ENET, February 2017 Seema Basu, PhD Partners HealthCare

Transcription

1 Licensing and Technlgy Transfer fr Life Science and Tech Cmpanies ENET, February 2017 Seema Basu, PhD Partners HealthCare

2 Partners in Numbers

3 Innvatin in Numbers (FY14) Inventins Disclsures Received 550+ Licensing Activity Exclusive & Nn-Exclusive licenses, Optins 184 Start-ups 12 Licensing Incme License, Optin & Maintenance Fees, Milestne Payments, Other Ryalties Research Supprt Activities $20.7M $57.5M Spnsred Research Agreements 188 Spnsred Research Incme $66.5M

4 Partners Startup Cmpanies

5 Cmmercializing Academic Technlgy Academic institutins d nt make prducts Must partner with a cmpany t take technlgy + invest additinal resurces t create prduct Time & Cst depends n the nature f prduct: A therapeutic has the lngest timeline, years and >$1b A device is intermediate, 5-10 years and $10 - $30M A diagnstic is the quickest, 1-5 years and <$1M - $30M (depending n the frm f the diagnstic)

6 The Bayh-Dle Act Tk effect in 1980 Enabled academic technlgy transfer and cmmercializatin. Allws academic research institutin t elect title t the inventin funded by the US Federal Gvernment grant licenses (including exclusive licenses) charge financial terms including ryalties Must share financial returns with inventrs. And institutinal share must be used nly fr research and educatin.

7 Our Missin T facilitate the develpment f new prducts based n academic inventins s as t imprve patient care and impact the public gd. Idea t Inventin t Prduct Idea Generatin Research & Discvery Triage Inventin Evaluate Ptential and develp partnering strategy Prtect Inventin Patent Cpyright (SW) Tangible Materials Technical Infrmatin Trademark Trade Secret Partner fr Cmmercializatin CDA Optin & License t IP Rights Cllabratin SRA License Incme Prduct Ryalties Manage Relatins

8 Patent Timeline 0 12m 18m 30m Prvisinal Applicatin PCT Applicatin Applicatin Publishes Natinal Stage Applicatin $ $$ $$$ Patent(s) Issued Patent Term = 20 yr

9 Optin Agreement Precedes a License Agreement Mechanism t preserve business pprtunity while develping business plan / due diligence / fund raising Typical terms include: Limited Term An upfrnt ptin fee Optinee pays nging patent csts Diligence terms: raise capital, develp acceptable business plan, recruit management team & scientific advisry bard, etc. May r may nt include a pre negtiated term sheet fr license

10 Key License Terms 1. Scpe f Rights 2. Retained Rights, Requirements 3. Financial Terms 4. Nn-Financial Terms

11 Scpe f the License IP t be Licensed: Patent(s) r Patent Applicatin (s); and/r Technlgical Infrmatin; and/r Cpyright(s) and/r Tangible Materials (s) Scpe: Exclusive r Nn-Exclusive Limited Exclusivity: Field / Time / Territry Field f Use

12 Retained Rights; Requirements Even fr Exclusive Licenses: a) right t the subject matter is retained fr use by all academic institutins. b) fr patents supprted by federal funding, the Gvernment - retains a ryalty-free nn-exclusive license - requires that Prducts used r sld in the United States shall be manufactured substantially in the United States Waivers frm the gvernment are btainable - requires Licensee t diligently develp the technlgy

13 Financial Terms Typical Terms may include: Upfrnt cash fee and/r equity (cmmn shares) Reimbursement f past patent csts incurred Reimbursement f nging patent csts Annual Fees (pre sales)and Minimum Annual Ryalties (pst sales) Specific Milestne Achievement Payments Change f Cntrl Payment Prtin f Sublicensing Fees/Revenue Running Ryalties

14 Other Key Terms Reprting bligatin and Auditing rights Patent Infringement Prcess Indemnificatin Insurance Term f License and Terminatin Nn Use f Name

15 Of Nte Institutinal Resurces: Institutinal Funds maybe available t invest in spin uts PIF (Partners Investment Fund) Institutinal Plicies: License terms may take int accunt Institutinal COI (Cnflict f Interest) Plicies t avid biases f perceptin f biases due t financial r relatinal interests. Clinical Care - are patients interests fremst? Research - is the design, cnduct and reprting f research bjective? Educatin - is the audience receiving unbiased infrmatin? Investigatrs must fllw Institutinal Outside Activity Plicies fr persnal Funder and Cnsulting Agreements Institutinal C-Owners: Typically academic institutins enter int a jint inventin administratin agreement allwing ne institutin t be the lead party with the agency t manage, administer and license t third parties their jint interests in jintly wned IP.

16 Thank Yu Seema Basu, PhD Market Sectr Leader Innvatin PARTNERS HEALTHCARE 215 First Street Suite 500 Cambridge, MA p ssbasu@partners.rg