Speaker 1  0:06  
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Speaker 1  1:01  
All right, good afternoon and welcome to today's webinar, faculty startups. What were they thinking presented by Autumn? My name is Sammy Spiegel, autumns 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 our presenters, we encourage you to use the q&a feature on your zoom toolbar, or use the raised hand function to ask your question out loud. If you have a technical question or comment, please feel free to use the chat. Should you need closed captioning during today's session, the Zoom closed captioning feature is turned on and available on your toolbar. Before we begin, I would like to take a moment to acknowledge and thank autumns online professional development sponsors, Marshall Gerstein, IP and the Michelson Institute for intellectual property. We appreciate your ongoing support. I now have the pleasure of introducing you to today's presenters. Marie Kardashian serves as the executive director and assistant vice president of the University of Iowa Research Foundation, the organization that protects and commercializes technology emanating from innovations the University of Iowa researchers. Murray is a certified licensing professional, as well as a registered patent agent in the US Patent and Trademark Office. She has over two decades of experience in University Technology Commercialization, and prior to joining you IRF Murray ran technology commercialization programs for the Indiana University System and the University of Virginia. She's an active autumn volunteer and is currently serving as chair of autumns essentials course committee. Arun Pradhan is a technology transfer tech, professional teacher, mentor and entrepreneur, who has been engaged in technology transfer for over 30 years, was at the forefront of creating the biotech burst in Salt Lake City helped devise develop the first biotech roadmap for Colorado and helped create the first biotech incubator and the first Translational Research Development Center in Portland, Oregon. He served on the autumn board and was the autumn president in 2009, as well as the autumn Foundation President and Board Chair in 2011. In 2013, he was the interim CEO of a research tool startup and currently, he is the president of APO, innovation tech transfer, the interim CEO practical biotechnology and oncology, therapeutic startup, and Vice President for Business Development for TMT a company focused on developing treatments for an opioid overdose. He continues to work with many clients across the globe on licensing and technology transfer related issues, as well as mentoring entrepreneurs and startup. Welcome Marie and Arun. I will now turn it over to you, Marie to introduce today's topic and get us started.

Speaker 2  3:42  
Oh, thank you, Sammy. And I do want to welcome everyone today. A ruin and I are particularly excited to be talking with you today. Because we do both believe strongly that success in tech transfer, take so much more than strong intellectual property protection and clearly written licensing language. And this is really doubly true for faculty startups. So as a ruin and I talk today, we're going to be delving into some issues that frankly, people don't talk about much, but that you run into and learn with experience, and sometimes a few scars along the way with that experience. And so one of the things I'm hoping is that if you are new to tech transfer, or even if you know about tech transfer, but you've done it in different settings, like you're an entrepreneur, but you've never worked with faculty or universities before that some of the issues that Arun and I will talk about today will help you on understand some of the behavior of your faculty, entrepreneurs, your company entrepreneurs, and perhaps even yourself as you start delving into faculty startups. And with that, let me transition to our opening scenario by turning it over to Dr. Rouen, who is one of our fictitional University star researchers. Welcome, Dr. O'Brien.

Unknown Speaker  5:32  
Hi, Marie, thank you so much. So, I know we've been talking for quite some time. And, you know, I really think I want to start a company to commercialize my research. So that is a comment slash statement that you are going to encounter as you go through your tech transfer career on a frequent basis. And a lot of times, there are several motivations behind that statement. And, you know, as Marie said, today, what Maria and I want hope to do is to kind of talk a little bit about what these motivations are, and some of the thought processes that go behind them, and some of the things that sort of remain unsaid. And so with that in mind, it when a faculty member comes to you with that kind of a statement, you know, what are they really thinking. So, in addition to, you know, looking at potential sources of research funding, this, oftentimes, because of the early stage of technologies that we all deal with, oftentimes the startup as the only way to really move that technology forward. And so it can be based on their own analysis, or their own analysis of the situation, or it could be, you know, input from colleagues in the industry. And again, sometimes there are sort of personal motivations, which is, hey, you know, I've been working in this research field long enough, I want to try something new. And this is the way to do it. This is also a way for the faculty to enhance the student experience. But there are certain sorts of reservations that come along with us. One of them is, do I really want to run a business? Do I have the time? Do I know how to run a business? And I can tell you right now that most, the answer to those questions for most faculty is no, they don't know how to run a business. They think that running a business is going to be like running their lab, it is not. And most faculty work, on average, you know, 50 hours a week, when you're doing a startup, you're going to need another 50 hours a week. So the first question I always kind of asked the faculty members is, do you have the time to do this? And the other really important misconception that needs to be addressed very early in this conversation, is when you're looking for research grants for your business, they're usually going to be in the form of SBIR and STTR grants or you're going to get investment capital. That is not really research funding. And so the objectives of developing the technology in the form of a for profit corporation are vastly different than you know there are ones are the are 20 ones that they get. The other important thing to keep in mind is that there be these individuals that come to you want to say this startup who say they want to start a company, our faculty for a reason. If they liked doing the research, they liked the flexibility that it gives them and they are not going to leave the university to start a company. So I've been doing technology transfer for about a little over 30 years. And in my career, I've know two faculty members who left the university and one postdoc who left the university to run a company. One was and founder of scientific founder of Marianne genetics, Mark Skolnick and the other was of the a faculty member who left because he had to leave in order to devote the time and the third is postdoc. This was running another company right now.

