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Sampling of Case
History and Experience |
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Biotech / Pharma / Medical |
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Oncology Vaccines
|
Non-exclusive license for
immunotherapeutics. Upfront fee, milestones, royalties.
Over $10M. |
|
Drug Discovery |
Collaboration to validate platform
for start up company. Research fees and shared IP rights
with Roche®. |
|
Vaccine |
Non-exclusive license for vaccine
technology. Upfront fees, milestones, royalties, IP
rights. |
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Anti-aging Therapeutics
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License and joint development with
P&G ® for dermatology applications. Research fees and
royalties. Applications limited. Shared IP. |
|
Protein Therapeutics |
Research collaboration to validate
platform for start up company. Research fees and shared
IP rights. |
|
Immunology/Oncology |
Planning/Leading of Translational biology, pharmacology and
toxicology functions in support and advancement of
medical work. |
| Pharma
Research Partnership |
Created and led new RA research program, set disease
control strategies in metabolic and muscular skeletal
disease at large Pharma. |
|
Chemistry / Polymers / Material Sciences
|
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CombinatorialChemistry
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Discovery collaboration with Exxon®
advanced materials. Combi-Chem platform to discover new
class of advanced materials. Over $30M deal. Upfront,
milestones, license royalties on the materials.
Non-exclusive on use of platform in addition to residual
royalties from future inventions from platform use. |
|
Advanced Materials |
Formed global partnership to develop,
manufacture, distribute and license advanced materials.
Shared research, IP and promotion. Mitsui to build
manufacturing plant and obtain Japanese market revenue
only. |
|
Printed Circuit Board
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Joint development and license program
using advanced materials to replace epoxy PCB’s.
Research fees, shared IP. Ciba to manufacture and
distribute. Royalties. Deal over $8M. |
|
Monomers, Engineered
Polymers, Fabricated Parts |
Licensed technology and formed 50/50
JV with Ciba® to launch new business in Europe as
extension of US business. Upfront payment, fully
budgeted operation to develop applications and
customers. Royalties and IP rights in remainder of
world. Deal over $10M.. |
|
Advance Materials Platform
for Engineered Plastics, Circuit Boards, Flat Screens
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Licensed technology and formed JV to
share research, IP and promotion rights. Nippon Zeon®
(NZ) to have Japanese market. NZ conducts research
solely until tech validated (risk lowered). NZ to
provide monomer for US and Europe. NZ pays minimum and
variable royalty. Shared promotion. |
|
Flat Panel Displays, Advanced
Materials |
Joint development with 3M® for
development of flat panel display application using
advanced materials. Research fees, royalties and IP
rights. Secured NIST grant of $12M in partnership. |
|
Engineered Polymers /
Advanced Materials |
Three-way joint development to
develop high performance polymer materials product.
BASF® to manufacture and shared distribution rights.
Research fees and royalties. |
|
Clean Energy |
|
Alternative Fuel Research (Methanol) |
Secured NIST grant of $8M in partnership. Joint development program.
Research fees and royalties. Shared IP. |
|
Fuel Cell Reformers |
Partnership to design and produce fuel cells. NIST application for $8M.
Research fees, IP rights, and shared income. McDermott® to build manufacturing
facility. Joint research. |
|
Catalytic Gas Turbine |
Business development on first gas turbine commercialized with catalytic combustor. |
|
SCR Catalyst Regeneration |
Due diligence, negotiation and acquisition of company holding unique regeneration technology. |
|
Engineering Sciences |
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Biochemical Treatment
of Waste |
Exclusive field of use, Up-front
payment, running royalties, minimums,
sublicensing, IP costs, diligence. |
|
Electronic Article
Surveillance |
Non-exclusive, Up-front payment,
running royalties, minimums, diligence, supply
contract. |
|
System for treating high
sulfur petroleum feedstocks and natural gas
|
Non-exclusive, upfront payment,
running royalties, minimums, diligence, supply contract.
|
|
Software |
|
CRM Application |
Multi-year contract GM US to provide marketing,
pricing, logistical analysis and projections. Designed
customized disparate database, established secure ISP
connections and supported both ongoing and consulting
work for client. |
|
Bioinformatics |
Collaborative research informatics
deal. Designed product for Lilly® with residual ownership
(commercial IP rights) for Industry distribution after
12 months. Research fees and promotion support. |
|
Bioinformatics |
Collaborative research informatics
deal. Designed product for Amgen® with residual
ownership for Industry distribution after 12 months.
