is responsive but uh again it's very important to have industry inventor industry uh contacts there so assuming that we find a company that is interested in licensing then we will engage in the license negotiations and our goal is definitely win-win outcomes we want to have license terms that are are fair to both parties and that will result in successful commercialization of the technology so traditional licenses terms a lot of different variables there we've got a lot of knobs and levers we can adjust there's upfront fees royalty on sales there's minimum royalties there are annual fees there are commercialization diligence milestone fees a lot of things that can be adjusted upfront fees can be from a few thousand to a few million we have done both of those in the otc now also a new option that that we rolled out a few years ago is the utd express startup license and this is only for utd entrepreneurs commercializing a utv technology and it's just an option uh you don't have to go with it but it's been very very well received and it is a simpler license template and it's it's non-negotiable so the terms are effectively set um it's just a five thousand dollar up front five percent equity position in the company at two million dollars anti-dilution and if it's a physical science technology it's a three percent running loyalty on that sales but beyond that the company doesn't pay anything until they're they're generating revenue and selling product and so that license focuses very heavily on commercialization diligence milestones so we work with the inventor we'll look at the business plan and we'll identify what are the really important key milestones from you know customer validation to product development that sort of thing to uh what are the important things the company needs to be doing to to commercialize the technology so um and i would also add you know so why would someone be interested in commercializing their technology right so um in addition to you know the the prestige and satisfaction of having your name on a patent and having a technology that you developed you know used out in the world there's also a financial incentive so we share 50 of our license revenue with the inventors and that is one of the most generous revenue sharing splits that i'm aware of in in academia so a few other considerations i'd like to speak to so public disclosures so if if we haven't filed a patent application and and say a manuscript is published papers published that is an enabling uh disclosure of a technology then that creates a one-year timeline in the u.s within which we can file but so that's one year we can file in the u.s but in most foreign jurisdictions the moment that an enabling public disclosure is made we are unable to file patent applications in those countries now so so it's really important that we get um you know that the technologies be disclosed to our office before they're published that doesn't always happen but we still have one year in the us so that's why um you know publication dates are very critical to watch and and also frequently we'll have technologies that are co-owned either with another university or with industry you know researchers are collaborating all the time so and i just wanted to cover how those are handled so in a situation where uh you know you invent something with a collaborator another university it's likely that that university will be a co-owner in that technology so so the otc will work with their version of the otc to determine which university is best suited to take the lead on commercializing the technology and then we'll put an agreement in place that covers how we're gonna you know share expenses and that sort of thing now it's a little different when a technology is co-owned with a company so in that situation utd will not take the lead and utd will not file a patent application because the company will be a co-owner on that and so we'll reach out to the company and we'll you know attempt to get a license from you know license our rights in the technology to the company sometimes that happens and sometimes it doesn't but if it's going with the company we we always let the company take the lead so again please contact the otc early and often we're here to provide assistance and guidance and we we love helping our researchers out and talking through things so the earlier we get involved in in the technology development process the typically the better the outcomes are thank you very much brent at this time i would like to welcome paul nichols paul nichols executive director of the institute for innovation and entrepreneurship and a professor in the jindal school of management is an accomplished innovator and business process strategist with a history of successfully applying and pioneering new technologies and techniques to solve real world problems his unique skills and experience have been applied in a variety of industries from venture capital to entrepreneurism and national politics he is a highly effective leader and team member with leadership training and practical experience in getting small highly skilled groups of people to deliver new solutions and approaches quickly with limited resources thank you very much tiffany hello everybody um okay good here are my slides so we've been learning about what you need to do in terms of disclosing your technologies when you're at utd but let's actually talk about how we form these ideas into companies and that's what the role of the institute for innovation and entrepreneurship is all about so there are many reasons why utd is unique and special but this is one of them when you look at other universities when they have an entrepreneurial institute it's typically coming out of their school of business and that's as far as it goes here at utd we do things very differently this is actually a a university-wide campus-wide strategic initiative and in fact we are we are part of utd's uh long-term strategy especially under economic development so ut takes this uh takes this role very seriously and the purpose of the institute is to provide the training and the resources to students faculty staff and alumni to go from concept to go from the beginnings of an idea to actually a fully fledged and operating company we do this through both of our academic programs such as our undergraduate and graduate courses and our non-academic programs which are done under the blackstone launch pad and we're actually very highly ranked for what we do our graduate program is ranked number 15 in the country number 13 for undergraduate but we're actually ranked number six overall and that's because most universities tend to throw most of their efforts behind either their graduate or their undergraduate programs we are one of the few that actually does both equally well so for a young university and a university that's definitely in the growth phase are able to hit well above our weight class because of our highly integrated approach and all the resources that we're making available to you let me talk very quickly about our academic programs so at the undergraduate level we actually have a degree under the bachelor's of science and business administration it's a concentration in innovation and entrepreneurship we also offer a master's degree in innovation and entrepreneurship but something one of the other things that makes us very special is that we're seeing a lot of schools around campus starting to have our courses listed as preferred and guided electives for their students in their own catalogs for example mechanical engineering students and arts and humanities arts and performance students are now able to take some of our entrepreneurship courses as part of their regular degree plan and we love that we love having students with different backgrounds forming teams and working on ideas together where everybody has a different background perspective but they're able to work together which is exactly the way it is in the real world we're also very fortunate in that our faculty are all very highly trained and that reflects in our curriculum which is a very practical based theory is great but we're all about how do we make things actually work in the real world and four of our faculty are either former or current venture capitalists we're able to bring all their knowledge and experience from working hundreds if not thousands of deals into the classroom and to benefit the next generation of students very quickly