Speaker 2  10:37  
And it ruined that thanks, I could interject there. Even faculty who functionally leave the university to run their company, sometimes I think can't even admit it to themselves. They try and work out an adjunct appointment, or oh, I'm going to work 10% At the university, which creates interesting implications for ownership of intellectual property. But yeah, I agree with you room, faculty or faculty and most want to stay right where they are.

Unknown Speaker  11:10  
Totally. And so, you know, you really kind of have to explore what the motivations are behind that. But starting that company, and and working with in your role as sort of technology transfer professionals, sort of kind of goes to the heart of that when you're when you're dealing with with that startup. So in oftentimes, the reaction is, well,

Speaker 2  11:41  
the reaction from licensing associate, Murray, definitely these words, but the tone of voice is going to vary. If I know Dr. Arun, and he has a lot of experience with startup companies or comes in with a business partner, it's going to be oh, how interesting if I know Dr. Rouen and that he has 301 grants and 30 people in his lab. And you know, there's not a strong entrepreneurial culture in our town, it's going to be, oh, how interesting. And with that, some of the thoughts that are going through my head, as I'm thinking about working with Dr. Rouen. To be honest with this group, I'm going to start with the cons, just because that's my natural inclination, I'm a half empty glass half empty kind of person. Others of you may start with the pros, and then go with the cons. With a researcher led startup, as as a room, the tech transfer person talked about often the faculty are inexperienced, and I am going to be accepting that I will be providing a lot of education to Dr. Arun as an entrepreneur. And that's okay. But I do need to go into this with my eyes open, that this isn't going to be a patented, negotiate deal terms, get the contract sign and send it off to the company to develop, it will be a long term hand holding process. You know, even if Dr. Arun comes in with an experienced entrepreneur, and even if that entrepreneur is used to working with University, so we skip over that whole education part. One of my concerns is that Dr. Rouen and his business partner are going to need time to raise money for the company. And that time is going to erode the value of the intellectual property down the road. If it's high tech, if it's software, that stuff doesn't age well. And so while Dr. Arun is raising money and getting the company going, you know, market opportunities may be passing us all by if it's patented, say it's a new therapeutic. And we have to get FDA approval for sales. Well, that's a long process. And the time for raising money is is really delaying that. And I you know, many of us, most of us, all of us, in this profession, have seen our technologies finally get FDA approval with what a couple of months left of patent life so wonderful that our technology made it to market and is helping humanity. But we're not going to see much of a financial return from those royalties. You know, and then sources of funding which you know, we'll we'll open up a discussion with Dr. Room long term. You know, that's what they're thinking about now short term for me in the tech transfer office. Is Dr. Room going to be able to pay for patenting costs? Is Dr. Arun even going to be able to pay for a lawyer to help them incorporate the company? So short term sources of funding long term sources of funding? And who is he looking for for that money? Is he expecting it to come out of the university? You know, or does he have a plan for that? On the pro side, so where my inflection goes up that this is exciting opportunity. These first two bullet points kind of align. As any of us who've done any marketing of university technologies knows and Dr. Arun was thinking about this as well, this technology may be too early to license to established companies. It may be a wonderful technology with lots of potential, but the only way it's going to move forward is through a startup company. And Dr. Arun is our best hope of having a successful startup company. The other very important thing to realize if you're thinking about, Oh, it could go to a startup or maybe there is an established company for this technology is that the startup is so committed to developing this technology in the way a larger company is not for the startup. This is their platform, it's Dr. Ruins baby both as a faculty member as an as a company founder, this company is going to do whatever it takes to move the technology forward. Whereas in a large company, you know, the development work may be going forward, the data may look good, but the company champion leaves for another job, or the large company just decides for whatever reason that may seem like a women to us on the outside, that they're no longer interested in anything, say oncology based, and the technology gets shelved or returned to us with patent life gone. Even though it looked very promising to us, that is much less likely to happen with a startup company. The next two bullet points are internal to our University. Dr. Arun taking this plunge, as an entrepreneur may inspire his colleagues to think about innovation and disclosing to us whether they're inspired because oh, if Dr. Arun could do it, I can do it too. Or, you know, honestly, sometimes out of jealousy. Well, if Dr. Arun is going to have a company, I want one too. I've seen both. And also, I want to make sure that I keep our researchers happy, because if they're not happy, if they're afraid that I'm going to take their technology baby and licensed them, license it out from under them, they're not going to disclose to me. So personally, in our office here, we're very open to faculty who wants to do startups, even if there are other options available? Different universities have different philosophies on this, some have a much more rigorous screening process. Is the technology appropriate? Does Dr. Arun Has he gone through the faculty entrepreneur training to move forward? Whereas others are Okay doctor and you want to do a startup, we'll make it happen. And then down the road, we'll adjust if we need to. Now, the final pro point, this is, you know, I think it's a dirty little secret, but frankly not that secret. For me, in a tech transfer office, I am constantly being asked, either directly through metrics that I report or incentives if your office has a bonus structure, or just in terms of people who are calling and asking questions, to show how tech transfer is enhancing economic development locally and in the region. So people want to know how many startups were doing and are rebuilding that entrepreneurial ecosystem. So frankly, Dr. Arun walking into my office June almost at the end of my fiscal year, it's like, Oh, thank goodness, I'm gonna make my numbers this year. Perhaps not the best reason to move forward with the faculty startup. But I mean, In all honesty, we work towards our metrics and startups often are one of the metrics that you may be working towards. So taking a step back, Dr. Room, what are you thinking about in terms of moving your technology forward from a university basic science project into something that can be developed into a commercial product?

