Speaker 1  0:00  
Good afternoon, everyone. Welcome to giving and receiving negotiating IP with foundation grantmakers presented by Autumn. My name is Holly Lundgren. autumns online professional development manager, and I will be your staff host for today. All lines have been muted to ensure high quality audio and today's session is being recorded. If you have a question for the panelists, we encourage you to use the q&a feature rather than the chat feature. If you have a technical question or comment, please do feel free to use the chat feature for that. Want to take a brief moment to acknowledge and thank autumns 2020. Online Professional Development sponsors? We appreciate your ongoing support. And now I'll introduce our moderator, who will in turn introduce our panelists. Megan pitcher has served as a licensing associate with the Baylor licensing group of Baylor College of Medicine for the past four years. Her role includes Technology Evaluation and Triage, patent prosecution management, commercialization, plan development, negotiation of complex technology issues and much more. She manages a portfolio of over 100 novel technologies from 10 over 10 departments across the college. Megan also drafts and negotiates inter institutional agreements for management of jointly owned intellectual property, and advises on and negotiates IP language for industry sponsors research agreements, nonprofit research, foundation, grant award agreements, and manufacturing agreements. Now I'll go ahead and turn it over to our distinguished panel. welcome Megan, Ben Louise, Alex and Judy, thanks for being here.

Speaker 2  1:48  
Thank you, Holly for the introduction. And thanks, everyone for joining us today for a panel giving and receiving negotiating intellectual property with foundation grant makers. So we organize this panel today because private research foundations and charities that provide research grants and recipients of these grants in academia often have overlapping mandates when it comes to performing work for public good. However, there is a trend where more of the grant providers are making more asks of the tech transfer office regarding IP management. These trends include more foundations and Terry's asking for IP reporting from the institution. Additionally, opportunities to assist the commercialization and or sharing and parcellation revenue. These changes expectations are leading to more frequent need for tech transfer officers to negotiate IP classes with our foundation partners and cheerful research grant providers. So for any successful negotiation, we need knowledge about the challenges each party is facing and their specific needs. And today, we're hoping that the audience will leave the webinar. With an understanding of foundation charity grant makers needs, expectations regarding IP and adventures and arising out of academic research at the fund. I also hope that she will gain some strategies and best practices for negotiating IP language with foundations and charities. With that, we have a great panel today. I thank everyone for joining us on the panel. I'll provide brief introductions for everyone and then we'll get started with our discussion. I think it'd be a good one. I'm just gonna go in the order that you guys are showing on my Zoom screen here. First, I have Judy Genovese. She's a senior transaction officer at the University of Southern California Stephen center for innovation. Among other things, she leaves IP contracting for UCS agreements handled outside Stephen center, and oversees material and data agreements for you to see. She's a member of the State Bar of California that licensing executives society and autumn. Next, we have been doubling is deputy managing director of the pin Center for Innovation at the University of Pennsylvania. It leads licensing, corporate contracting and corporate outreach groups. And as a member of autumn LS and chair like secretary of the board of governors for certified licensing professionals. Next up on my screen, I have Alex Silva. He's the founder and chairman of the Epidermolysis Bullosa research partnership. The EB research partnership is the largest global nonprofit dedicated to funding research to treat and cure EB EB research partnership uses a venture philanthropy model to fund research. Next, I have Louise Epstein. She is the former director of university partnerships for the Walton Family Foundation, where she design grants for the University of Arkansas. Previously, she was the founding Managing Director of Innovation Center at the University of Texas Austin. She analysis scientist and commercializing research as a Principal Advisor for the large data Institute. Thank you, everyone, for joining us. All right. So to kick this off, my first question for open for the panel. What in your opinion, is an ideal framework or model for relationship between a charitable foundation grant maker and an academic institution regarding IP management and commercialization of inventions? I'm gonna throw this one to Alex to get us started.

Speaker 3  4:43  
Oh, well, Megan. Thank you. And thank you, Otto, for putting on this panel. It's an honor to be here. And I appreciate the time of my fellow panelists as well. So I've had the opportunity of working with one on one prior to this. So happy to answer your question directly. In My view and taking a little bit of a step back, if you look at the entire ecosystem of constituents here you have the foundations or nonprofits that are often funders of research, you have the academic institutions, and then you have the commercial partners. On the other end of it. It's a very simplified view. Ultimately, the idea that EB research partnership or ERP, works under is that we should all be working together to achieve our goals. And we should all share in the rewards of those goals. Those mean a couple of things, most simply being the any type of financial game or economics that come from it, as well as obviously any type of social good. So in the case of medical research, it's helping and healing all those who suffer from EB which is a terrible and debilitating condition, as well as the financial rewards that that come with a successful and sustainable therapy. Historically, those financial rewards have accrued to two of the three partners, the universities and the commercial parties. So I think the framework really should be one of partnership, nothing else than kind of saying we're all linking arms doing this together, because if we have similar incentives, and we all share in their words, chances are it's going to be a a greater ecosystem of gain in productivity, because the nonprofit partners are often de risking early stage intellectual property, and in enhancing their participation or our participation. It furthers the cycle and doing so. So really, that framework is one that says, you know, nonprofit, or ERP and tech transfer office at any given University, here are the goals we're trying to accomplish. Why don't we work together in a way that meets our mandate, as well as your mandate that has an embedded assumption, of course, which is that this idea of nonprofits participating financially, is one that is a trend that is not, that is not a flash in the pan that it's here to stay and growing. And I truly do believe that, based on the just overall analysis of of the world, there are very few if not any sectors that exist outside the nonprofit sector in which you de risk early stage intellectual property, and simply hand off your economics to the next phase. It also, if you're looking at the current backdrop of the pandemic, it's written in The Wall Street Journal the other day that as much as 40% of nonprofits may not survive. Part of it is because the business model is so tough. So this augments the core business model of fundraising, by projects that your derisking to help the population that you wish. I will say most importantly, though, our success at ERP. And we've definitely made our share of mistakes, though, I believe we have very good relationships, on average with our with our academic partners, is one that approaches this in a non adversarial, in a very collaborative way that collaboratively that helps explain what we're trying to accomplish, as opposed to purely demanded.

Speaker 2  7:54  
Thank you, Alex, for that insight. Throw it over to Judy, do you have comments on that? Um,

Speaker 4  7:59  
yes, um, we've worked closely with Alex. So they are his group is a somewhat rare breed in that they truly live by that model that they have now presented. But I think Alex, your assumption is absolutely true that more and more there is a sharing of revenue, asked for buy foundations, about 10 years ago, or so when I started working in this area. There were very few that asked anything, pretty much of the universities, it was sort of like, just here's the money. And here's what you're going to do with it and tell us what happened. And over time, there have been there has been sharing of money, there have been more constraints put around what what we can do in terms of licensing and what has to be in the licenses and patenting? And what happens if we the university choose not to patent? So I think the trend is much more involvement on a general basis. Very few do we get any more that just have? Here's the money and it kind of, in essence. So I think I don't know if there is an ideal for university. I think there are different stakeholders, I'm sure that a lot of the investigators would just love not to have any constraints. Because when there's a constraint from the foundation, we have to, in a way, trickle that down. And make sure that the fact the investigators are doing reporting and doing things timely and sending them to us so that we can comply. So it's not as a free a world as I think some of them are used to. But I think that is something folks have to get used to because as I see it, the foundations really can if they have expertise and are not just a source of funding can add to things they will have contacts that we don't have in in the business area in the area of in particular if it's a healthcare area, with the diseases so they can help us get the end of end results. Have our research out into the public for the good of the public. And I think that is something that no university would like to turn aside. We'll take that help, if we can get it. But there are strings that come with that. And it is, it is a different model. And it has been difficult for any university, including ours to accept. So I think it's going to take time for that model to evolve. But I think it's coming.

Speaker 2  10:26  
Thank you, Judy. Next, I'll throw it to Louise. Do you have any comments on ideal models or frameworks for this relationship?

