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IPS Using $100K NSF Award for 'Virtual' TTO Tool for Limited-Resource, Minority Schools

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Early-stage technology-transfer company Intellectual Property Solutions was recently awarded a $100,000 Phase I Small Business Innovation Research grant from the National Science Foundation to further develop and demonstrate the feasibility of a web-based Virtual Technology Transfer Office to support technology commercialization efforts at limited-resource universities, and in particular at traditionally minority-serving institutions.
 
IPS, based in Tallahassee, Fla., has already started work with eight such institutions in the US and plans to add another eight to conduct feasibility studies. If successful in Phase I, IPS stands to garner as much as $1.1 million in additional Phase II funding from the NSF.
 
IPS was started by now-president Tanaga Boozer, who has served as an IP consultant for Florida A&M University for several years. Boozer said that during her career, she has frequently encountered smaller schools whose lack of money or infrastructure “precluded them from completing or even initiating” tech-transfer agreements.
 
“Limited resource doesn’t only imply money,” Boozer told BTW last week at the Association for University Technology Managers’ annual meeting in San Francisco. “It also implies people. If you have a tech-transfer office, and you only have one or two people, you have limited resources.
 
“You can’t effectively do tech transfer with only one or two people on your staff,” she said. “If you have one licensing person, that person cannot license all of your technology, because they don’t have the background in physics, chemistry, pharma, biotech, et cetera. We’re trying to give people access to all of the professional and technical experts that they need, through a web-based environment.”
 
The VTTO will aim to provide all of the resources of a tech-transfer office at a larger school or university, including tools for patent applications, market research, licensing expertise, access to patent attorneys, prototyping and technical documentation, and IP management, among other items. Clients will be able to access all of these resources through a central web portal managed by IPS.
 
“How successful you are in tech transfer is usually directly related to your research base,” Boozer said. “We’re assuming that the reason [some universities] don’t participate in tech transfer is that they don’t have the infrastructure support. They’re doing the research – the money is going in for that. And they’re publishing. But they’re just not going forward with the actual patents and getting products on the market.”
 
“We took the concept of: If we take several schools and aggregate them in a system – we have now created a billion-dollar research base for lots of schools,” she added. “Now they have the means.”
 
Furthermore, according to IPS’s NSF grant abstract, the service will specifically target underrepresented minority groups such as historically black colleges and universities, and Hispanic-serving institutions.
 
“I don’t have a percentage, but we know that minority schools generally are [limited-resource institutes],” though not all LRIs are minority schools, Boozer said. “There are also minority schools that are not LRIs. For example, the University of Texas-El Paso might be [considered] a Hispanic school, but I think they have [the necessary] resources just because they’re connected to a majority school, the University of Texas. There are some others, too.”
 
In general, the guideline for whether an institution qualifies as a limited-resource institute is if it receives less than $80 million in external research funding annually, although Boozer told BTW that other institutions that receive more than that but have a limited tech-transfer infrastructure may also qualify.
 
Under these criteria, Boozer said that hundreds of schools would likely qualify.
 
“There are more schools that don’t have money than do,” she said. “At AUTM, for instance, we only get to hear about schools like Stanford, Harvard, MIT, [and] Georgia Tech. We hear about those schools all the time. But there are lots of little schools in the Midwest and the South that you don’t really hear of, but the [Federal government] is giving [up to] $70 million a year to.
 
“The Stanfords, Harvards – those are the exceptions,” she added. “But in this world, since Bayh-Dole, they have been taking off because they’ve had the … endowments and research foundations to make this happen.”
 
Currently, IPS is working with eight limited-resource institutions, including Florida A&M, Norfolk State, Jackson State, Morgan State, University of Alabama-Birmingham, Tennessee State, and others. Boozer said that IPS plans to add another eight to the roster of customers under the NSF grant. These institutions are part of a consortium called the Association of Minority Health Professions Schools, which comprises primarily medical schools or life sciences-focused colleges. Thus, IPS will be ramping up its expertise in biotechnology.
 

“You can’t effectively do tech transfer with only one or two people on your staff.”

Though IPS has a clear plan in place to make money for its prospective customers, it is less clear how it will make money itself. Boozer said that IPS plans to offer its VTTO services for “little to no charge” to clients.
 
“We’re working on the business plan now,” Boozer said. “NSF has provided us with a commercialization team and coaches to help us perfect how we make money. But I’m assuming that we’ll be making our money on the volume of business. There are many universities that do not have TTOs, or if they do, they only have one or two people. Based on sheer volume, we’re trying to get enough transactions, particularly from entrepreneurs.”
 
In addition, Boozer said, IPS will offer either its full service or an “a la carte” version that will be targeted more toward independent inventors. “We’re envisioning under our business plan that individual transactions like that will be phenomenal,” she said. “This is something you can’t find for cheap right now.”
 
In addition, she said that IPS would prefer not to get in a situation where it is taking a large cut of any tech-transfer deals it brokers for a limited-resource institution, but that “it may come to that if the business plan that we’re proposing doesn’t pan out.”
 
Furthermore, IPS will be competing with a variety of intellectual property-management companies, many of which were at AUTM hawking software- or Web-based services. But Boozer said that most of those products only offer just that – IP management – and not much else.
 
“Our services look similar to many of the vendors [at AUTM],” Boozer said. “But these [companies] are offering IP-management systems for managing existing portfolios. We’re not just managing tech transfer, we’re actually making it happen. The scientists sit in front of a computer and disclose the invention; we find the patent attorney for them. When they’re done filing the application, we provide them with the licensing expert. What we’re trying to achieve here is a self-guided process.”
 
IPS can secure a large chunk of revenue this year by demonstrating that the VTTO has legs and successfully completing Phase I of the SBIR grant, which expires on June 30. If successful, the potential Phase II payout from NSF is $500,000 initially, with another potential 50-percent match and an additional $150,000 because IPS will be working with a Centers of Research Excellence in Science and Technology minority institution.
 
“We have to make sure that we register schools, and we’ve given them enough time to play around with it.” Boozer said. “We’ve surveyed them and asked them whether this concept makes sense. We’re trying to establish that it’s feasible and that we have a clear way to make money.”

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