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Kristie Prinz Interviewed by Technology Transfer Tactics on Issue of Whether Poster Presentations Jeopardize a TTO’s Commercialization Efforts

Written by on Friday, February 12th, 2010

Technology Transfer Tactics recently interviewed me on the issue of whether poster presentations jeopardize a tech transfer office’s commercialization efforts.

I wanted to share the interview because the article raised some interesting questions.  Of course, universities have long been dealing with the challenges of having to reconcile the competing interests of the educational/research institution’s desire to publish and provide educational opportunities to students vs. the intellectual property protection/commercialization goals of a tech transfer office.  However, this article addressed a unique aspect of that conflict, which I think will be of interest to blog readers.

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Category: Biotech Blog in the News, University Tech Transfer  |  Comments Off on Kristie Prinz Interviewed by Technology Transfer Tactics on Issue of Whether Poster Presentations Jeopardize a TTO’s Commercialization Efforts

IRS Taking Closer Look at Tech Transfer Offices’ Activities

Written by on Friday, October 24th, 2008

The IRS has launched an effort to review universities’ tech transfer office activities, reported Biotech Transfer Week.

The IRS began mailing out compliance questionnaires last week to four hundred (400) colleges and universities.  According to the IRS website, these compliance questionnaires will explore the following:

  • report revenues and expenses from taxable trade or business activities on Form 990-T, Exempt Organization Business Income Tax Return;
  • classify activities as exempt or taxable activities;
  • calculate and report income on losses on Form 990-T;
  • allocate revenues and expenses between exempt and taxable activities;
  • invest and use endowment funds; and
  • determine types and amounts of executive compensation.

Biotech Transfer Week reported on the IRS review as follows:

The questionnaire is not an audit, and schools will not be penalized for refusing to participate, according to the IRS. However, the agency said that it reserves “the option of opening a formal investigation, whether or not the organization agrees to participate in a compliance check.”
The 33-page-long document contains 74 questions intended for all 400 institutions and 20 additional questions applicable only to private organizations. Private nonprofit universities are generally exempt from tax under Internal Revenue Code section 501(c)(3) and, like state universities, are subject to unrelated-business income tax, the IRS said.

It seems apparent that the IRS believes that it is currently losing taxable revenue from technology transfer activities that is going unreported by universities around the country, and that perhaps all universities with a technology transfer office–whether they received a questionnaire or not– would be wise to conduct their own review in parallel to the IRS review, in order to determine what, if any, mistakes in reporting are currently being made by their institutions.

Of course, given the fact universities are typically nonprofit organizations, you might wonder what kind of taxable income exactly could arise at a university.  The IRS website explains this dichotomy as follows:

Even though an organization is recognized as tax exempt, it still may be liable for tax on its unrelated business income. Unrelated business income is income from a trade or business, regularly carried on, that is not substantially related to the charitable, educational, or other purpose that is the basis of the organization’s exemption. An exempt organization that has $1,000 or more or gross income from an unrelated business must file Form 990-T. Form 990-T. . . .

The IRS defines “unrelated business income” as follows:

For most organizations, an activity is an unrelated business (and subject to unrelated business income tax) if it meets three requirements:

  • It is a trade or business,
  • It is regularly carried on, and
  • it is not substantially related to furthering the exempt purpose of the organization.

IRS Publication 598 explains the issue of tax on the unrelated business income of tax exempt institutions.

It will be interesting to watch how the IRS review of technology transfer offices pans out.  As we have previously reported on the California Biotech Law Blog, technology transfer offices often generate tremendous revenue for universities.  Apparently the IRS has been watching the growth of technology transfer offices around the country and wants a larger piece of the action.

The California Biotech Law Blog  will be following this issue as it develops and will keep our blog readers posted on those developments.

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Which Universities Have the Most Successful Tech Transfer Programs?

Written by on Tuesday, September 16th, 2008

Forbes published an interesting article last week which named the universities in this country with the most successful tech transfer programs in terms of rate of return ("ROI"), according to a 2006 survey.

At the top of the list was New York University.  Forbes reported as follows:

[New York University] generates $157 million in research-related income on $210 million in research and development (R&D) expenditures–tops the list with a 75% yield. . . . While Remicade has generated the bulk of NYU’s licensing income in the last decade, some 20 other biomedical technologies kick off royalties as well–and 15 more are in clinical trials. . . . Other hot areas include computer science, agriculture and nanotechnology. NYU also takes stakes in start-ups, including Perceptive Pixel, developer of the touch-screen map that CNN uses in its election coverage.

Next on the list was Wake Forest University, which had a 41% ROI.  According to Forbes, Wake Forest’s success was due in part to several patents, which generated more than $1 million in licensing revenue and the development of several key technologies, including the V.A.C. System, a mechanical vacuum technology that promotes wound-healing, which was licensed to San Antonio-based Kinetic Technologies, and a virtual endoscopy machine, which was licensed to GE Medical, a unit of General Electric.

Other successful programs included the Stevens Institute of Technology, Ohio University, Brigham Young University, and University of Rochester.

Interestingly enough, the University of California System (which includes all of its various institutions and campuses around the state) only came in fourteenth on the list, even though it reportedly generates more in total revenue from research than all other U.S. universities.  According to Forbes, out of the University of California System’s $48 million licensing program, about $24 million was incurred from royalties paid on a mere five patents. 

