Office of Innovation and Corporate Partnerships – The Office of Innovation and Corporate Partnerships is focused on integrating the university’s efforts in technology commercialization, entrepreneurship, and corporate partnerships for sponsored research and education.

There’s an Agreement for That!

On November 17, 2022

Us lawyers, we get a bad rap. Of course, this sentiment is not completely unfounded—as with any profession, there are good and bad people, both personality-wise and professionally. However, it never ceases to amaze me of folks’ overwhelming negative reactions pertaining to attorneys. Perhaps it is the popular, stereotypical portrayal of attorneys being nothing more than money-hungry, cold, calculated automatons bent on nothing less than personal gain and complete submission of the counterparty. While some attorneys undoubtedly fit this mold, I am here to tell you that not all of us attorneys are cut from that cloth and at the end of the day, I am on your side and here to help!

I have been an attorney with an expertise in intellectual property for over 15 years, having spent 8 of those at the University. Having grown up in Norman, this is truly a dream come true for me. I recently moved over into the Office of Innovation and Corporate Partnerships (OICP) as Senior Counsel for Research, Innovation, and Corporate Partnerships. In this role, I counsel University researchers and administration on intellectual property and research-related matters—which is fantastic as I have always viewed myself as a scientist first, having graduated with an undergraduate degree in biochemistry. One of the best parts of my job is meeting with OU researchers and finding out about the amazing research initiatives and projects they are involved in. In addition to developing intellectual property-based strategy, I am also actively engaged in the drafting and negotiation of IP-related agreements. You need a nondisclosure agreement to talk with someone about facilitating your research—I am your guy! You need to receive or ship materials for a research project—there’s an agreement for that! And when you create the next big thing as a result of your cutting-edge research, rest assured that I have done everything in my power to ensure that you reap the benefits of that success.

In short, I am here to help so please let me help you. I will always jump on a phone call, take you to lunch, or come by your lab to discuss whatever it is that you need. But I can only do these things if you contact me at (405) 325-3800 or via email at mschade@ou.edu.

“Will the Dog Eat the Dog Food”

By andrew

On November 3, 2022

In Licensing

I don’t believe I’m breaking any news here, but starting any business is hard! Starting a business around a new, unproven, first of its kind, disruptive technology that either doesn’t have a market equivalent or asks customers to change their status quo is even more challenging. Doing so as a first-time entrepreneur coming out of a university, well you get the picture. But over the last ten years that I have been involved in the Technology Transfer space, universities across the country have made truly phenomenal progress in the resources and programs made available to support these fledgling startups as they prepare to leave the nest.

One of the key tenants of these early-stage startup development programs has been that of Customer Discovery. Programs like Steve Blank’s Lean LaunchPad, which became the fundamental curriculum of the NSF, and later NIH, I-Corps programs forced the reorientation away from the technology and its research and development, to instead determine “Does this have a market and is there a customer who will buy it?” Here at the University of Oklahoma we have implemented similar concepts in multiple programs we have offered over the years, first in partnership with i2e and their new venture course, our own Venture Fellows program, and today much of the Market Discovery Phase of the Growth Fund still relies on these principles. However, while seemingly revolutionary, the reality is programs such as these are in fact the application of the scientific method to the activity of starting a business, but now instead of benchtops and beakers, the answers lie outside of the building and the testing performed is talking to potential customers.

So why do we do this? Like any hard challenge, starting a business, is about, RISK. And so much of programs such as these are about de-risking the business concept and determining if there will be good product-market fit. In addition to translational research activities to mature the technology, we can determine what the market will look like, who may buy the product and even establish early-stage partnerships and distribution channels.

But, no matter how well prepared, there comes a moment when you launch into the void and must have faith that all you have learned and done will allow you to soar. I have the opportunity to simultaneously serve as adjunct faculty in the Price College of Business here at OU, and every semester I show a lecture by Guy Kawasaki regarding the top mistakes made by entrepreneurs. He talks about building the structure of an internet pet supply company, but the most critical aspect always comes down to “Will the Dog Eat the Dog Food”, because without this the rest doesn’t matter. This is the moment of a young company’s greatest test, will someone pay for what I am selling, and the last thing needed is a stone around their neck as they jump from the nest.

