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Center for Technology Transfer

The following is excerpted from the Center for Technology Transfer's Productivity Summary for FY 2002. See www.upenn.edu/ctt for more about the accomplishments of the Center which ranks among the nation's most successful when it comes to turning faculty research into patents, licenses and start-up companies.

Enterprise Activities

Licenses to Established Companies

Local company licenses Penn technology to treat bone disorders--Penn and The Rockefeller University licensed jointly-owned technology to an established company in the region to develop novel therapeutics to treat bone disorders. Based in part on research from the laboratory of Dr. Yongwon Choi of the Abramson Family Cancer Research Institute and the Department of Pathology and Laboratory Medicine in the School of Medicine (SOM), the newly discovered protein known as OSCAR may lead to effective treatments for controlling the destruction of bone and to prevent or to cure osteoporosis.

Local Device Manufacturer Licenses DNA Microarray Technology--Microarrays have become an important tool in biological research, drug discovery, and diagnostics because they enable researchers to reduce time and costs by performing thousands of assays simultaneously. Dr. David Graves of SEAS and collaborators discovered a method to perform DNA assays even faster. Their technology, which reduces assay time from hours to minutes, was licensed to a local research equipment manufacturer.

Previous Penn Startup Develops Novel Treatment for Cancer--Research in the laboratory of Dr. Carl June of the Abramson Family Cancer Research Institute and the Department of Pathology and Laboratory Medicine in SOM has led to the creation of a novel agent that is a potent promoter of the division and activation of immune cells in culture. This technology, which has the potential to greatly enhance cell therapies, was licensed to an emerging biotechnology company in Seattle that was created several years ago to commercialize other Penn technologies.

Gene Therapy Research Advances with Local Company--A local multinational pharmaceutical company licensed a portfolio of gene therapy vector technology developed in the laboratory of Dr. James M. Wilson of the Institute for Human Gene Therapy in SOM. The licensed technology includes a battery of novel Adeno-Associated Virus (AAV) vectors as well as the methodology for the discovery of additional vectors. This technology assures this pharmaceutical company access to a well-established platform in the evolving field of gene therapy.

West Coast Licensee Develops Promising New Chemotherapeutic Agent--Technology created in the laboratory of Dr. Amos B. Smith III of the Department of Chemistry, SAS was the basis of a new strategic relationship with a San Francisco area biotechnology company. The technology relates to analogues of discodermolide, a compound that may prevent the growth and proliferation of cancer cells. It is hoped that this relationship will result in the development of new cancer therapies.

Promising New Imaging Technique for Diagnosing Parkinson's Disease--CTT restructured its license with a Japan-based company allowing the licensee to partner with one of the largest international contrast agent manufacturers to facilitate the development of TRODAT, a promising new diagnostic for Parkinson's Disease. TRODAT was developed in the laboratory of Dr. Hank Kung from the Department of Radiology in SOM.

New Chemical Precursors for Nanotubes--Chemical precursors and synthetic methods developed by Dr. Larry Sneddon of the Department of Chemistry and LRSM dramatically improve the yield of synthesized ceramic materials and simplify the process. These specialized ceramics are becoming increasingly important in the development and production of carbon nanotubes. Capitalizing on this need, CTT and Dr. Sneddon identified a chemical supply company interested in making and marketing these chemicals in large amounts.

Licenses to Startup Companies

Advaxis--Advaxis was created to commercialize vaccine adjuvant technology developed by Dr. Yvonne Paterson in the Department of Microbiology in SOM. Advaxis licensed a portfolio of patented technologies that enhance the immune system's cancer-fighting abilities. CTT launched this new venture with a group of investors from New York and Philadelphia.

Franklin Fuel Cells--Franklin Fuel Cells was created to commercialize a breakthrough solid oxide fuel cell technology developed in the laboratories of Drs. Ray Gorte and John Vohs in the Department of Chemical Engineering, SEAS. Franklin Fuel Cells licenses technology which allows fuel cells to use normal sulfur--containing fuels, such as gasoline, without the need to first reform the hydrocarbons to hydrogen. Initial investors include local angels and EnerTech Capital, an energy sector venture fund based in Wayne, PA.

Integral Molecular--Based on research from the laboratories of Drs. James Hoxie and Robert Doms of the Departments of Hematology-Oncology and Microbiology in SOM, Integral Molecular was created to commercialize a novel drug discovery process to identify and develop antibodies against integral membrane proteins. CTT launched this new venture with seed funding from a local technology development organization.