Speaker 5  10:35  
You know, I do, Megan, and thank you, thank autumn. Thank panelists, I feel the least, that I'm the worst person on this panel. Because I come from, I think, a different angle. When Megan first told me about the idea of sharing revenues, I was horrified, I had not experienced it. My lifetime was spent at the University of Texas at Austin, before the Walton family hired me. So I have a little bit of foundation experience, but lots of experience at the University. But then the more I learned from Alex and the more I stepped back and thought about this, as what is the university's goal? What is the federal government's goal with all this research, and in my mind, the point is to have an impact to commercialize. And that's, of course, the focus of my life. Now commercializing research. So I thought back to my days at the University of Texas, where I work so hard as all people raising money for commercialization, do it was so challenging to contact potential donors, and encourage them to contribute to the commercialization project, they generally were not interested. And my pitch was, we want more than your money, we want your involvement, and to see what we've got going here with foundations, public charities, getting a piece of the action, I think we should think of that. And I say we I think university should think of it as Oh, my gosh, we have got a powerful new partner. And that partner can open up so many doors, and relationships, which are behind every one of those doors, in my mind is the secret to successful commercialization. So really, if if I think the university should look at what the donor can what doors, the donor can open for them, because that is invaluable. And anyway, I'm very excited about this new model. And I, I think it's it's always about communication, understanding who the donor is understanding your needs, and then creating a bigger pie. Because getting a smaller portion of a bigger pie is a lot better than having no pie. So I'll stop there.

Speaker 2  13:14  
Thank you, Louise. And next, we have Ben, can you provide some comments on ideas or models or frameworks?

Unknown Speaker  13:19  
So thanks, thanks. Thanks. Thanks to autumn and my my fellow panelists for participating today. Yeah, you know, my colleagues have touched on a number of a number of points that I would wholeheartedly agree with, I just back up one step and just say, you know, the support that universities receive from non for profit foundations is is critical to supporting their research enterprise, they're often funding projects, for which there are not other available sources of funding. I think our interests are really closely aligned in terms of saying, I think it was Lewis who said, impact out of what comes out of the research that happens at university. And, you know, part of the impact comes from traditional academic publication, which is great, it advances knowledge. But another way to have impact, as we're all aware, is through commercialization. So, I think there's a close alignment that you know, football for those for the for the funder, and for the for the academic institution. In terms of the model, I think, again, what Alex has resonated with me as well in terms of a partner commit a partner who comes to the table, you know, who works with with with it with the, with the tuition, to put a framework in place where, you know, commercialization is most likely to be successful, come to the table, you know, with the, with the willingness to kind of listen and understand, you know, the views of both parties rather than this is what we absolutely have to have and this is non negotiable. Take Take the money under these terms or decline it. And I think in terms of we've touched on the revenue piece. Yeah, I mean, I think it agree with Judy, this is this has become more commonplace, but it's been around for for many years, I think in terms of certain foundations expecting to kind of received in the upside associated with any commercialization. And from my perspective, that's not, that's not an unreasonable ask. To the extent that it's kind of proportional to the, to the contributions of the of the foundation to the commercial commercialization effort, or even the research that leads to the commercialization opportunity.

Speaker 2  15:44  
Thank you. And while we're on the top, this topic of, you know, ideal frameworks. I have a great question from the chat here. And the question is, how commonly have you seen foundations getting involved in helping with meaningful industry connections that may lead to a deal. So I'll throw that over to Judy, because I think she might have an interesting example.

Speaker 4  16:03  
I have not seen it very often, to be very honest with you. Now, it may come in to other people in my office. And I don't have any vision on that. But I'm at the outset, when we're negotiating, there are very few that speak in terms that, for example, Alex and his group do, which is we are going to be involved, we want to be deeply involved in the agreement and how it's done and who it's done with and things like that. And that's very helpful. But I have really not seen that anywhere else, that level of involvement. I have seen, I will say, more agreements that have particular terms that and a foundation will want in our agreement, there usually terms around termination, if there is not diligent efforts to pursue and what happens in those instances. But that is much different, I think, then, then wanting to be involved in finding a licensee and, and getting the product developed and out to market. And I'm gonna backtrack, and thank everyone, I missed that. I just went, Wow, boom, right into the topic. Thank you, Megan, or autumn or the panelists and my fellow panelists, it's been wonderful to get to know you all.

Speaker 3  17:10  
Megan, may I add to that? So so we we've worked, as you can tell, Judy and I are Foundation, USC have a long and really productive relationship? I can tell you from a perspective of ERP, how and how and when we've gotten involved, because it's a great question by whoever asked it? And the answer is more, it's more common than you think. But it takes a couple of factors. One is, and this would be for anybody who's thinking about this from the tech transfer side, the any nonprofit, and I would tell this, all my nonprofit brethren who, who asked about this needs to come to the table with the skill set on their side to be able to converse with Judy, you, their colleagues on both business terms and investment terms. So just because you want to do this, you know, I kind of use the example I could, I could want to play for the Olympic ice hockey team. And I did, I was never good enough. I mean, I wanted to I never did, but just because you want to doesn't mean you have the skill set. So any nonprofit that wants to do this should have a board member or advisors, which mean lawyers that know what they're doing someone on their board who understands intellectual property, probably an IP lawyer, someone who's done principle investing. So all those skill sets so that it's not on duty in the universities to educate the group, but instead to converse as equals, in these areas, once you have that skill set, which it depends upon the nonprofit and many do and many don't, I'm not making a I don't know, the actual numbers there. It's really related to where what state the research is at. So nine years ago, 10 years ago, you know, when we, when I got involved in TV was actually closer to 11 or 12 years ago, things were purely in an academic setting, they weren't far enough along to be anywhere near human clinical trials. And the point that I see about foundations like ours is to de risk things such that you can get to the stage where commercial capital is interested. And it's typically as you get closer to the phases of human clinical trials. So for the world of that I live in, of EB, we have recently the model actually is interesting and continues to evolve, where we've brought partners to universities who then license and do it on their own. Increasingly, what we're finding with universities, which would be interesting, and you know, I don't Judy and others, this isn't what we do the duty because the research we're doing phase is actually changing the model a little bit and where the new partner comes in commercial partner comes in and forms a company and both the University and the foundation becomes an equity holder on that. So everybody's interests are aligned plus whatever the other university aspects are, but it really, you know, it's key having the state of the research being at a point where commercial parties are interested. So it has to be far less long and the risks and then having the skill set from the nonprofit side to be able to engage and that means not just on the negotiation skills and things like Having the networks to do it. So people who know people in the biotech investing industry in the pharma industry, you kind of have to come to this in a way that says, not only do I want to do this, but I've done all my homework such that putting yourself in the position of someone who runs a tech transfer office, and has a lot of things they're doing all the time, how do I make this as easy as possible for that person to buy into this agenda without creating additional work? And by doing that you have to same way for anything else in life that you want to accomplish, kind of come with that full skill sets. So no, that's helpful and asking, I wish I had numbers for the individual. But if we were to be able to sort the universities, or the state of research based on stage of research, and those factors from the nonprofit side, I bet you'd see an increasing rate of moving to bring in commercial partners.

Speaker 4  20:51  
I would like to add something to that. I have seen a number of agreements of late where foundations are asking for license rights back, which allow them to also sublicense deep into commercial entities for research purposes. And at first, that was kind of what what were they doing there. But I can see from what Alex has just said that it's possible that that is a beginning avenue of them becoming more involved trying to develop, help develop quicker, and help develop people who can get a product and then they would still come back to the university for commercial rights for the product, but have an avenue for further development and contacts into people who would want to do that with the rights for the foundation itself to give people the right to do that research.

