research.unt.edu/2020RCAreport
Research Commercial Agreements ANNUAL REPORT
FY2020
TABLE OF CONTENTS 2
Chapter 1: Executive Summary
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Chapter 2: Annual Review
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Chapter 3: Strategic Planning and Implementation
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Chapter 4: Metrics
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Chapter 5: Commercialization Spotlight
19 Appendix: Intellectual Property Policy
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CHAPTER 1
Executive Summary UNT’s Research Commercial Agreements (RCA) unit within the Division of Research and Innovation began its first year of operations in FY 2020. The restructured area combines the research contracting function of the division with the commercialization unit, providing a single point of interaction for research connected to sponsors, licensees and collaborators not involved with federal grants. The base year of all new organizations offers new challenges and opportunities, but having that base year occur in FY 2020 during the global pandemic has allowed RCA to make bold changes and reap positive results. Even with sheltering in place and working remotely, the RCA team was able to achieve a banner year for commercialization: 12 licenses (our highest amount to date), 42 disclosures (slightly down but still four times our industry expectations) and our largest single transaction to date: LaCore Nutraceuticals’ $1 million gift, a $500,000 five-year sponsored research agreement, fiveyear lease to Inspire Park, internships for UNT chemistry students and a license option for a drug delivery technology. All of these were accomplished during a year marked by the pandemic.
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Contracting has become a powerful asset for UNT. Working remotely has made the team utilize technology and effective triage techniques to ensure we could keep projects funded during the growing uncertainty of the year. These techniques resulted in a much better work flow for the unit compared to initial processes. Those processes have been replaced with a remote work philosophy that allows for faster review and turn-around of contracts and is seemingly far faster than peer institutions. The unit’s mission to increase transparency and provide constant reporting to PIs and deans became an internal tool to reduce all of the time between steps, allowing for fast, yet the same high-quality professionalism and service in contracting. Most importantly, FY 2020 is a base year, not the end year. The progress RCA has done to make processes better, increase licenses and build relationships both on and off campus is akin to a long-term investment portfolio. It was a momentous year, and the unit is expecting growth in each year to follow to create a lasting impact for the long-term success of UNT.
RESEARCH COMMERCIAL AGREEMENTS ORGANIZATIONAL CHART Michael Rondelli Associate Vice President for Research Commercial Agreements
Steven Tudor
Ali Yunus
Janis Miller
Amanda Anaya
Director for Licensing
Senior Contracts Analyst
Contracts Analyst
Administrative Coordinator
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CHAPTER 2
Annual Review FY 2020 was a major year for the Division of Research and Innovation. First, Mark McLellan joined UNT as vice president for research and innovation for the division. He has brought a wealth of experience, having served as a vice president of research for both Utah State University and Portland State University. He has provided the necessary stability, guidance and leadership to allow the division to serve its internal customers and expand services across campus. One of his first leadership decisions — merging research contracts with technology transfer and creating Research Commercial Agreements (RCA) — positively improved the division. This reorganization allowed the team to rethink how they worked and how to serve the UNT community more efficiently. For contracting, the RCA team examined their past processes and then asked stakeholders what they liked or disliked. It became clear that two issues needed to be addressed: turn-around time and transparency.
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The turn-around time for contracting is a consistent issue at other institutions. The time spent on negotiating language to allow two parties to work together does not add much value to the actual work to be accomplished. However, without correct contract language, liability increases, and it can keep many projects from succeeding. The unit looked at these common problems and developed a methodology to address the concerns. First, all contracts now come through a triage email system, researchcontracts@unt. edu. Janis Miller, a certified paralegal, joined the team to be the first line of triage for all contracts. The goal was to have her log every contract into the system, determine its level of complication and then assign it to one of the team members so they can respond back quickly. RCA recommends that contracting offices at other universities also explore this approach as a best practice. Janis’s dedication to organization and procedure has paid huge dividends to RCA as she leads the triage, providing each team member with a manageable workload to help ensure a quick turnaround.