Unknown Speaker  20:26  
Marine before I answer that from with my Dr. Arun persona, I just want to stress something with respect to metrics. In it is really easy to manufacture metrics. And, and those of us who have been in this field for a long time have come across universities that have created startup companies that have existed on paper, and also encountered promises of metrics made by university administrations to local economic development authorities. In it is a true challenge to navigate those issues as licensing associated as a licensing manager, and as a technology transfer director, because you know, that in order to do true justice to the technology, and your faculty, you want to make a startup company that is sustainable. And so just keep in mind that there are lots of problems that you political problems that you're going to possibly encounter, in your career as you move forward with startups. The other point that I want to make with respect to startups, as they probably represent anywhere between, you know, four to 6%, of the total number of deals that you do. But they will take 60 to 80% of the time that you devote to them. So. So, Marie, you know, as that as I was thinking about, you know, advancing this technology, I really think that I'm going to be applying for an SBIR or STTR grant to move things forward. And, you know, I've written a lot of proposals, as you know, I've got a number of aural ones and other cooperative grants. So I don't think grant funding is really going to be a problem. Plus, I really think that that's going to sort of support the overall the overall sort of goals of the technology and allow us to enhance the reputation of the university. In, you know, we're going to have sub awards that come to the university through this process, I'm going to be engaging my students, and I really know how to write these and run these grants, I don't think it's going to be a real problem. That's the mindset you're going to encounter. And that's, that's good. But one of the key things that you have to realize is that SBIR and STTR even though they're called grants are not really research grants. They're development grants, and they're more like a contract. And they have to you have to produce to the milestones. And so one of the issues that sort of comes up and a lot of universities now have quote, unquote, entrepreneurship training programs, either through affiliated organizations or through the College of Business, or there's programs like the Federal and State Technology Transfer initiatives that help But one of the things that's often lacking, and they provide an excellent high level of training in terms of, you know, the ability to take a look at the market, take a look at the customers. But the nitty gritty details of running in writing, right or running and in those grants, which the office of sponsored programs does, is that training and services certainly provided to the PIs. And so there's a lot of things that happen with account management, setting up your company properly, billing, invoicing, subcontract management, like sub award management, that that really need to be taken into account via PII. And I can tell you 99% of the time, they don't take those things into account, because they're just not used to that. And so those are some of the things that it's important to sort of bring up and make sure that they have the access to the resources, or the ability to access expertise in the community that enables that the bookkeeping is a really good example. You know, are there bookkeepers available in the community who are familiar with Grant accounting? So just to give you an example, I'm in Portland, Oregon. And