Speaker 3  21:37  
Exactly, Judy, so you hit the nail on the head. Um, you know, the the model that really works is when the university feels the nonprofit, there's my perspective is an extension in a partner, not a pure extension, because the university has rights around IP that the nonprofit doesn't. But as someone who was helping that journey to commercialize this and bring it in a sustainable fashion to whatever party is going to benefit from the research. The other product, say God, which is interesting, we do ask for typically an interruption license. And it's not for this is if it goes to a third party, and that was born, like many of the things that have come from this out of a really awful experience where we thought a project had been kind of taken home because they very large Well, well, you know, billions and billions of resources took over a project. And then as often happens in these large companies, the leadership of the project left and it languished for five years. So people literally, you know, people died in the community who could have been helped. And for us that's less about economics, and just making sure that if we are funding research to help this group, and someone doesn't want to pursue it, we have to be able with the university's blessing to be able to lift it out and make sure it's pursued to its completion with whatever partner typically the university is then involved in, in blessing the new partner, but nobody can just sit on this. Because the it just happens. It's not that they're bad intentions, it just sometimes happens in larger entities.

Unknown Speaker  23:07  
Thank you for that. Great, I would add,

Speaker 5  23:10  
I'm sorry, I would add the university takes back, you know that with your support, the university takes back the technology to read license. And Bob blinder has done that with spectacular results. You're reminding me of two things. And again, I'm in the position of I'm new to this thought but I but I love it. I am thinking that the tech transfer office who is ever as representative, the university should keep in mind two things. One, that they are gaining a strategic partner. So they should look you know, it's like we've moved up the investor cycle, and now you're getting an investor early, and you're getting that just investor a strategic partner. And so I think that's very important and, and valuable it it. I think it puts the university in a non confrontational mode to think, Hey, I'm not losing something. I am gaining a strategic partner. And then going back to the idea of impact. I talked to Bob line or MIT Of course, everybody knows him about this. I said, How do you measure success? And I love his answer. He said lives impacted. So again, university keeps in mind, I want to impact lives. And I want to extend my abilities. Third, the strategic partner, the strategic partner should be the tech transfers office dream, because of the way it can expand the resources and ultimate success. Some technology.

Speaker 3  24:53  
Thank you, Megan, what can I just add one other quick thing which is interesting to pick up on what Louise said? One thing that has come up more recently With us is when your partners in a negotiation with a third party commercial party, there, you know, in obviously is a private webcast. But think of the dynamics of a negotiation, it actually is very advantageous, we found because if the university has certain rights and the nonprofit do, but they're really more aligned than not, that can often lead to a situation where it's a better outcome for both of them because neither can decide purely on its own. So the commercial party has to please both, which usually can then since our incentives are aligned, leading to a better outcome, and we found that specifically, whether you can call it as simply a good cop, bad cop dynamic, there is some way that you get an outcome. And it's, it's, it's been fascinating, because that's actually what's been our case recently with it with another university that we've been working with in forming new entities.

Speaker 5  25:51  
Question for you, Alex. So when the nonprofit or foundation takes revenue, do they become an owner? So is that something investors have to look at that they own a piece of it? Or are they, in fact, a silent partner just sharing in the revenues from that phone from the to the university, and then out to the silent partner? How does that work?

Speaker 3  26:18  
So EB research partnership is a 501. C three, we are a we are a public charity. So we are able to do exactly what you said we're entirely a silent partner. We actually the rules on this, by the way, are not that we can't do it. But my view meaning you could have, in theory, you could have a you could have governance and other rights. But the reality is, that's not I don't view that as our role we taking governance rights one, it complicates the mission of the nonprofit, our role is to provide money advanced research to a point where can be commercially sustainable to it could be viewed as showing favoritism for any given therapy. And the reality is we don't know. So we have made it a standard aspect where we, once we get to the point where the economics are fine. We do not ask for governance, we're just a shareholder, like any others, even in ones where we're a large shareholder. In fact, we will specifically give a board seats or ask someone else to appoint them. Because I think it complicates the matter. Once you start moving into control, governance positions, you know, that starts that starts getting even more murky. Now, it doesn't mean it can't be done. But we've decided to keep it simple for now, which is if we can do it this way. And when the partners we have they're usually wonderful people who are some non commercial entity that's taking hypothetically one EB project, and trying to develop it through fruition and commercialization. Like they have every incentive for it to be successful, it's successful, they've got a great product, and they and they also have great commercial success. So we feel we are aligned there. So the short answer is we try to be the silent partner without governance rights.

Speaker 5  27:52  
Very good. Very good, because so many times pastors don't want a university to be that they don't want to be partners with a university. I mean, they, they're comfortable with losing a piece of the pie. But dealing with the university may as an example may not be something that they're interested in. So I always, you know, think the next step, how is this gonna look to investors? And it sounds like, of course, you already have.

Speaker 2  28:26  
On that same topic, one of one of the, you know, with these changes in expectations from charitable foundations and research foundations, is actually enacting this into a contract that will work for the tech transfer office. So I'm wondering if Ben has any comments on some negotiations, he might have been in some of the sticking points and how those result was trying to meet these new expectations from foundations and charities?

Unknown Speaker  28:49  
Yeah, I mean, I think, you know, I think, I think the, it's difficult to kind of lump the kind of foundations all in together. I mean, they're very, they're very different in terms of, in terms of their capabilities, I think is key, but also the sort of understanding of the business that where we're all in. And some foundations are very sophisticated in terms of how they think about these things. You know, others are less, um, where we often end up in sticking points in negotiation, I think of where the other party does not really have a great understanding, or reasonable expectations about what the output is likely to be out of the research that they're that they're funded. You know, Penn we, we get about, you know, 400 inventions come through our organization, every year of which foundation funding just touches you know, a subset of those. So when you even like a very sort of what might be seem to be innocuous provisions in a contract with regards to reporting can be incredibly You know, cumbersome for a staff that is already kind of incredibly busy dealing with, you know, dealing dealing with magnitude of different different issues. I think that the, the sticking points on that commercialization side of things, and we've touched on some of these points, but you know, a particular thing that comes up is around, you know, the sort of the requirement for Diligent development of technology that comes out of the funded work. I think that that's a completely that's a completely reasonable ask, but how the foundation kind of approaches that with with respect to the contract, and, you know, cause cause, cause some problems there. And I think sometimes there's, there's requirements that are imposed on the academic institution that will actually, you know, preclude a commercial partner from licensing the technology, you know, because they believe there's a possibility that it might get yanked away because of obligations that we're beholden to in the in the agreement with the foundation. So, again, we also talk about this as sort of like sort of a partnership. And I think that's the right way to approach it. There needs to be an active discussion around that. And, and an education requirement on the part of the the office office like ours, to help the sponsor understand how, you know, what they're asking for on the face of it, you know, we understand it, and it's been reasonable, but it's actually going to be sort of a toxic pill when it comes to, to commercial partner, and makes us question whether we should even invest in intellectual property protection for that technology, which obviously, the institution is doing invariably at risk. Now, with a few exceptions, you know, the foundation is not not supporting those is not supported in those costs. So, again, there has to be a read, there has to be a dialogue around these around these and I, again, I'll say it, again, different foundations, approach things differently. Not only do they have different understandings of sort of commercialization and the different support they can provide, but bandwidth for negotiating contracts. I mean, that is what I've run into, pretty frequently, where there's just, there's not an appetite to even look at the terms because they're issuing so many grant awards, they don't want to be negotiating a different contract with each academic institution. And in the same way that foundations are very different. We can't lump all universities in together under the same umbrella, they do have different wants and needs, and they do have different appetites was a risk associated with Western contracts. So I'll pause there. I mean, that's just that's just, that's just one example. But I wanted to bring it up, because I think it touches on some of the things that my colleagues brought up on on the panel so far.

Speaker 4  33:01  
I would agree in my experience, there are quite a few foundations, some of them based solely on size, because they're small, and others just don't have the resources or are or nor are they willing to allocate those resources to negotiating contracts. So very often we get a this is non negotiable. And sometimes even when there's humongous typos and sentences that mean nothing, you end up having to decide if you're going to sign it because you can't negotiate. So there is that aspect. And that even though those contracts will often have sharing and review of contracts and provision provisions with regard to patenting and even assignment of rights, if we choose not to patent, there will be no discussion of any of those terms. So that makes I think universities feel a little less comfortable toward foundations, because we're sort of given the Take it or leave it scenario from a lot of foundations. I'm not saying they don't have reasons for doing that. But it's unlike Eb, where they were willing to negotiate the whole contract with us. A lot of people are not and are not willing to explain why they're doing what they're doing. And sometimes I see such such exact language copied from one to the other, that I know that that is part of what goes on, and that maybe the foundation doesn't even really itself understand why it's doing it or what it's doing it but a fellow Foundation did it so it must be okay. And so we have to face that as well. And that becomes that's a little more difficult. It's a little more difficult to have a generalized feeling about foundations when you're getting sort of hit very differently by different foundations.