Unfortunately, that’s just what can happen when at launch, as a startup must execute a license to the technology from the university. There are several reasons this action of licensing is needed, securing rights for investment, elevating conflicts of interest and employment obligations, protecting parties from liability just to name a very few, but, the reality is these licenses come with a cost. There is financial consideration, performance milestones and patent obligations in these licenses that, while fair and necessary, can be a burden to a young company. To me this begged the question, why if we are going to invest in the support of the pre-launch lifecycle of the company, at this the most vulnerable moment, would we stop?

To this end, the Office of Technology Commercialization has recently launched a new Limited Use Licensing Model. First this model is not applicable to all technologies or companies. The goal of the model is to provide a mechanism by which a company can conduct the ultimate customer discovery, SALES. Therefore, a technology must be at a stage of development where it would be ready to be offered for sale and sufficiently mature that a party would want to buy and use it. In the university environment, this would be most common in things such as software, research tools, cell lines or materials that could be a component of larger products or systems. While not free of commercial terms, there is often reduced fees and the license is limited to a preset number of sales and a relatively short timeframe, typically a year or less. Once sales objectives are met a full license can be negotiated if desired. Additionally, this is not for projects that need continued development or large scale investment, but rather the demonstration of traction that can accelerate them in some way, or nudge them out of the nest if you will.

While early, I’m happy to say we have executed two licenses in the past months under this model and have learned immense amounts about the market demand, one good one bad, in that short time. Therefore, if you are interested in learning more about this model, think you might have a technology that could benefit from this type of customer discovery, or just know where we can find some hungry dogs, please feel free to reach out to OTC, because we got some new chow to try!

What does iEdison mean to my Research?

By Regina

On October 20, 2022

In Reporting, Reporting

When I mention iEdison to researchers, I am sure their minds wander to what is iEdison. It is NOT a new ‘i’ product from Apple; but, it is named for a cool researcher. iEdison is related to reporting inventions and patents which result from federally sponsored research. In essence, iEdison (interagency Edison) is a tool for reporting the intellectual property (IP) which result from the NSF, NIH, DOE, etc., grants.

When research is funded by a Federal agency, there is an expectation of the research addressing a societal issue. There is a hope that the results of that research will include inventions and patents that can be pursued to continue to address the issue. If inventions resulted from historical research funded by the Federal Government, the Federal Government would own – retain all rights – in the results.

In 1980, the Bayh-Dole Act was passed to allow small businesses and non-profit institutions, such as the University of Oklahoma, to elect to take title to federally funded inventions under certain terms and conditions. There are certain regulatory requirements in which we must abide. The University meets these requirements by following the regulations and reporting resulting IP via iEdison. OTC manages the reporting to iEdison for the University.

iEdison is the online, relational database designed around the reporting requirements of the Bayh-Dole Act and its implementing regulations. It allows recipients of federal research funding to report subject inventions and patents to the federal funding agency that issued the funding award. Several federal agencies use iEdison, so this single online resource lets funding recipients report to many different funding agencies. The system is used by both the funding recipients to report information and documentation into iEdison as well as by the funding agencies to receive and review the information and documentation submitted.

In our office, we term this as federal reporting; but, researchers still have reporting of IP in the annual or final reports. With iEdison, we report and respond to the regulatory requirements. As these are required by regulation – law – we have an ongoing obligation to report accordingly. Just like annual and final reports are required, reporting IP via iEdison is required, as well. Without reporting, future University research may be jeopardized.

Does my Research Tool have Commercial Value?

By gmcmillen

On October 5, 2022

In Commercialization, Researchers

I recently saw a headline stating that the research antibodies and reagents market is projected to reach USD 16.1 billion by 2027. My first thought was WOW, that’s a big number. My second thought was WHAT A COINCIDENCE, I just had another inquiry from Pharma requesting a license for a cell line. So here we are with my first contribution to the OICP blog page, how to determine if your research tools might be licensable.