Unknown Speaker  26:46  
one of the companies that I work where we have two SBIR grants, our bookkeeper is on the east coast, because we can't find any bookkeeping. So again, you know, those are things that are important to take into consideration. And you really have to not know the details of that. But you have to be able to ask those questions to make sure that, that they're going to be able to succeed in what they do.

Speaker 2  27:23  
And if he'll other things that, you know, we do need to Oh, you could go back one. Yeah. There we go. That that I should help Dr. room think through is as as rune talked about, you know, what sort of resources is this company going to need. But from my standpoint, I need to talk with Dr. Arun realistically. Not only setting expectations for what's available, but also getting down into the nitty gritty and beyond the beautiful pictures that are on our website. I need to get out of out of university promotion mode about how wonderful we are. And be frank with Dr. Rouen about what we have and what we can and can't do for him. Everything from lab space, is he going to be able to find lab space close on campus? Do we subsidize it? Is he going to have to pay for it? Are there sources of funding for the company? Does that can that be spent? How can he use it to pay for company supplies and patent costs? Or is it in support of research at the university that might benefit the company? When we offer business advice through the business school? Is it going to be with undergraduate business students who are going to disappear in the summer? So he's left hanging? Or is there a very solid robust entrepreneurship program with business mentors who might come on board and then become potential CEOs for his company? So when I'm talking with Dr. Arun, about what he should be thinking about at this stage, I need to make sure that I am giving him a very positive but a very realistic look at what the university can provide. I'm also in that same tone, trying it to encourage him but caution him about not falling into compliance traps frankly, we are very excited about faculty startups. And we have rules and policies in place to make sure that faculty can be entrepreneur as well as continue their day jobs. And so this is walking the fine line between helping Dr. Room follow the rules without sounding too much like a bureaucrat and discouraging him. And sometimes it can be tricky. One of the big things I would do talking with Dr. Arun is explaining the difference between conflicts of interest and conflicts of commitment. And, and to me, it always surprises me that even those of us who've been in universities for years in the tech transfer office and other administrative offices, faculty, that we sometimes lose sight of what we're getting at both of these, the conflicts of interest policies are typically around conflicts of interest in research. That is, Dr. Arun has to be careful that no one thinks he's fudging his research data because it would benefit the company. So basically, these are these are guidelines in place so that no one thinks Dr. Arun is aligned. And Dr. Arun should feel comfortable, and we should feel comfortable that there's a process in place to make sure that the university's good name and his good name at the University and his company remain that way. conflict of commitment doesn't have to do with lying about your research results, it's kind of more of like it's, you know, very broad strokes, it's, it's stealing. We want to make sure that Dr. Rouen is not stealing from the university timewise that he's doing his day job, that his his students are working as students and not working for the company if they shouldn't be, or even just resources, lab resources space, making sure that a pipette doesn't cross the hall from the NIH funded research under which that pipette was bought to the company space. And that may sound trivial, but in my career, this is something I've had to deal with. And universities will investigate and, and some universities are so extremely risk reverse that they will say, well, nothing really bad happened. But it could have happened. So we're gonna return Dr. Ruins NIH grant funding. So making sure that Dr. Arun understands that these policies at the University are for his benefit, as well as ours, and that we will help him through that. Also pointing out to Dr. Arun, that it's very important that we all of us protect his students and his postdocs. And by that, I mean making sure that students and postdocs don't feel pressured, knowing Dr. Ruins commercial interests in terms of selecting projects, they're free to publish, that the postdocs when they leave his lab and start their own, say, academic careers, that they are able to take a research interesting, continue with it at their new institution, that the graduate students who may be enamored of the company side and really be pushing to work on the company side, don't lose fat sight of the fact that well, they're gonna have to write a dissertation and get a degree. And so don't get too distracted. But I have full faith that Dr. Arun and I will have very productive educational discussions, and that we will be able to thread all of these needles effectively. So Dr. Arun, what's the next step for us?