Speaker 3  34:44  
So, you know, obviously I'm I'm a huge advocate of this model, but I think it goes hand in hand with what you said. And just to reiterate earlier, if there are foundations or nonprofits who are listening or will listen to this, you really have to either develop the skill said, get someone on your board, get a good lawyer, you can reach out to me I can contact them such that it makes it easy for the tech transfer offices to have the conversation because the my way or the highway approach just doesn't work in general, I mean, let alone and let alone in a kind of a, a relatively growing a nascent area where the rules of the road are still being defined. So I think they should, should happen, I'd say from the tech transfer side is you're ever you have so many demands that, you know, be as understanding as possible that sometimes I often wonder, I wish there were resources where, you know, tech transfer can say, you know, why don't you call this, you know, this person does a lot of this, why don't you call them and then come back to us, because then we can, can have a conversation. And the other thing I'd add is Ben Pollack brought up some really good points, you know, many of these things, people think you just kind of have an agreement, but the devil is really in the detail. I mean, you know, to use as many tracings as I can, and one session that that we find is, you know, patent prosecution is expensive. So one way to deal with that is, if it's successful, the university gets reimbursement off of that off the top, plus maybe some nominal such that it is not a lost cause, or, or the in other ways we've dealt with it before as patent prosecution, the foundation has to pay X amount per year. So there's a fixed amount that offsets the university's costs. So each of these has a solution, depending upon and that's just one of the things you mentioned, and there plenty of others. But it takes real time. I mean, that's the you know, the biggest time the biggest aspect I you know, we talk about it, ERP is not the SAV, which our Scientific Advisory Board, it's not, it's not the grant review process, it's the contracting phase, you know, we you know, when we, you know, it will take on average, if it's a new contract, at least three months, maybe more, maybe more, you know, if it's a renewal, like if we went back to junior extending, it's much shorter, but can take as much as six months, you have to be able to put in the time, and there are a lot of parties involved. So the thing that, you know, I will say for this model to be successful is not just to commit to it. But the same way you would make a priority the programs that you are running, and thinking through the details of how you disperse your cash, how you provide the services you do from a nonprofit perspective, you have to put their same man energy into this, it takes a lot of work. And it should, because you know, these are contracts that are going to have, you know, have important clauses for years to come beyond the leadership that you probably have, it could be 10 years from now, when this contract has revenue and becomes more relevant. So you want to make sure you put the time in.

Speaker 2  37:39  
Thank you, and to that point, because because of the points you've been highlighted Exactly. And something that Judy mentioned earlier, things we have to put in these contracts, make constraints that kind of percolate throughout the institution. So this one's for Ben and Judy, how do you manage these the internal stakeholders, your PI's that are expecting the money and departments that might be affected by certain payment structures? How do you manage all your internal conflicts that you might have to deal with accepting some of this language? And some of these changes in these? These frameworks?

Unknown Speaker  38:15  
Yeah, it's, it's, it's, it's challenging. I mean, so I work at the Penn Center for Innovation, we genuinely applied mostly on the sort of the commercialization and IP components of these contracts. Most of the, the reporting obligations as well often stems their organization, there's other aspects of the contract that the handled by our grants and contracting group here at Penn. So, you know, they have had they have to manage that. But I think, you know, for us, yeah, I mean, there needs to be an active dialogue with, with the investigator about what are some of the ramifications of are agreeing to accept that funding, you know, sometimes for the work that is being supported directly under the grant. But depending on how the agreement is structured, it has the potential sometimes to bleed into other aspects of their work. And so, if that is the case, you know, we really, we have a duty to make sure that the investigator fully fully understands that and surprises everyone else on the project and the implications associated with receiving that funding. It can also impact the department, which means we may have to get the flattening of the department chair. I've also had, you know, have had grant award agreements where it's, it's, it's, it's, it's that there's a risk for the institution. And so at that point, you know, I'm running it up to our Vice Provost for Research and our General Counsel, to see you know, can we really get comfortable, you know, accepting their funding under the, under these terms and conditions, and there are certain there are certain things that are just there are walkaways for the institution. And, you know, unfortunately, you know, when it when it impacts, when it impinges on the academic freedom of an investigator and their ability to publish, we do see those types of things companies do on occasion, you know, as it relates to ownership of IP, you know, these are things that institution we will we won't agree to, or if the receipt of funding has an impact on an investigator who is not receiving funding for the foundation, that is an issue that we're just not willing to do that. I mean, just not, you know, it's not fair. But it's not, you know, so managing expectations, it's, it's, it's, it's, it's a lot of work and we spend, we spend a huge amount of, of our time, making sure everyone really understands, you know, what we're while we're embarking, what we're embarking on.

Speaker 4  41:03  
Yeah, we do pretty much the same, we have the same concerns. And they're well said by then we formalize an agreement with our PIs when there are extraordinary terms in any of our foundation grants when we're sharing revenue, when we have to disclose when we have to do certain things with patenting. And we call it an acknowledgement. But it is actually an agreement by the principal investigator who is undertaking an obligation to get everybody who works under that project, and with that money, to sign off the same thing. And we also, part of the reason for doing that is that a West Coast University a number of years ago was hit with a situation where investigators got research money, and also thought they should share in money under their intellectual property policy. And we want to make sure our PI's understand that, you know, they are giving up money in doing this, maybe they're not it depends on the contract. But assuming they are, that they understand that. In particular, when there is a sharing based on on how much relative contribution the foundation made to the IP, we will often want the and that's on limited in some major way, we will want the department in school to sign off because it will affect their income as well. And if there are issues with regard to how broad the grant the give is, and also how much we're sharing, we will go to the Vice President research as you do. And get an okay to do it, at least in the first instance, that we deal with the foundation. So there and a lot of our investigators don't particularly care for the having to do the acknowledgments, but they've gotten kind of used to it. And it is a protection for the university. More than just saying we talk to them, we haven't actually in writing that stays in the file with the grant. And shows that we have let them know and we've gotten their rights, including things like just disclosing properly so that we can disclose to the foundation, because I know often that the individual investigators will disclose directly. And that's fine, but we want it's the university's obligation. So we want to make sure that we have the ability to comply with the agreement.

Unknown Speaker  43:29  
I think that's that's really important. JD I mean, the agreement is between the institution and the funder, but the reality is, it's incumbent on the investigators to kind of tell us about some of these things that we can, you know, we can report out, you know, I know some foundation will send like a, like, instead of a, you know, completion of a short like annual report was in relation to to to inventors, Pioche. I know, it's a more paperwork, but I actually like that, because it's it's sort of imposes it imposes that discipline on, you know, our officers in PEI to check the record, what came in, was the funding us. Did we follow the pattern? You know, are we about to start to think about entering into an agreement that's related related to that? That's really helpful from our perspective, just because there is, you know, we're fortunate this huge amount of money coming in, right, and it's how do you manage all those obligations? It's not so challenging with regards to the federal government because it's standardized. But as we've seen, and I've said, Every Foundation is different. It's probably the third time I've sent it said it, but they all have, they all have a different like reporting timeline, right when we have to do things that its compliance is is my function. You know, our office spends a lot of money in terms of supporting that activity, because it is It's important, but it's time consuming.

Speaker 2  45:07  
Thank you, I have a question from the q&a, which is relevant here. And it's also relevant to our discussion about us being able unable to throw all the foundations and charities into the same box. The question is, how about a universal NTA? Or universal template agreement that we can use for these interactions? Do you guys have any comments on that?

