Rob Lindberg, Ph.D., R.A.C., is the Biotechnology Center's BATON director. He holds a Ph.D. in Physiology and Biophysics. His specialty is microvascular physiology, with emphasis in endothelial function in inflammation, thrombosis and cancer.
Full Biography.
Editor's Note: The following is the second in a series of columns by Rob Lindberg, Ph.D. Rob directs the Biotechnology Center's Business Acceleration and Technology Out-licensing Network program, designed to link new biotech companies with necessary resources in the community at a reduced or no cost.
In this and his previous position as the Technology Development Director, Rob has gained an understanding of what it takes to move a biotechnology product from the mind to the marketplace. He shares his insights here.
The federal government funds most academic life-sciences research in the United States. But prior to 1980, universities were prohibited from patenting inventions arising from federally funded research.
In 1980, however, Congress passed the Bayh-Dole Act, which assigned academic invention ownership rights to their corresponding universities. This gave birth to university technology transfer offices, which now exist in virtually all of the nation's research-intensive universities.
University Interests
A technology transfer office represents the university's interests in negotiating licensing agreements with the faculty inventor and outside parties who are interested in accessing the invention for research or commercial purposes. Typically, after an inventor discloses an invention to the technology transfer office, the office then determines whether it will retain rights to the invention.
The decision is usually based on a preliminary assessment of the technology, its potential commercial or research value, and the likelihood of identifying an interested licensee. If a corporation supported the invention, its ownership is determined by any related sponsored-research agreement.
The technology transfer office must then decide whether to pursue patent (or, less frequently, copyright or trademark) protection for the invention, in effect, establishing and exercising university ownership. The office can also return ownership rights to the inventor, thus waiving its claims to the invention.
It is important to note that, unless the university waives its rights, the inventor has no direct ownership of the invention if made on the university premises and with university or federal support. Universities, however, are typically more generous in allowing their inventors to share in revenues generated from the licensing and commercialization of these inventions than are their corporate scientific counterparts.
Deal Structure
Once a provisional or full patent is filed by a university, the technology transfer office is free to "shop" the invention to potential licensees. If a company or other party is interested, the technology transfer office may structure these deals in several ways:
- Non-Exclusive License: Gives multiple licensees access to a technology. This approach is often used for biological reagents (e.g., individual monoclonal antibodies), especially for research use, often under a Material Transfer Agreement.
- Exclusive License: Gives a single licensee access to a technology for a defined period of time. This type of agreement typically contains negotiated provisions for sub-licensing, field of use and return of rights to the university in the event that the licensee chooses not to pursue commercialization or violates the terms of the contract. The university may grant multiple exclusive licenses to a given technology for distinct applications.
- Option: The technology transfer office may grant an option to exclusively license a technology to a third party for a finite period of time, thus agreeing not to enter into an exclusive license with any other interest during that time.
Provisions for options and licenses are often important components of sponsored research agreements between universities and co-development (often corporate) partners. Sponsored research agreements establish the terms of academic-industrial research collaborations, wherein the determination of ownership rights to any inventions made during the course of the project are explicitly stated prior to initiation of the project.
License Terms
The terms of a license may include provisions for upfront payments, payments to the university based on successful completion of key developmental milestones by the licensee, royalties generated by revenues from the sale of related products or services, and rights to subsequent refinements or new inventions based on the licensed technology.
The North Carolina Biotechnology Center facilitates the development of biotechnologies by academic and corporate entities, primarily through academic grants and business loans. However, it does not directly engage in technology transfer and makes no claims to inventions made with research funding support provided by the Biotechnology Center.
Thanks to Dr. Scott Forrest at the University of North Carolina at Chapel Hill's Office of Technology Development for contributing to this article.