Unknown Speaker  34:00  
You know, I think we really need to talk a little bit about negotiating that license agreement.

Speaker 2  34:09  
All right. Delighted to do that. Now, when I say delighted to do that, I'm thinking oh, okay, here's here's the start of things. And are we totally wasting our time here? Dr. Rune in this case, doesn't have a business advisor his his plans for the technology developing it are solid, but I haven't seen that he has a good business model for how he's going to monetize this technology.

Unknown Speaker  34:46  
Instead of a license agreement, can't the university just assign the intellectual property to me? Sorry, you throw a wrench in this but you

Speaker 2  34:53  
own it. Yeah, well, no. For many reasons, Um, it may be your funding source Dr. Room, that this was funded by the federal government or a foundation. But frankly, this is a university asset. And we would have to take a look, some universities don't let us assign, some do let us assign, but only under specific circumstances. So I think it will be in all of our best interests if the technology remains at the university. And I know you don't feel this way now. But I have seen cases where our faculty have started companies in the past and things have gone well for a couple of years. And then all of a sudden, when new money comes in, the focus of the company changes, and this faculty member lost a lot of the equity that they originally held. And the only financial compensation that that faculty member got at the end of the day was through our license agreement. And our strong patents which were strong because they were still owned by the university. Good, no pushback. In real life, you will get more pushback.

Unknown Speaker  36:27  
A lot more pushback.

Speaker 2  36:30  
I do recognize that in the initial stages. A lot of what Dr. Rouen and I will be talking about is going to change over time. And we'll be talking about that again in a few slides. This is why on the last two bullet points, I would really love to have Dr. Arun do an option agreement with our office or if our office's Express license works well for Dr. runes, technology that helps us move forward and frankly, not spend a lot of time negotiating terms that aren't going to be appropriate once Dr. Runes company finally finds its focus. But some of the things if we're going forward and note negotiating a full license, you know, Dr. runes, asking for deal terms that we don't give anyone. He wants us to pay for all of his patenting costs, if we're not going to assign the patent to him, he thinks that's what we should be doing. We don't do that for anyone. But oh, he's a big shot. What are the internal political implications for me and my office, and frankly, for Dr. Runes department if he gets angry and upset because we are not caving on those field terms? At this point, I'm hoping that I've done a lot of background work educating my boss, and that my boss has our offices back. And if not, I have by experience I've learned to know when I need to cave and when I can stand firm. One point where I really like to stand firm is on future rights. Dr. Arun wants everything he has ever invented, or ever will invent going to his company. All I remember once and this is a true story, going to a cocktail party and talking with a faculty member who was on his third startup company. And clearly he had been imbibing. So as Tom was a little bit more honest than usual, because he talked about how his relationship with this startup companies lasted about three years. And then they all hated each other. But he was in a circumstance where years before he had insisted on every technology that he ever invented, going to one of these companies, and it was really hamstringing him. It's a story I bring out all of the time, because Dr. Arun has stars in his eyes, and he's 100%, owner of the company at this point, and he's not thinking about the day when he's 5% owner, and all of his technology is going to this company. The diligence milestones, um, I've also had instances where after that, it actually was about three years with another faculty member coming to me saying he was not satisfied with what his company CEO was doing. He didn't think the company was doing a good job with the technology and Marie, can you terminate that license please? Fortunately, there was nothing I could do at that point to determinate the license because during negotiations, this particular faculty member had thrown a fit over Are any diligence milestones that were near term or had teeth in them? Something to keep in mind that when you're negotiating with a faculty member, some of them have a lot of difficulty keeping track of whether they are representing themselves as a faculty member as a company, and that they can be harmed if the representation goes too far one way or another. The last point I want to make to Dr. Arun, when we're negotiating is to remind him that successful startups don't remain startups all of the hard work he's doing in this company, hopefully means that Big Pharma is going to buy his company. And hopefully that equity stake will be enough that Dr. Arun can retire if he wants, or continue working in the lab for as long as he wants. But his co inventors, if they're not part of the company, are going to be asking why when his MIT this amazing drug first gets FDA approval, and the university gets a milestone payment, why that milestone payment for FDA approval is only $50,000, when there should be a few more zeros behind that. So remembering not only for Dr. Rouen and any CO inventors not involved in the company, and for the university, that this startup license should be very startup friendly in the beginning. But as the technology gets developed, it's more and more likely that this technology will be in the hands of a larger company. And the financial and other terms should reflect that. So hopefully, we're moving forward positively with the negotiations. And let's see where we go next, Dr. Arun.