RCA is committed to serving the UNT community through a seamless, timesensitive approach to negotiating, executing and informing all stakeholders related to the contracts and licenses that RCA manages. To this end, RCA has organized projects into four separate categories with specific timelines for turnaround: TYPE 1 — If a sponsor/external party agrees to standard UNT template agreement types ($5k SRA, CDA/NDA, MTA and UBMTA). Such template may not be altered for any business terms.
Expected turnaround time: 1 business day TYPE 2 — Non-complex agreement templates that use alternative standard template language. These typically are edits to CDA/NDA, MTA, teaming agreements and other MOA/MOU that have minor changes and do not create a liability greater than $10,000 for the agreement type; agreements include sponsored research contracts for less than $10,000 and option license agreements.
Expected turnaround time: 2 business days TYPE 3 — Agreements that utilize template language with minor edits outside of the standard template language. Justifications for acceptance should include validation for low financial risk (less than $30,000) to UNT and any written policy of the sponsor that requires such modification. Examples of types of agreements include complex CDA/NDA, MTA that have language creating any financial liability to UNT, option licenses, and sponsored research agreements that have liability less than the $30,000 limit.
Expected turnaround time: 5 business days TYPE 4 — Agreements that are complex by nature and/or that require substantial deviation from UNT standard template language. Agreements that create a liability in excess of $30,000 automatically are Type 4, including the provision of intellectual property rights to another entity, cost-sharing requirements and requirements for UNT to assume liability related to the conduct of research or research results reporting. Typically, this will include master research agreements, research contracts that exceed $30,000, licenses and teaming agreements/ MOU/MOA that include terms outside of a strictly research function by UNT.
Expected turnaround time: 12 business days
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So far, these deadlines have been met for most all projects, with the average turnaround for a draft being one day or less for Types 1, 2 and 3 and generally responding in less than 2 days for Type 4. RCA is developing a system to measure the time for all contracts as they come into the system and the response time, which will provide a level of transparency beyond any other research institution, providing greater service and confidence to internal customers. Transparency is a prime concern for RCA. Faculty, deans and other administrators rely on the unit to get through the contracting phase so that they can perform the research and expend the research funding. RCA developed a monthly report to all active principal investigators (PIs) and their deans that explains the status of every contract with RCA, the time the last version came into RCA, what the next step is, including who or which office might have information needed, and when the next step is due. Not only has this been successful with our PIs and deans for establishing their comfort with our area and providing evidence that most of the delays in contracting come from RCA waiting on sponsor replies, we use this report inside the office weekly to ensure RCA meets or exceeds the service commitment.
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Going forward, RCA is experimenting with how to create a dashboard for each team member that will allow projects to move across the team to balance workloads. Outside of research contracting, RCA’s other prime objective is the protection and commercialization of intellectual property (IP) developed by UNT faculty and staff. The technology transfer function was founded at UNT in December, 2015 when associate vice president, Michael Rondelli, was hired to restart the function at UNT. Although UNT had a 20-year history of the function, the unit had not been successful in generating IP disclosures or in licensing. Since December 2015, the unit continued its growth with 42 disclosures in FY 2020 and 12 licenses for that year, two fewer disclosures than the previous year, but two more licenses. With only four years to build the IP portfolio, generate faculty interest and trust in the team and build relationships with the local industries, RCA is proud of this success in such a brief time. AUTM is the industry association for university technology transfer professionals. They have reported that the average number of disclosures a university should expect is one for every $2 million in federal funding expenditures per year.