When we think about successfully licensed university innovations, the first thing to come to mind is probably NOT a research reagent. But if the above projection, which is based on growing demand for personalized medicine, structure-based drug design, proteomics and genomics research, is even partially accurate, perhaps we should? It is likely that you have created such reagents, perhaps for a specific experiment or to obtain data for a publication or grant proposal. You may have even tried to find materials from a supplier and ended up making your own because they weren’t available. Obviously not all of these will have commercial potential, and many will not. So how do you know if your research tool may have commercial potential?

I approach this with four questions:

Was it difficult to create?
Would it be useful to others?
Has it been published and have others requested it?
Can it be used in drug development or some other commercial process?

As the creator of these materials, you can certainly share them with fellow researchers under a Material Transfer Agreement (MTA) and doing so is integral to the progression of research and is a requirement under some funding agencies. But if you answered yes to any of the above, and especially if you have multiple requests and/or if commercial entities are reaching out to you, that may a good indicator of commercial potential. Isn’t that worth exploring?

A couple of examples of license arrangements for research tools include commercial reagent suppliers and pharmaceutical companies. Suppliers are interested in providing reagents to the research community; novel antibodies, cell lines, chemicals, enzyme’s, plasmids, proteins, media, etc. can be licensed to these vendors and they in turn are granted permission to provide them for specified uses. This model can help relieve investigators from supplying their materials to fellow researchers when the burden becomes excessive. Pharmaceutical companies can look to academia for cell lines and mouse models that are useful in drug discovery and development; they may discover these assets in your publications and published grant applications and may be willing to license them rather than devote time and resources to creating their own.

And this brings me back to my inquiry from Pharma for the cell line and my reason for the blog. Did I mention this cell line is one of our most frequently licensed assets? Did I mention that research tools don’t typically require patent protection in order to be licensed and generate revenue? Did I mention that the revenue received is shared with you, the inventor, per the University IP policy?

So, the next time you create a research tool that you think may have commercial value, please do come see us – it IS worth exploring and we look forward to exploring that possibility with you.

What can the Office of Innovation and Corporate Partnerships do for you?

By dawn

On September 22, 2022

In Uncategorized

Office of Innovation and Corporate Partnerships (OICP) can help you keep from throwing your innovation down the drain or keep you from chucking it out the window. Through the OICP website, connections can be made with the Office of Technology Commercialization (OTC), Office of Corporate Partnerships and Economic Development (OCP), and the Venture Development Component. We are your people.

Let me tell you a little about what our people can do for you;

OICP offers support moving transformative technologies from the lab to the marketplace by focusing on combining efforts in technology commercialization, entrepreneurship, and corporate partnerships for sponsored research and education.

OTC focuses support transforming ideas into tangible impact for the betterment of society. They offer many resources to help with the next steps in the commercializing process and they can all be found on their (https://www.ou.edu/otc) website.

OCP serves as a bridge between business/industry and the university. They are the point of contact and facilitate initial connection for companies with researchers and resources at the university as well as continue to manage corporate relationships on an ongoing basis.

The Venture Development Component is made up of the Innovation Pathways (iPath) program. It is both an ideation program and a launch process that helps articulate the value of business propositions and create a launch plan that includes elements of business planning and capital strategy.

So…before you get too frustrated and throw your innovation out the window, get on the OICP website and bring your questions about what your next steps should be to us. Let’s make a connection before your brain implodes with frustration and you throw everything out the window.

https://ou.edu/oicp

Economic Development – We Do That?

By joyce

On September 9, 2022

In Uncategorized

When I mention that I’m in the Office of Corporate Partnerships and Regional Economic Development (OCP), most people recognize and can appreciate the importance of collaborating with business and industry. Relationships with the business community are a high priority for OU, and are even mentioned in the Lead On strategic plan (Pillar 5, Strategy 1, Tactic 6 – Create an Office of Corporate Partnerships to lead the effort to grow strategic research partnerships with private sector and philanthropies). But many people don’t realize that OCP is also responsible for economic development. Typically, economic developers focus on the three legs of the EcDev stool: business recruitment, business retention and expansion (BRE) and entrepreneurship. I’ll eventually write about all three legs (click here to subscribe for future blogs!) but I’ll address business recruitment today.