Unknown Speaker  42:05  
We're going to talk a little bit about company growth. And before we do that, one of the most important things to consider at this stage of your interactions with your faculty member are that they don't know how to negotiate. Okay. And it is really incumbent on you to walk them through the license agreement, and, and the terms and the conditions of the license that you're going to be doing. And, you know, really going the option route, and having the option to trigger certain milestones. So that they understand what they're getting into, and what the language in the license agreement really means. They will ignore it if they don't like it. So it's really incumbent on you to sort of teach them and walk them through that, that process. And understand what the growth strategy of the company is. So to Marie's point, you're negotiating this, it's really important to understand how they're going to grow this company, you know, what is their strategy? And, and, because they don't necessarily know how to negotiate, they're going to get entrenched, they're gonna dig in their heels on often things that are unreasonable, like due diligence milestones, low royalty rates, future REITs, you know, all the things that Marie mentioned, and you kind of have to walk them through that process. Then the other part of this, it's kind of associated with this is really growth strategy. How are they going to grow the company? SBIR and STTR is only get them so far. And you can do multiple SBIR and STTR hours. And, you know, if you're talking therapeutic technology, then you know, something like that is definitely warranted. There are programs in place with the federal government. So you go from phase one to phase two to phase two B, which is roughly two and a half to $3 million over a five year period. That's enough to sort of get you to a point where you're generating good data, but at some point, they're going to go and meet to go and look for investors. And you're going to have to sort of educate them with respect to, hey, you know, I'm Dr. Arun, this is my company, I own 100% of it, I make the decisions, I don't want to give up control. So many times, I've seen that attitude, and you kind of have to point out to them, Well, you know, 100%, of something that's valued at 00 is simple math, right. And so in order to have that company grow, you're going to have to give up some of that control, to bring on the experts that you need to assemble the team, that you're going to need to have this company grow. And so really have to focus on on that education component of it. So just as a sort of, as an aside, I have gone with a couple of my projects, I've gone through the NSF I Corps program. And one of the things that the instructors ask you is why are you doing this? Why are you in this in this company, and you have faculty entrepreneurs who are who basically say, hey, unless to really advanced the technology, and and make sure it reaches market? Well, the bottom line is, you know, according to the ICORE instructors, if you're not starting a company to make money, you're in it for the wrong reason. And that's something that we really don't as licensing professionals, you know, it's not really a question that we address early on. But it is really something that we need to address and sort of focus on with respect to, you know, making sure that that the faculty entrepreneur has the time and the strategy to find investors and other partners, and really learn lot of faculty entrepreneurs that I have worked with, are really excited about their technology, it's cutting edge, you know, it's, it's, they think it's going to really enhance the reputation and enhance the reputation of the university, you know, they have this irrational reality that that product is going to be on the market in two to three years, four years, you know, that doesn't necessarily jive with the, the trajectory that the company is going to need to take in order to get to get to get to market. And there's the other point that, you know, this graph kind of illustrates is that there's not one sort of valley of death, there are multiple valleys of death that you encounter, the value of that we talked about is often the gap between federal research funding and development funding. But But even in the development funding, there are multiple valleys of depth that you encounter, the troughs get smaller as you progress, but you know, they're always there. And so, you are there places, Ray services at a university in the community that can help sort of move this project forward. In you, can you are there alumni networks, Angel networks, that BTO is part of that can sort of help help with us. So all of that sort of has to be taken into account and understood in terms of how this company is going to grow with the milestones are going to be how you can actually incorporate those into the license agreement in the form of due diligence milestones. So it's, it's a very sort of holistic approach that you have to take