Commercialization of IP is a difficult With less than $20 million in federal process. Staff spend a great deal of expenditures, RCA outperformed that time analyzing the technology, the expectation by more than 420%. This industries it can impact and the path over-performance comes from a few from lab to product. Most IP needs activities. First, licensing staff have additional development to make it been working with several faculty commercially viable; since the unit started, COMMERCIALIZATION IS NOT the team works with and those faculty LIMITED TO A FINITE SEGMENT OF the faculty to develop both have a strong a plan to source connection to the TIME; IT REQUIRES A CONSISTENT companies that would corporate world and NURTURING TO ALLOW LICENSED be interested in the are advocates of our TECHNOLOGIES TO DEVELOP AND license and are able services. Second, RCA ADVANCE WITHIN COMPANIES IN to collaborate in that staff have leveraged ORDER TO MOVE A TECHNOLOGY additional research those faculty to get FROM A LAB SETTING TO A and development. their peers interested COMMERCIAL PRODUCT. EACH In some cases, the and open to our YEAR BUILDS ON THE LAST, WHILE technology is better conversations. Third, suited to a startup without its own ALLOWING THE OFFICE TO BE company for licensing. medical school, the READY TO STRIKE WHEN A SWEET cost per invention is SPOT ARRIVES THAT MATCHES THE This requires a great deal of work to source much lower for UNT TECHNOLOGIES FACULTY HAVE the entrepreneur faculty: engineering, DEVELOPED AND INDUSTRY’S and team to start the software and plant COMMERCIAL OPPORTUNITY TO venture, develop the biology are less LEVERAGE THAT TECHNOLOGY financial package expensive to conduct to attract venture fundamental research INTO COMMERCIAL SALES. funding and execute that leads to IP than on the plan. RCA sees this as a way biomedical research. Additionally, for UNT to be an integral part of the UNT’s chemistry faculty have very regional economy as it helps the strong ties with industry for their startups with raising capital, sourcing funding, increasing the commercial federal (non-dilutive) funding for focus of their research agendas research and development and utilize as they are focused on industrial UNT students as part of the team research questions.
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CHAPTER 3
Strategic Planning and Implementation Research Commercial Agreements has three core annual goals: 1. Encourage Faculty to Disclose New Inventions 2. Market IP for Licensing and Corporate Sponsored Research 3. Support/Operate an Effective and Efficient Research Contracting Process To meet these goals, RCA has implemented the following programs for each goal: This year, disclosures had a slight reduction from 44 to 42 from the previous year. Staff were less aggressive during department meetings to elicit more disclosures during the work-from-home period, mostly focusing resources on serving the faculty with existing relationships and focusing more time on commercialization. For 2021, RCA is developing several new programs to increase disclosures while continuing to keep all three core goals as equally weighted.
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Before FY 2020
FY 2020
Presented at department meetings
Goal 1: Encourage Faculty to Disclose New Inventions
Conduct PI training
Published press releases/articles in UNT internal publications
Reached out to PIs one at a time
Built relationships with University Advancement to encourage partnerships for leveraging IP for donors, foundation funding and corporate licensing Encouraged served PIs to spread the word to their peers Issued monthly reporting of activities to both served PIs and the deans
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RCA’s commercialization strategy is built on a process of gaining acceptance and desire by UNT faculty, executing licenses and startups that generate income and move technologies to the marketplace and leveraging past success to drive future faculty and industry interest. Each year, the commercialization process builds on the past years’ successes to grow a portfolio, not just treating every transaction as a one-time project.
Before FY 2020
FY 2020
Worked with inventor to target collaborators at companies Discussed option for spinouts with inventors and their graduate students
Goal 2: Market IP for Licensing and CorporateSponsored Research
Utilized intern marketing reports to find targeted potential licensees Utilized licensing consultants to target specific contacts at large potential licensees Spoke/attended industry events to increase visibility and push specific technologies Created Inspire Frisco to create a network of qualified entrepreneurs for startup licenses Connected to potential licensees through LinkedIn mining Worked with UNT’s Murphy Center for Entrepreneurship to target potential licensees Conducted data mining around patent portfolio to target licensees.