OCP works with local, regional, and state Economic Development Organizations (EDOs) to help recruit new companies to the state and to help existing Oklahoma companies grow and thrive. Some of these EDO partners are the Oklahoma Department of Commerce, Oklahoma Aerospace Commerce Economic Services (ACES), the Greater Oklahoma City Regional Partnership, the Norman Economic Development Coalition, the Greater Oklahoma City Chamber, and the Tulsa Chamber. We have also worked with small, rural communities as well.

As you might imagine, it’s a significant decision for a business to locate in another state. If they are moving operations from another location, they must consider their employees’ relocation expenses and the possibility that some employees will not want to move. If the company is establishing an additional location, there are substantial costs associated with establishing a new facility. In both situations, companies want to know that they will be able to get up and running quickly and will have success in the community.

There are typically dozens, or even hundreds, of communities competing for consideration in the location process. Companies may work with a site selector, who gathers info and narrows down the list of potential locations to a few. Then the real competition begins! The community or state EDO submits information about incentives, taxes, utilities, access to transportation, quality of life and a wide array of other important factors. But for most companies, the most important consideration (or at least in the top three) is access to talent. Companies want to know that they can hire the right people. Even the most beautiful location with the lowest cost of doing business will not be successful if they can’t find the necessary workforce. This is where the partnership with the University becomes important to the overall package. We can provide information about graduation rates, curriculum, growth in specific degrees as well as describe areas of research expertise. When prospective companies visit the state, OCP often hosts them on campus, and we discuss opportunities to collaborate or recruit. As an example, how impressive is it for a radar company to visit the Radar Innovation Lab before they make a decision on where to locate? That’s just one of many examples of how companies can benefit from proximity to OU. Hopefully, this long process ends with an announcement that the company is locating in Oklahoma and will create new jobs! But my hope is that even if the companies do not decide to move here, they will still want to collaborate with OU in some way.

A Few Words about OU’s In-house Patent Expert

By chris

On August 25, 2022

In Patentability

As this is my first contribution to the OICP blog, I’m going to start by introducing myself, then give a brief description of what I do as Director of Intellectual Property for the University of Oklahoma.

I’m a “Registered Patent Agent,” which means I can draft patent applications and work directly with the US Patent and Trademark Office (USPTO) to prosecute them through the system until they are issued as patents. Patent agents and patent attorneys must pass the same federal patent bar exam to qualify to do this. My particular areas of specialization are biotechnology, pharmaceutics, medical, and chemistry.

I began in this field in 1991 and worked for 22 years in a boutique IP law firm in Oklahoma City, where a large portion of my work was patenting technologies developed at OU. In 2013, I left the law firm and began my tenure at OU. While the move from the private sector was a significant step down in salary, it was a huge gain for me in “psychic rewards” because I got to work fulltime, every day, with brilliant OU researchers and their fascinating inventions. In return, OU got its very own patent expert.

So, what about the patenting process? How does it work? First off, when a researcher has an invention, they submit an invention disclosure to the Office of Technology Commercialization via our online disclosure system (ou.edu/otc/inventiondisclosure). A meeting is then arranged with the inventor to determine next steps. If a decision is made to file a patent application on the invention, I will draft it, or I will send the disclosure to one of our outside patent counsel for drafting.

It’s very unusual for a university to have an “in-house” patent practitioner, but there are many benefits to doing so. For example, since I don’t “charge” for drafting a patent application, the patenting costs incurred by the university are much less than they would be if all of our patent applications were prepared by outside law firms. Another way to look at this is that we can file significantly more patent applications than another university could for the same number of dollars. Another advantage to having me in-house is that I can act much faster when a provisional patent application needs to be filed quickly in advance of a public disclosure of the invention. And, if an inventor has a patent question or needs information, they can simply contact me, rather than having to talk to the outside patent counsel, for which the university would be billed.