Speaker 2  49:51  
so, you know, some some thoughts that Dr. Rouen has to keep in mind as he's moving into this stage. You You know, I have to warn them that I have run across in my career, some investors just don't like investing in companies that are associated with universities. Personally, I think that's foolish, but it's human nature. If you had a bad experience once with someone, you you impugn that to every other university ever and forever. So he may run into that, and I don't know if he and I will be able to, we'll do our best, but we may not be able to overcome that with some individual inventors, investors, excuse me. You know, I've been thinking in my head all the time, how you know, this company is going to evolve, you know, we may have to renegotiate the license, if the deal terms might not match anymore, but Dr. Arun also needs to recognize that the company may move away from his original vision. And he's gonna have to think about his his values. You know, a rune himself was telling us about, you know, companies need to make money is that really what Dr. Arun wants to do? Now, a few things I need to worry about. If the company is not performing, I will terminate this license because that's what we need to do. Our will lie. Again, this depends a lot upon how your office works with faculty startups, the political situations, your budget, you really should be striving to treat Dr. Runes company as a company that needs to fulfill its obligations, or comes back and renegotiate those obligations. But you do need to establish that with Dr. Arun early. This is your company, we will treat you as a company. Even if I have some flexibility with termination and renegotiating the license, I will always protect compliance with funding agencies. So that is something that we are not going to have Dr. Rune walking that pipette across the hall to his company, we are going to make sure we're reporting what we need to, to, through i Edison or to the foundation funders. I also need to be careful that the university and I in particular don't get dragged into issues that really are not our issues. I will occasionally true story, get calls from department chairs who are concerned that their faculty are spending too much time working on their companies and not enough time writing grants for the university. This falls into conflict of commitment, someone's not doing their day job. But you know, I can advise and warn Dr. Room not to let this happen. But frankly, it's not my job as the tech transfer office to manage the department. Here's faculty, that department chair needs to make sure the faculty member is doing the faculty members job. You also have to be careful about getting pulled into company disputes. Three to faculty and a postdoc start a company and are in the board of directors and then to have them vote to boot the other third one off of the board of directors. Is that really my job to adjudicate? No. We want to educate and provide guidance. So that doesn't happen. But you really need to be careful about getting yourself in the university pulled into those those issues. And then finally, how do I balance the university's needs with my tech offices needs? Budget? You know if if Dr. Arun is running up patenting costs, and I have five other startups that are doing the same? Does my budget cover that does the university provide us with enough to cover that? Or does you know, my boss and the university provide us with the emotional support to say no, that's not happening. And with that, Dr. Arun, we only have about five minutes left. So I'd suggest we go quickly through the last few slides and then see if there are any questions.

Unknown Speaker  54:24  
Sounds good.

Speaker 2  54:28  
Um, so this one, I'll take his tech transfer just a few points here to make sure that you're staying in touch with your your faculty startups. They are going to be busy Dr. Rooms running a lab and running a company. So we want to make it as easy as possible for him to be in compliance with the license agreement. And here are just a few tips sit down early sit down often to help him stay in compliance

Unknown Speaker  55:01  
The real issues that you need to understand is really what is what is motivating your your faculty. And once you understand what that motivation as you can really sit down with them and make sure that you know they have an appropriate pathway to success, you know, could be money could be prestige could be just the fact that we want to try something different. But as CTOs, you can do a lot of things to help enable that. So just keep that in mind. You're not part of the company, you may have an equity stake, you're not really you're, you're essentially a mentor slash partner at that point.

Speaker 2  56:00  
And then finally, really for for all part, all people in the company, the entrepreneurs, Dr. Arun wearing his company hat. Realizing that while we're partnering with the company, we're not necessarily a partner like the other equity investors, even if we have an equity stake we have we have other things in mind as a university than just making money off of an investment. A few things that you can add benefits for us recognizing that public relations successes, especially around startups are very valuable to me. So mention our universities name and all of your press releases. And then this is something that Dr. Rouen should be well aware of, but his entrepreneurial partners may not recognize University time, you may not be able to get Dr. rooms full attention when grants are due, or when he's grading student papers. Also recognize that licensing associate, Murray will get frustrated, if she doesn't hear from the company for months and months. And then you get back to me and need something done tomorrow. I you know, I know you've been working on this. But if you haven't been keeping me in the loop that something's coming, it may come as a shock to me that, oh, wait a minute, we last spoke in January. And now you want this tomorrow is not a good way to keep a relationship going.

Unknown Speaker  57:36  
Totally, totally agree. And the flip side also kind of works from a company perspective. You know, companies move on company time universities move on university time, and never show the to be synchronized. So that's something that you have to keep in mind that that, you know, companies are going to need things. But if you've got an overly bureaucratic process of approvals or permissions at the university, that's going to frustrate not necessarily Dr. Arun, but his investors or his entrepreneurial partners, or his company, you know, development partner. So just those things, you just need to make sure that that reciprocity in in that in that relationship is very important. So with that, we'll open it up for questions.