Morewood Molecular--Seemingly minor changes in genes can have dramatic effects on the functions of the proteins they encode. Assaying protein function can have a significant impact on the ability to predict disease and assess a patient's response to therapy. Dr. Scott Diamond of SEAS has created a Protein Chip which allows the simultaneous assay of thousands of proteins. His technique and related patents are the basis of Morewood Molecular, a startup company formed to use the technology in clinical diagnostics and drug discovery. Morewood Molecular was created in conjunction with Launchcyte, a technology development and venture group based in Pittsburgh.

Provid Pharmaceuticals--Provid Pharmaceuticals was created by a group of pharmaceutical industry scientist-executives in concert with Drs. Ralph Hirschmann and Amos Smith of the Department of Chemistry, SAS and CTT. This new drug discovery company is dedicated to developing therapies for debilitating autoimmune diseases, such as multiple sclerosis and Type I diabetes, using patented peptide mimetic technology.

Viral Genomix--Viral Genomix was created to develop a novel class of drugs based on viral proteins for the treatment of cancer and autoimmune diseases. These viral proteins are extremely potent, well-honed tools that retain their ability to regulate important cell functions even when separated from the disease causing parts of the virus. Based on the work of Dr. David Weiner and others of the Department of Pathology and Laboratory Medicine in SOM this platform technology and patent portfolio uses specific viral proteins that can induce selective apoptosis (programmed cell death) in rapidly dividing cancer cells without affecting normal cells.

CTT Process Re-engineering

License Monitoring--An important but often overlooked aspect of intellectual asset management is monitoring agreements to assure compliance with contractual terms and conditions. In FY2002, CTT initiated a license monitoring program to complement our contract management effort to assure that Penn receives rightful royalties, reports and other license obligations. CTT also selectively audits income generating licenses. One such audit of a large pharmaceutical company licensee in FY2002 recovered almost $500,000 in underpaid royalties.

Tangible Research Material Licenses (TRMs)--TRMs augment research funding for Penn faculty who develop research materials of interest to corporate scientists. Typical research materials include recombinant proteins, plasmids, vectors, phages, cell lines, chemical compounds, antibodies and transgenic mice. In FY2002, TRMs and evaluation agreements generated almost $400,000 in licensing fees and saved Penn researchers from the need to respond to numerous requests for materials.

Plain Language Agreements--In FY2002, CTT enhanced efforts to streamline the deal making process to reduce the time to close license transactions and to improve the clarity and consistency of contracts. CTT developed and now routinely uses term sheets for license transactions. In FY2003, CTT will continue its process of re-engineering by developing a new streamlined license agreement written in "plain language," which should help shorten the time from a handshake understanding to closing the deal and reduce the amount of business and legal transaction costs for Penn.

Material Transfer Agreements (MTAs)--MTAs are contracts governing the transfer of research materials such as plasmids, cell lines, mice, and antibodies between organizations. MTAs define ownership of materials and their derivatives, limitations on use, and intellectual property and publication rights. In FY2002, CTT concluded 614 MTAs and continued to receive rave satisfaction reviews from faculty for providing this necessary service in a timely manner. MTAs between academic institutions are typically concluded in a single day. To further streamline our service, we are launching a web-based procedure for MTA processing. In FY2003, Penn faculty will be able to transfer materials to academic colleagues using a web-based downloadable MTA form requiring minimal processing.

Industry Sponsored Research Agreements--In FY2002, CTT transferred to the Office of Research Services responsibility for handling most industry sponsored research agreements. CTT now handles only those agreements which are integral to licenses. This change allows CTT personnel more time to focus on the mission of commercializing Penn technologies.

Distributed Staffing Program--CTT continued its cooperative staffing effort with SAS, SEAS, the Departments of Pathology and Laboratory Medicine and Radiology in SOM, the Institute for Human Gene Therapy, LRSM and the Office of the Treasurer to promote and support technology development and commercialization activities with these groups.

Intellectual Property--FY2002 was another productive year for CTT's intellectual property group. This past year, the IP group with their colleagues processed 288 new invention disclosures and filed 349 new patent applications. In addition, concerted efforts to obtain legal fee reimbursements from licensees resulted in an increase from 50% in FY2001 to 80% in FY2002. Legal cost containment efforts included implementation of cost controls with outside law firms, careful review of invoices, increases in internal processing of select functions, and completion of several important licenses.

 


  Almanac, Vol. 49, No. 24, March 4, 2003

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