Venture Capital News

Guidelines Offered for Responsible Technology Licensing

The nation's top research universities and the Association of American Medical Colleges (AAMC) issued a set of shared guidelines intended to protect the public interest when universities grant licenses for the rights to their latest scientific advances to private parties.

The white paper—titled "In the Public Interest: Nine Points to Consider in Licensing University Technology"—aims to encourage technology transfer agreements to facilitate broad development and dissemination of university-generated technologies. A key point is that researchers at universities across the country should be able to continue to work with intellectual property that has been licensed to commercial concerns.

While the authors acknowledge there are circumstances in which universities may need to grant exclusive rights to their discoveries and inventions, they suggest structuring such agreements in ways that will permit the scientific community to conduct studies involving the licensed technologies and to develop new applications for them.

The report grew out of an unusual meeting organized by and held at Stanford last July. That gathering brought together representatives of leading research universities, including university research officers and technology licensing directors. The white paper presents a consensus that emerged from that meeting.

Although the points are advisory with many of the guidelines already being practiced, Katharine Ku, Stanford's director of technology licensing, said "it will create a buzz" among those involved in technology transfer. "It may well be the first document that comes from the community that suggests a set of good practices for the rest of the community," added Ku, who worked with Bienenstock to organize the event.

In addition to Stanford, the paper was signed by the following universities: California Institute of Technology, Cornell, Harvard, Massachusetts Institute of Technology, the University of California system, the Chicago and Urbana-Champaign campuses of the University of Illinois, University of Washington, Wisconsin Alumni Research Foundation and Yale. The AAMC also has endorsed it.

Although universities have licensed their intellectual property for many decades, the Bayh-Dole Act of 1980, which encouraged universities to collaborate with the private for-profit sector to promote the use of inventions resulting from federal funding, greatly stimulated these practices. That law helped bring to the public a plethora of innovations, including such Stanford-born inventions as the Google search engine, recombinant DNA technology and the ability to make ring tones in cell phones.

But in recent years, as more universities have engaged in this practice, technology transfer efforts have presented new challenges. There have been cases—for example, some diagnostic tests for genetic markers for cancer and other serious disorders—in which licenses have restricted academic scientists from practicing the tests and pursuing new avenues of research. This issue has arisen because what's patentable, particularly in genetics, has moved upstream—closer to the basic science discovery and farther from the commercial product—potentially limiting new lines of inquiry that scientists only identify years after the initial license is negotiated.

As part of this commitment, the paper's final point suggests provisions in licenses to channel the benefits of the technology to those most in need—people in developing countries and members of other underserved populations.

The paper says that millions of people around the world are dying of preventable or curable diseases, and that technology transfer should help to relieve such suffering. "We have a responsibility to try to alleviate it, including finding a way to share the fruits of what we learn globally, at sustainable and affordable prices, for the benefit of the world's poor," the paper states, adding later, "Universities should strive to construct licensing agreements in ways that ensure that these underprivileged populations have low- or no-cost access to adequate quantities of these medical innovations."

The white paper also includes points on avoiding excessive litigation, minding export controls and managing conflicts of interest. A summary of the nine points is as follows:

• Universities should reserve the right to practice licensed inventions, and to allow other nonprofit and governmental organizations to do so.
• Exclusive licenses should be structured in a manner that encourages technology development and use.
• Strive to minimize the licensing of "future improvements."
• Universities should anticipate and help to manage technology transfer related conflicts of interest.
• Ensure broad access to research tools.
• Enforcement action should be carefully considered.
• Be mindful of export regulations.
• Be mindful of the implications of working with patent aggregators.
• Consider including provisions that address unmet needs, such as those of neglected patient populations or geographic areas, giving particular attention to improved therapeutics, diagnostics and agricultural technologies for the developing world.

The paper is online at http://news-service.stanford.edu/news/2007/march7/gifs/whitepaper.pdf.

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HP Joins UCSC and NASA in Groundbreaking Collaborative Venture

HP has joined the University of California, Santa Cruz, and NASA in a new venture focused on developing revolutionary science breakthroughs in the coming decades.

As the first industry affiliate of the Bio-Info-Nano Research and Development Institute (BIN-RDI), a collaborative venture led by UCSC at its NASA Research Park (NRP)-based Silicon Valley Center, HP will play a key role in establishing the institute's policies and priorities. The collaboration with HP provides new momentum to BIN-RDI programs, which are focused on the converging fields of biotechnology, information technology, and nanotechnology.

The collaboration with HP is a major milestone in a project that already involved NASA and UC scientists in Silicon Valley, said Carl Walsh, vice provost for Silicon Valley Initiatives and professor of economics at UCSC. "The BIN-RDI is one of the key initiatives in UCSC's overall plan to bring UC research and educational programs to Silicon Valley, and we are excited by the prospects this partnership offers," he said.

Building on UCSC's existing partnership with NASA Ames through the University Affiliated Research Center (UARC) in the NRP, the BIN-RDI is strategically positioned at the forefront of emerging technologies made possible by advances across a range of disciplines. Many experts view the convergence of biotechnology, information technology, and nanotechnology as the nexus of the next major technological revolution. As the institute's keystone industry affiliate, HP will help define the research agenda for the BIN-RDI and play a leading role on its industrial advisory board.

HP is setting an example for other Silicon Valley companies by demonstrating confidence in the institute's plans, according to David Lackner, director of the BIN-RDI Affiliates Program. "We're doing something truly different here, and HP is stepping up to show that it really believes in this," Lackner said.

The BIN-RDI provides a central "commons" area for research and development where intellectual property is shared among participating universities, companies, and government agencies. Adjoining the commons is transient, private laboratory space ("T-space") for proprietary research. This research architecture is designed to accommodate multi-sector partnerships for both start-up and established companies, and to foster rapid development of innovative discoveries and technologies.

In addition to endorsements from industry, the BIN-RDI has received substantial support from regional education leaders and state and federal elected officials. With critical assistance from Senator Dianne Feinstein and Representative Anna Eshoo, the initiative obtained $2 million in federal seed funding in 2006. HP is providing additional funding to support the institute's operations, and NASA has also made significant contributions. The institute is now moving into a new building, the Advanced Studies Laboratory, located in the NASA Research Park.

Current research activities at the BIN-RDI include projects on thermoelectric materials and fuel cell technology. The institute also aims to establish a Nano-Science Policy Institute and develop educational programs through the Collaborative for Higher Education, a partnership involving UCSC, San Jose State University, and Foothill-De Anza Community College District.

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Samsung Venture Investment Corp. Makes Investment in Advanced Micro-Fabrication Equipment Inc.

Representatives of Advanced Micro-Fabrication Equipment Inc. (AMEC), an emerging Asia-based developer of proprietary innovative semiconductor processing technology and equipment, Tuesday announced that it has raised $8 million from Samsung Venture Investment Corp. (SVIC) and other investors. The new funding represents the second and final closing of AMEC's Series B effort, which secured a total of $43 million.

Under the terms of its investment, SVIC will hold board observer rights. Such rights entitle an SVIC representative to attend select sessions of AMEC's board of directors meetings that do not involve the disclosure of customer- specific information.

The first closing of AMEC's Series B round was announced in October 2006. The amount secured at that time was $35 million. The investors included: Walden International, Lightspeed Venture Partners, Goldman Sachs, Redpoint Ventures, Interwest Partners, Bay Partners, Global Catalyst Partners and KT Venture Group.