After a non-provisional patent application is filed, a USPTO examiner eventually issues an “office action” in which the patent claims are usually rejected over various “prior art” documents, such as patents or journal articles. These rejections require a response. While we always use outside patent counsel to submit documents to the USPTO (or foreign patent offices), I will frequently meet with our inventors to determine how we will respond to the rejections, then will forward these instructions to the outside patent counsel. Other times I simply instruct the outside patent counsel to work directly with the inventor.

A big part of drafting a patent application is deciding how to “claim” the invention. This is one of the aspects of my job that I find most challenging and intellectually stimulating. The claims constitute the “business end” of the patent and are different for every invention. It is the claims that are litigated in a patent infringement lawsuit, so each claim must be carefully constructed to not only be legally supportable, but also must not “read on” the prior art. Frequently the patentability or validity of a patent comes down to one word or phrase in a single claim. For this reason, I consider claim drafting to be one of my most serious responsibilities.

Some years ago, I was at a social gathering and was asked what I did for a living. I told the gentleman that I worked for OU and one of my tasks was to draft patent applications. His response was “Man that sure sounds boring!” He displayed an amazing absence of social skills for an adult, but I felt no need to try to change his mind. Perhaps he had no frame of reference. In his occupation, did he get to investigate a new antibody treatment for lupus on a Tuesday, a high efficiency photovoltaic cell on Wednesday, and a bioengineered gene on Thursday? Unlikely. While I don’t get to do science myself, I can certainly live vicariously through those who do, and help them along the way to turn their discoveries into a tangible product, a patent, having potential societal benefit and monetary value.

Chris Corbett, PhD

Innovation Pathway – What is iPath?

By John Hanak

On August 11, 2022

In Commercialization

Back in October of last year while talking to two senior administrators at OU’s College of Medicine, I was walking them through what I wanted to be doing on the venture development front. Out of the blue I declared “I’m tired of talking about what I want to do…so why don’t we just DO something? Why don’t I solicit our researchers and offer to take then through an ideation and strategy building process for those wanting to see their innovations commercialized?” And thus, Innovation Pathway was quickly born put into the hands of our first cohort of researchers. We have since initiated the concept with a second cohort.

What is Innovation Pathway? In just a few words it is a process to help a scientific researcher articulate the business value of their innovation. But it is so much more! It’s all about understanding the value of markets in getting innovations in the hands of users. It’s about briefly and succinctly explaining the application of the innovation to investors, customers, future employees and others who can lend aide on the journey to the market. It’s about designing a workable strategy to obtain capital for commercialization activity and ultimately market presence. It’s even about learning how to leverage the knowledge of mentors and investors in realizing your dream of market impact.

Originally named Innovation Pathway, now shortened to iPath, this program held its inaugural installment in the first half of 2022 at OU’s Health Science Center Campus. The program has now been expanded to accommodate faculty, students or staff innovators from any of the OU campuses. Any OU founder – faculty, staff or student – with an idea to test in the market is encouraged to apply. You can apply by clicking on the IPath Application link on our Office of Innovation and Corporate Partnerships website at https://ou.edu/oicp

On our website, you can find the entire list of things you will learn in the program, including market validation, customer discovery, finding the right investors, the components of a pitch, why investors say “no,” presenting your opportunity, identifying funding needs, what investors look for, insights from entrepreneurs, developing your plan, and importantly, refining your financials.

We have refined the content down in such a way as to bring you all this via an online learning ideation program that lets you progress through it at your own pace – you just commit to six weekly hour-long sessions for review. And all this culminates in a two-full day commitment to attend the closing workshop focused on mentorship, capital strategy development and investor pitches.

But perhaps the most exciting part of the program is the speakers, investors and mentors that come in to spend time with us. It is these treasures that make us realize how networking, teamwork and joint efforts are what make the difference in successfully taking the pathway to the market.