The full Forbes‘ list of the top 15 most successful tech transfer programs in 2006 is as follows:

1. New York University, $210 million in research expenditures, $157 million in research related income, 75% yield

2. Wake Forest University, $146.3 million in research expenditures, $60.5 million in research related income, 41% yield

3. Stevens Institute of Technology, $28 million in research expenditures, $4.56 million in research related income, 16% yield

4. Ohio University, $24 million in research expenditures, $3.26 million in research related income, 13% yield

5. Brigham Young University, $26 million in research expenditures, $3.07 million in research related income, 11.7% yield

6.  University of Rochester, $355 million in research expenditures, $38 million in research related income, 11% yield

7.  University of Minnesota, $596 million in research expenditures, $56 million in research related income, 9.4% yield

8. University of Florida, $459 million in research expenditures, $42.9 million in research related income, 9.3% yield

9. Stanford University, $699 million in research expenditures, $61.3 million in research related income, 8.7% yield

10. Northwest University, $348 million in research expenditures, $29.9 million in research related income, 8.6%

11. Mount Sinai School of Medicine, $269 million in research expenditures, $20.1 million resarch related income, 7.5%

12. University of Massachusetts, $409.9 million in research expenditures, $27.2 million in research related income, 6.7% yield

13.  University of Utah, $246.5 million in research expenditures, $16.3 million in research related income, 6.6% yield

14.  University of California System, $3.04 billion in research expenditures, $193.4 billion in research related income, 6.4 % yield

15.  University of South Alabama, $20.6 million in research expenditures, $1.2 million in research releated income, 5.9% yield        

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Stanford, UC Representatives Offer Insights on Licensing with their Universities

Written by on Friday, August 3rd, 2007

The Silicon Valley Chapter of Licensing Executives Society ("LES") recently sponsored an event in whch representatives from Stanford and the University of California ("UC") offered tips on licensing with the Stanford and UC systems.  Katharine Ku of Stanford University and Viviana Wolinsky of Lawrence Berkeley National Laboratory each gave an excellent presentation, outlining their respective university’s policies and procedures, as well as some of the issues of concern currently facing each organization.  Nader Mousavi of Wilmer Hale, which hosted the event, also participated.

What were some of the insights on their employers’ respective licensing programs that the two speakers shared?

Regarding the issue of exclusive licensing terms, Ku indicated that Stanford prefers fixed terms of exclusivity.  In contrast, Wolinsky indicated that UC is generally more willing than Stanford to agree to exclusive licenses that run for the full term of the patent.

On the issue of royalty rates, the speakers agreed that the range often runs from 3 to 6 % of net sales.  Wolinsky shared that the UC system is willing to consider royalty stacking, if this is brought up in the negotiations, and that UC may be willing to reduce the royalty rate on each license to half of what would otherwise be agreed to. 

On the issue of sublicensing, the speakers agreed that a royalty based on net sales from sublicensees is the current standard for UC and Stanford license agreements, replacing the once-common standard of a royalty based on sublicense income (which, in all honesty, I have never seen used in the licensing negotations I have been involved with).  The panel advised that in cases where sublicense income is used as the standard for the sublicensing royalty rate that the following should be excluded: research and development payments, equity, patent reimbursements, other research and development materials and equipment, and the fair market value of cross-licenses. 

The speakers highlighted an important distinction in how UC and Stanford prefer to handle patent prosecution in exclusive licenses.  The UC position is that the university controls all patent prosecution, whereas the preferred Stanford position is that the licensee controls all patent prosecution.  In both cases, the universities require that the exclusive licensee pays for the costs; however, UC prefers that the licensee reimburse UC for the patent prosecution costs, whereas Stanford prefers that the licensee pay the costs directly.

How do the universities deal with patent enforcement?

Ku indicated that Stanford’s default position is that Stanford has the right to enforce the patents, and that the licensee can step in if Stanford declines to enforce the patents.  Ku further stated that if the licensee enforces the patents, any damages recovered should cover costs first and then the balance should be treated as net sales/sublicense income. 

In contrast, Wolinsky stated that UC’s default position is the same as Stanford’s position, except that any damages recovered should go to the party bringing suit. 

Both Stanford and UC require university consent prior to any settlement, and provide the right to name the university as a party for standing.

How are Stanford and UC dealing with the recent MedImmune v. Genentech decision?

UC is taking the most unforgiving position on this issue.  According to Wolinsky, the position is that UC is drafting language into the license to state that if a licensee disputes the validity of a patent, the patent terminates.

In contrast, the Stanford position is a little more tolerant: Stanford is drafting language into the license to state that if a licensee disputes the validity of a patent, the licensee has to pay all costs.

Regarding other issues in the news, both Ku and Wolinsky indicated that the universities were very concerned about the prospect of patent reform, particularly with respect to the proposed changes to the "First to File" Rule.  Ku and Wolinsky also stated that both systems were now adding export control language to their NDAs as well as licenses.  Finally, with respect to sponsored research, Ku indicated that the Stanford policy is that the university is declining to set a royalty rate for inventions arising out of sponsored research, whereas Wolinsky indicated that UC continues to agree to a royalty rate range.

All in all, Ku and Wolinsky gave a very informative presentation on current licensing policies at their respective institutions.  After attending this presentation, however, I now find myself wanting to hear more from other universities on their current policies and procedures on licensing.  So, I am formally issuing an invitation into the blogosphere to any other universities who would like to share information to prospective licensees on their current licensing policies, procedures, and negotiating strategies: please share with us any insights on licensing at your schools, and this blog will gladly provide you a platform to publish that information to the biotech and licensing community.   I welcome your commentary. 

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