University of Cincinnati University of Cincinnati

Intellectual Property Office

UC FirstsUC Firsts

First oral polio vaccine – Albert SabinFirst antihistamine, Benadryl –

George Rieveschl First safe anti-knock gasoline First electric organ – Winston KochFirst use of a YAG laser to remove

brain tumor

Mission of Intellectual Property OfficeMission of Intellectual Property Office

Main Mission - Technology Transfer– Assess new invention disclosures– Develop strategies for protecting University’s

IP – Transfer University’s IP to industry for the

public good and commercial gain (increase society’s wealth locally and nationally)

– Promote entrepreneurship through faculty counseling and referral

– Provide University presence within industrial and investment communities

Technology Transfer ProcessTechnology Transfer Process

Process begins with the submission of an invention disclosure

Evaluation involves the investigation of many complex patent/legal, ownership and business related questions. – Esp pre-existing obligations to sponsor

Ongoing Administrative ObligationsOngoing Administrative Obligations

Bayh-Dole Compliance– Reporting– Election of Title– Patent Filing Decisions – Invention Utilization

Licensee Diligence – Progress reports – Milestone, royalty payments

Skills SetSkills Set

Complexity of University Technology Transfer demands sophisticated knowledge of many different fields

– patent law – licensing & contract law – federal, state, and university polices & laws related to IP– in-depth understanding of market trends – capacity to understand new technical developments

We’re fortunate in our office to have a team with a highly complimentary skills set (PhD, JD, MBA)

Intellectual Property StaffIntellectual Property Staff

About Our Office About Our Office

Approx 75 active licenses 164 active patents $6.5 million in license revenue in FY02 Over 50% of US patents issued to us in

the last 5 years have been licensed or optioned to industry

Top 1/3 of Technology Transfer Offices nationwide, top office in tri-state

Invention Disclosures and PatentsInvention Disclosures and Patents

0

1020

30

4050

60

7080

90

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FY 98 FY 99 FY 00 FY 01 FY 02

InventionDisclosure

Issued US Patents

Licensing Income Licensing Income

$0.00

$1.00

$2.00

$3.00

$4.00

$5.00

$6.00

$7.00

FY 98 FY 99 FY 00 FY 01 FY 02

License Income(million $)

UC IP Helping to Advance Local FirmsUC IP Helping to Advance Local Firms

Small Firms– KY Pharmaceutical firm

Considering license to slow-release diuretic technology and sponsoring research to develop the product. Also considering re-locating R&D from KY to Bio/Start

– Local Medical Device firm Considering license to early stroke diagnostic technology

and also sponsoring research at UC to develop the medical device

– Local Biosensor firm Interested in acquiring a license to our biosensor

technology and partnering with us on development environment monitoring equipment

UC Helping Cont’d UC Helping Cont’d

Large Firms – P&G Pharmaceuticals

Collaborative research in area of obesity

– Halliburtin Oil drilling technology

– GEAerospace technology

Example Recent License AgreementExample Recent License Agreement

Inventors - Drs. Joseph Clark (UC) and Ton Degrauw (Children’s Hospital) and Rima Daouk (Avicena)

Licensee - Avicena (Biotech in Cambridge, MA) Invention - Discovered that a mutations in gene

that encodes creatine transport protein located on X chromosome (afflicts males) can cause mental retardation

Currently working on a cure License complemented with sponsored research

agreement designed to determine prevalence of this defect and to identify therapeutics

Examples of Faculty Start-upsExamples of Faculty Start-ups

Extreme Photonics (solid-state display) Apologic (develops drugs for Apo-E related

diseases, e.g., Alzheimer’s) CardioEnergetics (mechanical devices for treating

heart failure) Cutanogen (skin substitutes) Allergenics (oral vaccines) Phase 2 Discovery (develops drugs for treating

psychiatric and neurologic disorders) Intracellular (cellular imaging instruments)

Extreme PhotonicsExtreme Photonics

"Extreme" Engineering Innovation Launches High-tech Firm

An idea born in the labs of Ohio Eminent Scholar Andrew Steckl led to the birth of Cincinnati's newest high-tech company -- Extreme Photonix.

The company was started by Steckl, Gieringer Professor of Solid State Microelectronics in the electrical and computer engineering and computer science department. Research Corporation Technologies (RCT) of Tuscon, Ariz., recently announced it would support the company's research and development so prototype products can be made.

Examples of Licensing OpportunitiesExamples of Licensing Opportunities

Pharmacogenomics – Genetic test for asthma and congestive heart patients to

help physician to determine best drug Diagnostic

– Blood test that can diagnosis any neurological disease (stroke, epilepsy, possibly even Alzheimer’s)

Medical Device– Ultrasonic “clot busting” device for treating stroke

Therapeutic – Patented Cystic Fibrosis drug

Ultrasound Enhances tPA ThrombolysisUltrasound Enhances tPA Thrombolysis

QuestionsQuestions

Richard Kordal, Ph.D., Director, IPO

University of Cincinnati

Mail Location 0829

Cincinnati, OH 45267-0829

Ph: (513) 556-4724

Fax: (513) 558-2296

Email: richard.kordal@uc.edu