Research fees and promotion support. (Both Lilly® and
Amgen® products launched new business into
pharmaceutical channel). |
|
Bioinformatics /
Cheminformatics |
Designed strategy and co-founded
company within corporate parent incorporated firm,
raised money, built staff, located merger partner,
negotiated spin-out from parent and merged with partner.
Merged new combined operations and reorganized staff,
modified strategy, trained staff, restructured balance
sheet and ownership and launched new business with
revenue in first year.
|
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Electronics and Optics |
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Flat Panel Display |
Exclusive field of use, equity,
up-front payment, running royalties, minimums,
diligence, sublicensing,2yr R&D contract. |
|
Advanced Materials
for Circuit Boards |
Joint research with IBM® and Georgia
Tech. Obtained NIST grant ($12 M) to develop advanced
materials for electronic applications. |
|
Company Start-up,
Fundraising, M&A |
|
Medical Device Company |
Out-licensed technology from
University of California; co-founded company with four
partners. Applied for SBIR funding and launched clinical
trials. |
|
Combinatorial Chemistry |
Initiated and designed strategy for
new company. Formed 50/50 joint venture with biotech
firm. Incorporated new stand-alone company. Launched new
company into combinatorial chemistry business within 7
months. |
|
Wireless and Noise Reduction |
Completed business plan, investor
presentation, organized road show and helped raise $5
million for hi-tech company. |
|
Drug Discovery Company |
Revamped corporate strategy, business
plan and investor presentation for Nuada
Pharmaceuticals. Secured additional funding from
existing investor group. |
|
Informatics and Data Mining
Company |
Spun out business unit, acquired
competing firm and secured equity and debt financing
from parent company. |
|
Advanced Materials Company |
Started up advanced materials
business. Took 25 patents and 5 people to 80 people and
$25 million in revenue within 6 years. Established
global business using Japanese Nippon Zeon® and French
TOTAL® joint venture partners. |
| Semiconductor
Company |
CEO,
Founder, launched company and took public |
| Venture
Capital/Investment Banking |
Invested in over 20 firms in both life science and
hi-tech, achieving a 30% return overall. |
|
Computing / Internet |
|
Search Engine |
Exclusive field of use, equity,
running royalties, minimums, diligence, sublicensing,
1yr r&d contract.
|
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Environmental |
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Biochemically Enhanced Oil
Treatment |
Exclusive field of use, up-front
payment, running royalties, minimums, IP costs,
diligence, sublicensing, 1yr tech transfer contract.
|
|
Purchasing, Outsourcing,
Labor Agreements |
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Purchasing |
Negotiated and managed over 25 major
raw material and other key purchasing agreements ranging
in value from $2M to over $20M. |
|
Outsourcing |
Negotiated and managed a large number
of single and multi-year agreements for manufacturing,
supply, distribution, consulting, market research, press
and public relations, legal and financial services. |
|
Labor contracts |
Negotiated two labor agreements for 4
of company’s manufacturing operations
|
|
Government and Academia |
|
UCSF |
Negotiated license rights for Human
Embryonic Stem Cell lines. Required approval of four
parties including NIH and U of WI. Also extended
research agreement for specific applications of stem
cells. |
|
U of Wisconsin |
Negotiated new agreement for stem
cell rights. Had to rebuild poor relationships and trust
issues. |
|
Academic Research
Agreements |
Negotiated over 30 agreements to
conduct research in exchange for payments and IP rights
with universities in US and a few in Europe. |
|
NIST/NIH |
Led teams to apply and present for
grant and joint funding from NIST and NIH. Presented
five times (over $50M) getting awards four times
including a $26 M award, second largest in history of
NIST. Also managed three of these.
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