Speaker 3  45:30  
I've noted them come true, as as I've expressed to this panel in our prep session, I don't think it's I don't think it's realistic. But I think certain principles can be universal, I think you can come into and this is just my view, because, you know, people think about revenue share and other things and every contract is different. I think the the guiding principles we have is we want to, we want to be in a situation. So by the way, without I don't mean to dismiss the question, the reason it is very difficult is Every Foundation is different in every disease aspect is different. So typically, and I would advise this, anybody, those who really want to employ this model in the nonprofit world, have to be among the larger funders in their space. So if we were, you know, another, for example, if we were an Alzheimer's charity, incredibly important space, and our size would be very small compared to the dollars that others are putting out who may be entitled to certain terms, given the amount of capital they have at risk. So you really want to be one of the you want to be the largest, or one of the largest funders in your space, in my opinion, because I think it puts the university otherwise in a tough position. Because if they grant certain terms to very small participants, then that becomes an issue over and that's my view, that's not the universal view. But with that being said, That's why a universal size can't work. I actually think the key about it is focusing on the four or five areas that I can tell you consistently come up as conversations, one, our economic splits, um, our rule of thumb, be fair, like don't you know, this is not a circumstance where you want to be, you know, the most expensive cost of capital, you sure as heck don't want to be piggish. As Louis said, this is a dual mandate. at AARP, I care much more about getting commercialized products to those who need them to help their lives than any type of financial gain. I have to fund that somehow. But we never forget, our goal was to help these children. So we're never going to let something fall apart, over trying to be piggish on economics and you can that's different for everybody. But, you know, I think Ben might have floated, would you ever be any more than proportional? It's kind of a hard argument to make, like, why should you get all the economics and even if you are the only funder, the university has to have an incentive. So you've been if you are 100% of the economics, if I were advising you, I'd say 100% of the funding, you don't really want to be 100% economics, because if the university has no skin in the game, what type of resources do you expect anybody to have no skin in the game to do? So I look at it and kind of a common sense rule here. And I found when you do that university partners will also open up about their other funding sources, there are other obligations. The second has to do with compliance and tracking. And this was Judy and Ben said this, it is, you know, I actually really genuinely feel for my colleagues on this board. Because, you know, if you take everything, every kind of foundation, they deal with every contract and every project, it creates an enormous compliance machine of which there will be a software solution someday. But making sure you know, well past any of our tenures, as I was saying earlier, if these things pay out, we're entitled to X percent, but then there's been future funding, somebody has to do that calculation. So you want to make it again, simple and try to have a proactive role in simplifying it, we sometimes do it and then send it to the university for their agreement of codification. Think about it, it's really in your best interests. So those are two intellectual property rights. This gets a little bit tricky, and every university is different. I would say that, you know, there are ways to, there are people who will say, we never will give up ownership, there are people that transfer ownership. The key is what do you want as a nonprofit. And at all times, it's not necessarily ownership. I mean, you want to in some cases, if you're licensing starting a company, obviously, other cases, you want to make sure you have a say. So there are lots of ways to have a voice at the table. Without it being a black or white, you own something, or you don't own something. Um, and then the last part, which is going to kind of grab the third rail here, that comes to my off top my head is how we think about indirect costs and indirect costs are a complicated area, I would say that becomes an area that is very specific to each university and each institution. I wish there were a simple answer. There's not but there is a way to do this. When I have found when the university truly appreciates, that you're in the boat together and you're putting in the effort, you know, and you're working that they realize, okay, this is why these indirects matter don't matter, so forth. So it's really kind of doing a work alongside them that helps them be aligned with, with your mission and also understanding, you know, what they have to go through. So you can kind of fit into a lot of the other stuff. And if I'm missing one key area, you know, you can, you can get into every minutia, which, you know, we generally try not to, because, you know, our general view is if we have enough of the variables, right, and this is a success, even if we didn't get 100%, right, it's a high class problem, it'll be revenue, generative, will have helped our endpoint will have helped the university commercialized, and we'll achieved our mission won't be perfect, no, but who cares that you're in 90 something percent of the way there, so perfect, cannot be the enemy of good. Anyway, if that's,

Speaker 4  50:49  
you mentioned something, Alex, that reminds me of the ownership issue with IP rights. And I remember the first time we looked at a contract that said that if we declined to patent or just having started to patent decided we weren't going to put any more money into it, that we had to assign our rights to the foundation, some foundations are willing to just say that they'll pay if they want us to do and about some require assignment. And the first reaction was, oh, no, I mean, it was like, we can't do that. We never do it. But we look, we sat back. And we looked at and said, The truth is, if we're not going to patent it, we've decided it isn't worth patenting. So if somebody else is going to patent it will allow them to do that. The difficult part for us on that is that our our inventors, under our IP policy, have a first right from us that we will assign it to them if they want it. So that's another issue we have to keep in mind as we look at these foundation grants to get them to acknowledge that for this particular grant, if we decide not to patent, we're going to assign the rights and you lose your right under the IP policy. Okay. So it's, you know, it's part of it is looking at it a different way. I mean, there is a staunch thing, and there has been at our university that we own it, we're never giving up ownership. And the truth is, if you're not going to do anything with it, what have you got? You got to see that that aspect of it

Speaker 3  52:17  
is it goes to Louise's point earlier, you get? Would you rather have 100% of nothing or a smaller percentage of something great, because if you assign it usually retain economics, or have some form of it that, that that benefits that I have. For what it's worth, I have found that universities in the we tried starting this, you know why, at least what seems like a long time ago, eight, nine years ago, I have found more and more open pumpers. And because I've there I've of the people on the call, I've done a number of things with Judy, and you can't imagine how appreciative you are as a foundation head because you're really just trying to drive trying to draw, you're trying to make progress. And you're like, Well, what, what's an impediment to progress, and there's a model there. It's not built historically, to impede progress. And it doesn't in all cases, but it can in some cases, so we can find open minded thinkers, it's really a wonderful thing, because then you can work through the problem together. And as long as you're like we we have these two goals we both want to reach. So it's it's I mean, this in general

Unknown Speaker  53:24  
is important. I mean, I think, again, it's about sort of the dialogue around it. I mean, I know a lot of you should reverse the notion of an assignment if they decide not to fall, but I think, you know, the devil is in the details around, you know, how long does the institution have to decide whether or not the fall, you know, it, it may just be that the timing isn't right. From my standpoint, well, related to where, you know, the project is, or, you know, this commingle funding, and there's federal funding involved, and we're not legally legally able to assign to another party without going to the federal government. First, though, I think part of it is having that active discussion. But just to go back to Megan's original question, you know, around this in terms of sort of like, thinking, and one of the pockets that I have, you know, a unified, you know, agreement. I mean, I think that's a thing that is that is that is that is unlikely to happen. But, you know, Alex, you talked about having sort of, like, some common understanding that the pod is kind of adhere to and I'll make a shameless. I'll make a shameless plug for this. But there is a there is a group that was was formed with Health Research Alliance, Koga that folks may be aware of, if they're not I would encourage them to look into it, but it's the Nom nom nom, nonprofit funder research institution partnership stands for nsri and they've been had, you know, I think really formalize this back in 2017 had a number of meetings to try and kind of get that nonprofit funders and universities together to start talking about some of these issues and come up, as you say, with some, some sort of guidelines or sort of common sort of principles around how the partner should interact together. In a in a few key areas. I mean, we're obviously focused on like the IP, so the side of things, but that's definitely been one of them. Also, around indirect, which is what how we've talked before, and also just trying to sort of streamlining the contracting and reporting purposes, that contracting reporting obligation. So I would encourage folks on the call to check out that website, there's a lot of really helpful kind of documents. But again, it's coming up with those guidelines around that really with a view to getting somewhere close to what many licensing folks are aware of in terms of sort of the nine points to consider that was put together in conjunction with order many years ago. And even if you look at those now, they make a lot of sense, and academic institutions pretty much adhere to those.