i want to go through some examples of some some specific examples of some of the courses we provide and these are available at both the undergraduate and the graduate level so our core course is our innovation entrepreneurship course which is basically forming students into teams where they work on their own ideas and we take them through a lot of the fundamentals throughout the semester such as what's an elevator pitch minimum viable product budget marketing strategy at the end they're able to provide a a pitch that's worthy for an investor or a business competition or a corporation we also have a seed fund course so utd like i said is very unique we actually have a seed fund and not only that but we created a course around it and we made that course available to not only graduate students but undergraduate students so that's a very rare thing that you'll find in the university world so we actually teach students how to become venture capitalists they're the ones who evaluate the entrepreneurs and their startups and then provide recommendations at the end of the semester on which companies should receive funding there's a course called startup launch and this is where we give students semester credit to actually work on their own idea they get to focus on their own particular company idea we pair them with some mentors and faculty and they spend the entire semester working on that there's entrepreneurial finance technology product development and then courses where we work with outside corporations and startups such as our course where we're now in the spring but we'll be working with att on 5g applications and development for our non-oak for our non-academic programs these are largely done out of the blackstone launch pad which you will find on the northern side of campus when we are back at campus part of the parking structure 3 setup and blackstone is the one of the largest private equity groups in the world and about a little over four years ago they uh identified utd and about 20 other universities to receive a million dollar grant to help grow our entrepreneurial programs so we're already part of a select group of universities around the country since then blackstone has been very impressed with our metrics and our deliverables and have engaged with us into another second round of funding which we'll just talk about later in the year but this relationship is allowing us to do some very interesting things number one we were able to create a very nice multi-purpose facility with conference rooms and meeting spaces that you can all have access to but we also do a number of programs so we do eight-week boot camps every spring and fall where we will take students and faculty and staff if you're interested into a lot of the fundamentals and how you create an idea form a pitch around it and build that business model and build that business plan and those are called comet x and galaxy and galaxy is the same format as comet x except it's only for women then we do our big idea competition which we hold every fall this is our version of shark tank and we provide real we provide actual funding to real world students and faculty and alumni for their company ideas and this will be coming up in november 19th so please pay attention and attend you're going to learn a lot from it our women's summit is also held in the fall in fact that's coming up this week where we bring in a number of women entrepreneurs and corporate executives to talk about their journey their experience and how they can help other women and assist them in their ideas and their uh goals we bring in a number of guest speakers throughout the year we have uh over a hundred mentors who've signed up to assist you in your ideas in fact we have a venture mentoring service in collaboration with ut southwestern and ut arlington where we share ideas and mentors amongst all our campuses now i want to talk about a real world example um of how all of these elements come together to help you and your students cersei therapeutics was recently acquired by acadia pharmaceuticals for what if they follow all their earn outs and their milestones will be worth over a 900 million dollar acquisition cersei was founded here at utd by a phd student called lucas rodriguez and he actually took one of our innovation entrepreneurship courses and here's a direct quote from him and he said the startup launch course and innovation entrepreneurship helped me immensely in terms of learning how to develop viable business concepts and conduct market and customer validation faculty mentoring also played a big role in my success in the 2014 big idea competition and helped me developing multiple startup concepts including cersei therapeutics so what we've basically done is created all of the ingredients and all of the resources you need to go from an idea to form a team to get the training that you need and then develop that into a real company and take it to the outside world and cersei is just one of many companies that are basically in the development pipeline that are going to help transform utd into a real nationally known university and we're very proud of what they've been able to accomplish one of the other resources we have is the venture development center now this is our incubator space on campus where we have offices cubicles specialized lab space conference rooms and a kitchen area and the whole purpose here is basically to get things out of the lab and to put it into a real world setting where you can bring in customers and talk with investors and basically get things out of a university setting into a more professional business type setting we've recently expanded this three times we've actually we've had to expand this three times and recently uh finished our third expansion because of the demand for space and we current we have about 25 companies at any one time in the venture development center this is available to you and will be available to you as alumni as well we do these as monthly rates for rent very affordable terms and it's available to students faculty and alumni and those companies that have a strategic connection to utd let me introduce a couple of key important people that you need to know dresden goldberg who's our director of the blackstone launch pad brian chambers who's our director of the utdc fund and then kim warren who's our manager of operations and services at the venture development center so these three along with myself are going to be your guides to help you provide the resources you need to take your ideas and mature them and develop them so lastly i want to end on a quote these are actually from the founders of utd which are the founders of texas instruments so utd itself was founded by entrepreneurs so entrepreneurism is part of our dna and back when they were forming utd they had this great quote and that was to grow industrially the region must grow academically it must provide the intellectual atmosphere which will allow it to compete in the new industries dependent on highly trained and creative minds now that's a quote that could have happened this year instead of over 50 years ago so that's the overview of the institute i'll be happy to take your questions and i'll turn this over to tiffany for everybody else thank you very much paul at this time there are no questions in the queue directly for you however i do have a question for brian scott and it is as follows how much indirect cost do we need to include in a budget for an industry contract so it's a great question we use the same indirect cost rate for industry contracts as we do for our federal federally funded research so currently that's 53 percent and we do have standard budget templates that i'd be happy to send out you can find those on the office of research website but the the budget templates will automatically calculate that 53 percent on the modified total direct cost for you thank you brian at this time there are no additional questions in the queue brian brent and paul thank you for sharing your time and valuable information with the new faculty during today's session attendees please consider joining us for the next research compass series event titled institutional review board taking place two weeks from today on monday november 2nd we will discuss the core principles of human subjects protection to outline why irb approval is needed interested in attending this event registration and so much more can be found at research.utalis.edu