Speaker 2  58:42  
And also recognizing the short amount of time we have for that. Arun and I are both open for any of you to reach out to us afterwards. If you have any questions, by email giving us a call, we'd be delighted to talk with you further.

Speaker 1  58:59  
I do see one or two questions that I think we'll have time to get to. And again, always feel free to follow up with email. Since our presenters graciously have opened that option up to us if other questions come up. The first one I'm seeing is how do you balance the goals of a faculty who has started a company versus those of CO inventors who aren't part of the company?

Speaker 2  59:25  
You know, one of the things that I'm always very careful of is normally in our office we pick the lead inventor to convey to his or her co inventors information about patents and licensing and what's going on. I am always very careful if one of the inventors is on the company side and the others are not that I make sure we have two points of contact so that we are talking with those that aren't involved in the company at all times. Well, and then being very careful to inform those others and be thinking of them, especially in terms of, of the finances. You know, I have had calls from non company, inventors who say, hey, when's my money showing up? And you have to say, Oh, well, it was a startup deal. And your colleague didn't want to pay anything for years and years. And that's not a good place to be. So making sure that the non company inventors understand that often in startup fields, you've got to backload the costs, but also making sure you're not giving a inappropriate sweetheart deal to the company, at the expense of those other inventors. It's a very fine line to walk

Unknown Speaker  1:00:55  
in, and as a faculty, entrepreneur, it's better to share more information with your non company, inventor colleagues, than keep them in the dark. And so you know, that's one of the things you're going to have to stress when you're working with a faculty entrepreneur and their CO inventors are not part of the company, which is having those lines of communication, that let them know, you know, what, what is happening on a non confidential basis.

Speaker 1  1:01:33  
Great. And I think the second one that I'm seeing is how much involvement in working with a faculty member is maybe too much involvement. How do we, Murray I think you reference drawing a line a moment ago, which ties in nicely with this question.

Speaker 2  1:01:49  
Well, Pirate pirate, part of it is that we have to worry about is legal, and especially for those of us at state universities in the United States, using state resources for a private company, so you know, you have to be very careful about giving a company legal documents that they can use. I mean, you can certainly refer them to local or regional attorneys who can work with them, you can certainly show them, this is the confidentiality agreement I use. But you should, you know, go to your own attorney for tweaks on it, or send them to web pages that might have good examples. But, you know, you want to be supportive. But those are just a couple of areas that, you know, you really don't want to be running afoul and having, you know, your state legislature looking at why are companies being run out of out of a university, state taxpayer paid, funded building, or your funding agencies worried about that, too. So you do you do have to draw that line. And it's often better to point to education, when you're in those circumstances, send them to someone who can help them.

Unknown Speaker  1:03:20  
Totally agree with that. And, you know, this is a it's not a not always an easy question to address. Because, you know, as I mentioned, startup companies take a lot of time. And your role is to mentor and guide them through the process. It's not really to do things for them. So mentoring, guiding versus doing things in that place where you can sort of draw the line. The other aspect of this is that there are there are certain, and Marie, so rightly pointed out, there's a legal distinction. So if you're asked to do something for a company, you keep in mind your university employee and responsibilities to the university, you're going to have some startup companies that are going to demand more from you. So you have to be very, sort of astute and politically correct with respect to how much time you can commit. In addition, you've got other startup companies, other faculty members, other technologies that are part of your portfolio. And so you know, that balance, maintain that balance is very important.

Speaker 1  1:04:50  
Well, thank you both. On behalf of autumn for such an informative presentation for answering our questions and attendees. Thank you for joining and participating today. A I know we're a couple of minutes over time. So thank you for your patience while we finished up and got this important information to you. As a reminder, a recording of this webinar will be available for viewing on the autumn Learning Center within a few days of this presentation and is included in your registration. A copy of the slide handouts will be there as well as a certificate of attendance for you to download. And please don't forget to complete the webinar evaluation which will open when you close out of this webinar. It helps us serve your needs in the future. So with that, I will say thank you all once more and for joining us and I hope everyone has a great rest of their day and week. Thank you.

Unknown Speaker  1:05:38  
Thank you everyone.

Unknown Speaker  1:05:39  
Thanks. Bye bye

Transcribed by https://otter.ai