Speaker 3  56:10  
That's a great point, Ben, if I can just add one other thing for those on the nonprofit side of the tech transfer side. One thing we have found useful for ERP is when we negotiate these agreements, we focus on trying to negotiate what we call, you know, these are our terminology a Master Agreement, because what we found is, for example, USC, there are multiple projects in the field of VB most of our larger academic programs. So we put the time in upfront, such that any additional project becomes much more plug and play. So you're really negotiating a contract, that can be whether each project is an amendment, or you just take the same problem shot contract, make sure the terms apply and swap out for the key researchers. But all the terms that have kind of that have any type of controversy are done, you put the time and do it up front. So be can be replicable such that you're effectively from I imagine the university side, amortizing that time over the incremental contract. So you're putting a lot of time on one contract, but it can expand to be over many of the relationship grows.

Speaker 5  57:17  
In my field of investment banking, we call that a shelf registration. You did all the work up front, it makes so much adults. Great.

Speaker 2  57:31  
Thank you, for all those great insights on it's obvious there are lots of obstacles and burdens to making some kind of mutable subcontract for these interactions. But you know, certainly to Alex's point for all, if we all have the same mandate. And we can approach something that looks like fairness to Ben's point, I think that's a good starting point. So I want to, I want to ask the question about, I guess, the breadth of IP that might be considered in these interactions. So on the one hand, you have a patentable invention, there are things like data, our foundations or charities looking for access to data, what do they do with the data, how we manage that on the tech transfer side, another item that I think about often from our institution are non patentable items, mouse models, cell lines, if anyone has any comments on how that type of intellectual property is considered and managed in these kinds of interactions, bendy, how many thoughts, you have a thoughtful look on your face?

Unknown Speaker  58:27  
Yeah, and just kind of sort of cast my mind back to the last one, when I looked up, I think you're right, in terms of, you know, the definition of what you often see or constitutes an invention is incredibly broad, I think we try and you look through the lens, just, you know, what the output is, and what our, what our objectives are, and what are the objectives is the foundation and try not to put a structure in place that is gonna kind of, you know, particularly when you're talking about, like tangible research materials, you want to be able to, you know, be able to freely disseminate it to advance the science and the research, I think that again, that's in the that's in the interests of both, you know, parties to one another, and be able to do that and to make those things broadly available. You know, most academic institutions will do that on a nonexclusive will do that on a non exclusive basis. And they want to do it quickly to basically get the tool out there. And I think it's just again, having a dialogue with the foundation about what what we're trying to kind of what we're trying to capture here. You know, data is a tricky one really depends on the project and what the data is gonna look like. And, you know, is it is Is there going to be you know, what form is that date again, a table you're going to potentially provide the funder with access to, obviously have to be very careful if there's any kind of like page send data in there, what exactly is the web we're providing and making sure we're complying with all the appropriate laws and regulations around that? Yeah, the other weird thing we see sometimes is the copyright gets lumped in there and, you know, a requirement of the institution owns or the copyright coming out of, out of the work that they fund, you know, we have to be very sensitive to that as well. Because as an academic institution, we don't and this is the same for many institutions, we don't necessarily own all the copyrightable work that comes out of that there's scholarly works that belong to the investigator. And so we have to think through that bucket very carefully and make sure you know, really is what we're agreeing to in terms of ownership and rights that we're providing. And revenue sharing in all makes sense.

Speaker 4  1:00:55  
is usually a big issue from from our side, as well. And one is that so much is lumped into what is, quote, an invention, under an agreement that we often try and take some of the things out like ideas are often put in there. And it just flat out data as is listed as IP. And neither one of those two is our IP, because they're really not protectable as IP, so we try and take those out, if we can, data, we generally allow our investigator to decide how much they're worried about keeping it private, in any way other than any patient things, or any privacy issues, of course. But take putting that aside, most of our investigators want their data to be out there, whether it's to support their publications, or because they're, they're on board with what's now becoming the trend, certainly into the NIH granting that data has to be put out there and shared. And so a lot of our folks are really there on that. And we're good with that. We I agree with with Ben about mice and research materials and things like that, that we do want to get those out there to other people, copyrightable issues. If if that's an interesting one for us, because we like like Penn, we don't own the works that are done like unpublished by our folks unless they're paid for. Under a grant. If they're if the grant is paying for it, then that's part of what the university would own. So that becomes a different issue. And it doesn't generally come up usually writing a book or paper is not part of the grant. So that stays outside of it. And it all works out good. When it comes to patents, this is where we usually have an issue. And the issue is usually that the definition makes it difficult for us the definition if it says that it includes things that are conceived and reduced to practice, that's lovely, because it's just what's done under the funding. But if we have the or the conceived or which is the standard NIH language, you can reach back into things that were conceived before this started. And maybe were reduced to practice with the money, and you can go forward as well. So that ties up the IP for a long period of time, and we have to track it in ways that that we say adds to the burden of tracking, it adds to the burden for review of contracts with other people to continue the funding to see how the Empowered impacts what the current agreement is. So that becomes difficult, and it's it's generally a fairly contentious area, if we're negotiating is to what what IP will be included under the funding agreement. So

Unknown Speaker  1:03:46  
that would even guys guys budget it, to drop it into, you know, that conception or reduction to practice. I mean, we we've definitely seen situations where it you know, it's, it's, it's inventions that essentially that stem from the research. And so you've really got that, what was for intents and purposes, we all know, the research builds on top of, of individual things that is really far reaching into the future when, you know, the there could be like, there could there could be, you know, work that is built upon the work that was funded by the Foundation, but, you know, as she comes to kind of, you know, conception of reductions project and many years after that day, and that's difficult for us, not least, just simply tracking now. I mean, the investigators know what funding they're deploying on a particular project now, you know, but are they really going to have in that in their minds in five years time when they come up with an invention that arguably stem from some work that was funded by a foundation five or 10 years ago? Probably not. Yeah,

Speaker 4  1:05:01  
that's a very difficult situation. And the, the, you know, not none of the investigators, at least know, that I'm aware of are experts in intellectual property law. So they don't keep this in mind. It's not what they're interested in. And they don't always tell us if they're disclosing something or getting a new foundation grant, or other grant what came from other things we do, we try and do a very good job of tracking that we have a form called the VIP former background intellectual property form that we asked to be filled out if we have the oral language into contracts. So that we, we make we want to nudge the the investigator to think about whether they're using any background, because like pan, we are very careful about not imposing things on inventors who are not partaking of the goods of a fount of a grant. So we don't want to commit intellectual property that someone else has invented without their Okay, so that because it's a very complicated situation, not necessarily legally, because the university may own the IP. But as a matter of policy and how we treat our inventors. We don't we don't impose on on one inventor for the benefit of another without their Okay, so it's very complicated, we write been very risky, very complicated, and really somewhat risky as to whether or not we'll catch everything we do the best we can.

Speaker 2  1:06:32  
Thank you for that. And along those same lines, this this is another another one of those burdens that the tech transfer office has to bear with the the status of these changing interactions. Do your offices have a person dedicated to this type of agreement? Are you kind of spreading the word around? How do you manage the increase in work that's involved with now negotiating IP with foundation and charities?

Unknown Speaker  1:07:03  
Yeah, well, so we don't, we do not have additional personnel to support, you know, the Office of grants and contracts in terms of supporting the negotiation and implementation and implementation of these agreements as it relates to kind of IP and commercialization, you know, pause on falls on my shoulders, my men, they're very capable group. So I'm very fortunate. And they do a really, they do a really good job on that. And I mean, and I think it's acknowledged at the institution. And we don't have those agreements, that's visible to leadership, but we're very involved in those. And that's great, that we don't have additional staff, but that we have in recent times. You know, we do have, we have, we have increased our capabilities, I would say on the compliance side of things in relation to boarding. Polly, really to make sure that we fulfill our obligations to the federal government, and a huge amount of federal funding and we take that stewardship of those funds really seriously. We want to make sure we comply with some of the foundation aspects are sort of falling on the shoulders of those individuals who, who are managing clients.