If I Don’t Speak Your Language and You Don’t Speak Mine, Let’s Make Our Own

By andrew

On July 28, 2022

In Academia

When I proudly returned to The University of Oklahoma, eight years ago, I had little idea of what to expect and even less of how to make an impact. Every industry, much less individual organization, has norms based on commonly held values and experiences, and having come from the private sector with no previous experience working in academia, I fully knew this would take time to learn; a reminder I was given on my “first” day, March 3^rd, 2014, when my new boss called me the night before to inform me not to come to the office the next day, the University was closed for a “Snow Day”, my first since high school.

That didn’t mean there weren’t plenty of people, on both sides, who were willing to tell me how the two cultures differed, but after listening to a few and ignoring a lot, it seemed to come down to two main points, time and money, it always does. Often corporations work on timescales built around artificial deadlines, such as the next quarter’s profits. While this focus has benefits, it often means sacrificing long term strategy and goals for the sake of immediate returns. This can become particularly dangerous when it comes to solving big problems with disruptive solutions, a reason startup companies are often responsible for the next generation products rather than the established market leaders. Universities, while perceived as slower, have in fact found mechanisms to nurture creativity and big broad thinking; however, this can come at a cost, literally. Learning and trying new things means failure is expected, and with failure comes financial costs which may not be recouped. Companies on the other hand are typically extremely efficient at growing sources of profit and eliminating sources of undue cost. What it seemed to boil down to was that the two groups saw value as derived from two different sources, Universities’ – Knowledge and Companies’ – Financial Returns.

This type of divide is not unique to these entities, and both are correct for their circumstances, however working in an office, Technology Commercialization, whose goal is two cross this divide, a solution was needed. Trying to translate one unit of value into another is possible and done, anyone remember the money exchange booth in the international terminal of the airport, but often requires a leap of faith and a lot of speculation. “Our Intellectual Property will be a key competitive advantage on this yet to be developed product and will be worth your upfront and continued development investment” or “Disclosure will result in returns from licensing or new research collaborations”, are both possibly true, but understandably challenging to convince their respective audiences. Therefore, rather than a direct translation, a common language or goal is needed. To me this is best defined by one word – IMPACT.

They may say it slightly differently, but both groups are looking to have an IMPACT. At their core universities desire to better society through education and creative activities. Companies look for both broad and fanatical adoption of their products by customers. Universities work to solve big far horizon problems with novel solutions, and companies are built on years of efficient practices of delivering solutions for which customers are willing to pay. Both are critical in maximizing Impact. Whether it’s a new therapeutic to treat an orphan disease, improving storm warning lead times, or delivering real-time interventions to help people quit smoking, commercializing products that impact customers, and collectively society, require both approaches. Thus while the cultures may differ, the goal is the same, and it is the complimentary competencies that allow us all to have IMPACT!

The Gossip of a Journey with iPath

By joann

On July 14, 2022

In Commercialization

Innovation Pathway, for the OUHSC campus, had its first group session beginning in January 2022 and concluding in April 2022. This was an incredible group, led by an incredible facilitator. Let me tell you about that journey.

My, what a “Path” they/we took. These amazing 6 individuals dedicated time to go on this journey. They poured their heart and soul along with the time they spent creating their innovation into an unheard-of program, by someone new to the campus, to get their innovation to the market. They started out as strangers at an incredibly large university and ended as colleagues and friends.

This journey was not a cut and paste journey, it was often redirected due to COVID restrictions being placed upon the university but with every redirection this cohort remained dedicated to finishing this program. Which in turn will benefit each of them in the future.

The facilitator showed honest yet compassionate guidance, which in turn brought out these same characteristics in the participants with each other. It was an honor to witness their growth when they began to guide each other by offering a different point of view as they discussed as a group each other’s innovation. They encouraged each other to be successful.

So we all like a little gossip….. Here is some gossip. I think at some point each of these individual participants wanted to throw in the hat, cry, scream and maybe even cuss. But what was amazing, each one fought thru and persevered. They persevered! It was so Impressive!

We just started our second iPath session this week. It was evident with the Kickoff Zoom that there is reserve. But, just wait. In September we will be celebrating this amazing group and their incredible accomplishments.

If you get an opportunity to visit with anyone that has participated in the OICP iPath Program, I encourage you to take the time! You will not be disappointed.