Speaker 4  1:08:27  
Yeah, we have a sort of hybrid system, the the actual foundation agreement is handled by our Department of contracts and grants, they, they are responsible for the negotiated negotiation of the agreement. They're responsible for tracking it and for doing all of the paperwork and other tracking of the agreement. We have it's, I would say, a somewhat formalized, but not written down formal agreement that any on non standard intellectual property terms, including things about sharing and patenting and licensing, come over to my group in the tech transfer office to review and to handle getting them done. Once that is done. It the agreement goes back to the Department of contracts and grants for completion and all of the paperwork involved. We get involved, again, when there is a disclosure from the investigator of any intellectual property that came out of the agreement, and they are part of our form online is that they identified the funding that was used for the development and that's where the licensing associate for that particular investigator is to get a copy of the contract and see if it affects anything. So that's really how we work it. I've actually been named sometimes as the person who has to disclose whether we have any exemptions under various of the foundation grants. And that's interesting. I mean, as like Ben Ancient it's, it's good when there is such an agreement. It's really I just go what? Because I don't, you know, obviously I haven't done any of the research, but it gives us a chance to get in contact with the investigator and, and confirm whether there is anything and let it be known whether there is or isn't. So, you know, I agree that there's, it's nice when there is some kind of recording, but I would prefer it wasn't me doing the recording. So I don't think I'm really the appropriate person to do it. But that's how we do it. We're kind of a formal, informal system in terms of IP. And, you know, frankly, I don't see every foundation agreement that comes through, it's up to the individual person in contracts and grants to decide that it's non standard and needs to go through our office. So what are their mistakes? Maybe we don't know. It's not a foolproof system.

Speaker 3  1:10:52  
You know, lots of I don't want to go backwards at all. But I thought it might be helpful if you agree to just give a 32nd view on your previous question from the nonprofit side, which was kind of the scope of IP. And I would say just as in, I share it only from a perspective that may be helpful for those listening to hear, which is, as a nonprofit, you know, it's very, you're, you're trying to serve two masters. One is you want to accomplish your cause. But you also want to work, you want to make sure that your relationship with your partners is as strong as possible. So there's kind of an overall principle that many adopts, including VRP as a starting point, which is if you are funding intellectual property, and that intellectual property leads to some type of financial game you should participate on. So the the kind of innate reaction of well, it's I'm sorry, it's hard to track. What would you like the nonprofit to do about it is something you're going to, you know, for those who are listening, get ready to hear, because it's like saying, I created a battery for a car. Turns out it was able to power every plane, but I shouldn't participate in the revenue from the plane because you couldn't track it like that. That doesn't intrude. I know, they're not saying that I'm being flipped. Because I know that's not the case. But I would just for those who are understanding to hear the other side, what what we are focused on is, it's often hard. And I've even seen people say we you can't track it, because they don't understand what goes on in a university. So I would, I would take the time, like Judy and Ben have done to explain how complicated this is. Because it can be sometimes not understood or taken in the same way as wait. But it should be easy, right? We found this your network goes. And so that's number one. Number two, one of the things that comes from that is, we have found actually a lot of discussions, the definition is definitely part of it. But a lot of the discussions become in and out of field as well, when it comes to IP. So if we have, for example, a breakthrough in research we find for EB and then that turns out to be relevant for the entire for a different market. But as much larger scarring, for example, which is huge affects everybody. What is the relevance? And what are the rights for the EB charities if they've funded the therapy that led to that, we will take the position, just like I did in the other example that refunded it. So therefore we have rights, different universities will take different positions, I will say there's always a middle ground to be worked out. We have yet to see where there isn't, but I only flag them again, not to be adversarial. But just so people are aware that these are going to be questions that will come up in these conversations for sure. And our we're thinking about ahead of time, because, you know, we could we a nonprofit university could fund something that turns out to be in three years has application to something that was never intended. And how that should be dealt with is something that I would highly recommend working out upfront, because it's possible not every it's just the concept of of that is something that you know, will will should come up and if not, you probably don't want it to stop there.

Speaker 4  1:14:06  
That's an interesting point. I've never I don't think I've ever seen an agreement where we limited the, like the sharing to the area that the foundation is specialized is the newest thing we're seeing. Have you ever seen that?

Unknown Speaker  1:14:24  
Not Now I happen? Yeah, we're seeing

Speaker 3  1:14:26  
we're seeing in and out of field in the last like, say six months. Well,

Unknown Speaker  1:14:31  
thank you. I'll think of that one next. Exactly.

Unknown Speaker  1:14:34  
Oops. Find out anyway. So

Unknown Speaker  1:14:37  
I'm sure I would.

Unknown Speaker  1:14:40  
But definitely I've seen this a lot that happens in a situation where you know, Foundation came in and wanted to advance the program and you know, essentially all the critical IP had already been filed. There was going to be no new inventions it was but it was advancing the technology down, down Commercial there was, it was to find, like proof of concept, you know, on ordinary position didn't didn't really seem very fair, right? Because it was, so there probably isn't going to be a new invention. But in the absence of funding for foundation, this projects never going to advance to that exactly the adding value. So having a discussion around how do we, how do we come up with a construct, you know, is recognizing everything that the university has done today, the investment that we made in the, in the APA, the money that had already been have been put in, but really recognizing that the foundation was providing instrumental funding that was going to move the technology down the down the commercial path and increase the probability that a commercial entity was going to come in and take a license. And we've dealt with that type of issue. You

Speaker 3  1:15:51  
said that perfectly. It's the combination of principle and practicality, which is the university could rightly say that the foundation can say, okay, then you find someone else's capital and nothing gets done, like. So this idea of figuring out what is something that that meets both goals? Is is very doable, as long as it's not the my way or the highway, which, you know, Judy had referenced others doing that, that just gets gets gets us nowhere gets any of us. Your work.

Speaker 2  1:16:20  
Thank you. I have a couple questions in the q&a box. This one is for duty, duty. Someone wants to know, does your IP policy require assignments here investigators, even if the IP is created via non federal funds?

Speaker 4  1:16:34  
We can't I guess the answer is it's only assignable. If it's not met, let me put it this way. The IP policy says we will offer assignment, we don't have to, but we will offer it and if they want it. If their department doesn't want it and they want it. We will assign to them if we can, which means for the NIH that we have to get consent, because we don't own it, we have to go back to the NIH and give it back and say can we do it? So that's a holdup. But if it's private, and there's no private funding or USC funding, and there is no prohibition on assigning we will do it. If there's a prohibition, we obviously can't do it. I don't know if that was the question if the person would put would clarify if I didn't answer, because I'm not sure I understood the question completely.

Unknown Speaker  1:17:19  
I think you got it.

Speaker 2  1:17:21  
Yeah. I have another question from the q&a box. The question is Alex, do you expect to equal revenue share when you jointly own IP with the university? Or does it vary?

Speaker 3  1:17:33  
Um, no, we expect 100%? Yes, we, of course, do I know this is recording that was a joke. I'm typically speaking a lot of our projects in which we were the sole funder, which happens in rare conditions, because in the backdrop of government funding, and other things like that, not being as robust as it once was, we will never be 100% of the economics because as I said earlier, that's very unfair to our partner, and gives the gives that partner the university no incentive. In theory, the way it works in broad strokes without getting too much in the weeds is our agreements are set up such that anything the university brings in outside of us counts to their share. So hypothetically, if government funds if the researcher were to bring in government funds, or any external funds, and you're to look at the percentage of revenue that goes to each party, we try to create an incentive for the university if we are most of it, that everything they bring in that's not off, accrues to their side and pushes us down. So the devils in the detail, if we were 5050, hypothetically, yeah, we'd probably end up 5050. But again, that's, you know, every scenario so we, as Judy knows, we try to be transparent and have almost 100% similar terms with each partner, because we want them to feel they're treated fairly, and it's transparent, but every university has different issues. So some way want patent reimbursement, some may want all these other things. But overall, we stick to a general pro rata idea with the idea that the university also will never go down below a certain amount of revenue share if we are 100% of the funding. And in return, EB RP will never go down below a certain amount of the sheriff if meaningful funds come in after the fact. And we were the original capital that helped de risk it.

Speaker 2  1:19:24  
Thank you, Alex. Another question for you from the q&a box. Alex, if the institution is not able to find a commercial partner and license technology for further development, this EB take the spec to market on its own. Um,

Speaker 3  1:19:36  
so I have to So again, I would stress everybody who is looking to this, this is a shockingly gray area. So remember, most of the time the university owns the IP or we have rights to the IP, that can be licensing rights or all sorts of things. We are working in tandem with the university. So it's not that the university is trying to do it, but most of the way it works like for example projects going on right now. In this case, the third party came to the university, the University said, What do you think of these guys, we will help vet them. And we then I, we have more resources. And this is all we're focused on, put together a whole diligence pack that we gave to the university got the university confident, and got us confident. So it's kind of a, it's really a partnership, not just in like the, you know, hey, we'd like to say we're partners, it's the and we've often brought partners to the university and said, What do you think of that are different universities? So we're looking for that together? If we feel that either we nor they can find a commercial party, then that probably answers as to whether it's ready to be commercialized or not. Um, you know, I think that is that is less tricky than the scenario where what happens if a commercial party that has been involved loses interest, that's that's actually has proven to be a little more tricky, which we hit on earlier. With the university from the ERP perspective, overall, we have found our university partners look at us as an ally, in trying to canvass the world to get people to commercialize EB therapies, because that's all we exist to do. Whereas the university has such a broad portfolio.

Speaker 2  1:21:10  
Thank you. One more question for q&a box and up with this whole panel? Is there generally speaking opportunity for greater flexibility in negotiating for sub market IP, for example, something like male contraception that doesn't have a robust pathway to licensing?

Speaker 4  1:21:30  
I've never No, not University to look at things based on that criteria of the pathway to marketing. So maybe we should shouldn't be thinking about it. But we have not to my knowledge. Yeah, that's probably true for us as well, I think. Yeah, I don't,

Speaker 3  1:21:53  
you know, when it falls out of my area of expertise, in all fairness, you know, we look for opportunities as the foundation, that may be sublicensing. But that's dealing with a commercial entity, for example, there may be, and this has been published some of the work at USC that is looking at existing compounds that lead to two positive benefits within EB community. But, you know, beyond that, I actually wish I had a better answer. Yeah,

Unknown Speaker  1:22:23  
I think it depends a little on what in negotiating what kind of terms? I mean, we certainly see, you know, foundations providing funding for, you know, for the high risk projects as well, where the path to commercialization is unclear, or the market opportunity is, you know, in some cases, like, you know, OSHA often. I don't think that would change, some sort of the overriding sort of principles by which we would enter that enter those discussions, which again, is one of, you know, how is that? How is success?

Speaker 3  1:23:02  
Can I ask Ben a question? Can we go panelist to panelists questions? So Ben, I, one of the things we came across interesting recently, and I wonder, given your seat, and you've seen this from the university perspective, and we find it amazing is we find universities putting together incubators to help accelerate the creation of companies around their IP. So we can help bring a party and the university can then provide all these resources, almost like consulting resources to help get the business up and running. Maybe some capital, but it's really de minimis capital. But it's a really great skill set, because then we account for that in some value, but it kind of is a real partnership, if you could bring the funding and we could help figure out a management team. So you're actually creating businesses around IP together.

Unknown Speaker  1:23:46  
Yeah, I mean, we yeah, we were really active in that, in that space. In terms of startup company, you know, formation, I'm sure. Judy has a group at USC, who's also really active in that area. I think, that is often the route that we'll go with earliest early stage technologies, you know, where it needs to be do risk before an established company is willing willing to come in. And we've been pretty successful in that space, particularly, particularly in the cell and gene therapy arena, where, you know, Penn has some really, you know, amazing faculty and some pretty pretty amazing sort of recent research facilities that are sort of accessible as well. So that that does happen and we have seen it with we have seen that with foundations getting the

Speaker 3  1:24:35  
line to foundations is what I mean words taking like this type of agreement and merging it together where their capitals help him particularly particularly

Unknown Speaker  1:24:43  
when the foundation has like Well, we've seen it has been where the foundation has a discreet like venture arm, whether they funded the basic research or the foundation has been aware of, you know, we see an opportunity we're in discussions with the foundation, there's an opportunity for stuff company formation. The foundation's venture arm has calculated deploy mean, that's fantastic. When that happens. I mean, it's really great. So that it's not the norm. But I think I think it's going to become more commonplace. And where we've obviously really, you know, we're really receptive to that. I mean, I think that's a, that's a real, you know, a win take takes a while right to have an impact on lives. But that will be a success from our standpoint, to get the technology out into a vehicle. You know, it's a really nice story, when the when the foundation has been involved in funding, the basic research that led to the to the to the technology that is spun out, it's great to hear,

Speaker 2  1:25:46  
thank you. And that those are really great points. And that's a great place to close, we're getting close on time. So I'm going to give everyone an opportunity to give a final piece of advice to the audience in 30 seconds or less, please, I'll throw it to duty if you want to start. That's words

Speaker 4  1:26:03  
of goodness, I really try not to be in the business of giving advice. But that's great advice to give advice to give. I think that's trying to stay open minded and work within and move the the things that hold back universities from being able to fully work with foundations and other folks who are truly dedicated and interested in getting the research done and the results out to the public, which is, you know, having an impact on the public. That's the biggest thing that the universities want. And it's their mandate. And I think that we sometimes get a little closed minded about the fact that we have rules, we have policies, and we don't want to bend. And I think it's incumbent upon all of us to bend to get it done. And especially in these times where things are so different. And money is tight from everywhere, and the world is kind of changing. So I think we all have to be open to change. That's my advice.

Speaker 2  1:27:05  
Thank you, Judy. Any last words from Alex,

Speaker 3  1:27:09  
I would just say, you know, I would ask everyone on the the the university side tech transfer on the foundation side to do three things, one, be willing to challenge the status quo. Inertia is an unbelievable driving force you for the tech transfer office to understand that the unit that groups like mine, and I can't speak for every group, there are good actors and bad actors and every every group in the world, care more about trying to change the outcome of what they're dealing with than anything in the world. And this is a tool to doing that. And then to the groups like mine understand that the people on the other side of the table are your allies, they have their own systems and their own own own goals and things they have to reach. And it's about making their lives easier to do their job, which is going to help you accomplish your goals.

Speaker 2  1:28:07  
Thank you, Alex. And, Ben, do you have any last words of advice for our audience?

Unknown Speaker  1:28:11  
Yeah, I think you're irrespective as to whether foundation is thinking about commercialization in a particularly sophisticated way. They will undoubtedly have connections that you don't we all need help in terms of finding the appropriate, you know, home for a technology, you know, use of use the foundation as a as a resource. You know, ask them who they know like it's, it can open doors that would otherwise not, not, not not be there.

Speaker 2  1:28:46  
Thank you, everyone. Thank you again, for joining our panel. Thank you autumn for allowing us to port this to a webinar format after the events of this very strange year. We lost Louise and I want to thank her for her participation. And thank you, Judy, Ben and Alex for your time. And I'm going to throw it back over to Holly to him in with any closing statements or housekeeping items. Thank you all.

Speaker 1  1:29:08  
Thank you. On behalf of autumn I want to thank the panel for this informative discussion. We really appreciate appreciate you sharing your time today. And I also want to thank all of you who attended today, we hope you found some really good information today. Just a reminder, a recording of this webinar will be available for viewing within just a few days. Access to the recording is included in your registration. Visit the audio autumn website to view the recording or look over past webinars that you might have missed. Please remember to complete the webinar evaluation that'll pop up when you close out of this webinar. This will really help us serve your needs in the future. This concludes our program for today. Thanks for joining us and have a great afternoon.

Unknown Speaker  1:29:53  
Thanks. Hi. Thank you

Transcribed by https://otter.ai