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When RCA took on contracting, the team thought it would cause a disruption to its commercialization activities and would take a large amount of time to manage. Luckily, hiring went well as did the implementation of technology, process and reporting that allowed the team to reduce time for contracts substantially while increasing output. Most importantly, the faculty and administrators who rely on RCA’s services feel more comfortable and have access to their research funding faster.
Before FY 2020
FY 2020 Formed RCA to merge research contracts with technology transfer
Goal 3: Support/ Operate an Effective and Efficient Research Contracting Process
Implemented 1, 2, 5, 12-day guaranteed turnaround for contract response Issued monthly reporting of activities to both served PIs and the deans Implemented DocuSign and Adobe Sign for fast contract review and execution Connected with college administrators to develop transparency and clear processes Conducted bi-weekly meetings with University Advancement to ensure transparency Updated research.unt.edu website Launched researchcontracts@ unt.edu as the triage email that manages all contractual issues and guarantees service tracking
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UNIQUE FACULTY SERVED IN FY 2020:
CHAPTER 4
Metrics MULTIYEAR SUMMARY
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54
FY 2016
FY 2017
FY 2018
FY 2019
FY 2020
Disclosures
24
37
52
44
42
Patent Filings
24
51
34
39
34
Issued Patents
13
13
6
6
4
Agreements (via Analytics)
41
92
115
137
361
Licenses/Options
1
6
7
10
12
Revenue
$10,000
$69,936
$47,918
$425,476
$327,142
Patent Reimbursement
$0
$12,357
$11,349
$92,376
$101,585
Royalties
$10,000
$57,578
$36,569
$333,100
$225,556
Patent Expenses
$155,939
$265,246
$214,505
$209,853 $242,320
FY 2020 NEW INVENTION DISCLOSURES Invention ID
Title
Inventors
Tech Disclosure Date
Shi S8
A Tension System in Belt Design for Magnetic Collector
Andrew Renzetti, Sheldon Shi
08/28/2020
Shi S7
Disc Magnetic Collector
Andrew Renzetti, Sheldon Shi
08/25/2020
D'Souza N4
Multifunctional Embedded Wireless Sensing for Manned and Unmanned Aerial Systems
Nandika DSouza, Mahan Ghosh, Ifana Mahbub, Kamesh Namuduri
08/07/2020
Philipose U1
Metal-oxide Semiconductor (MOS) Based Sensing Device
Christopher Littler, Usha Philipose, Athanasios Syllaios
08/03/2020
Shi S6
Headphone Mount
Mahan Ghosh, Sheldon Shi, Lee Smith
08/03/2020
Gulur N1
Simultaneously Improving Performance and Energy of Sparse Matrix Computations at Low Sparsity
Nagendra Gulur, Krishna Kavi
07/04/2020
Dixon R5
A Laccase Enzyme for C-lignin Engineering
Fang Chen, Richard Dixon, Chunliu Zhuo
07/02/2020
Chesky K2
The Chorister Face Mask
Kris Chesky, Sheldon Shi
06/25/2020
Belshaw S11
Eagle Overlay Skimmer Protector (EOSP)
Scott Belshaw
06/24/2020
Shi S5
Gas Disinfection Device
Kris Chesky, Sheldon Shi, Lee Smith
06/08/2020
Neogi A10
Metamaterial Gased Tire for Quiet Cars
Hyeonu Heo, Arup Neogi
06/03/2020
Omary M15
Novel Fluorinated Polymers for Effective Corrosion Protection of Aluminum Substrates.
Teresa Golden, Sreekar Babu Marpu, Mohammad Omary, Waleed Yaseen
05/28/2020
Belshaw S10
Eagle Alert Wrist Band (EAWB)
Scott Belshaw
05/18/2020
Belshaw S9
Gas Pump Skimmer Predictive Algorithm (GPSPA)
Scott Belshaw
05/15/2020
Neogi A9
Plasmon Enhanced Chiral-optical COVID-19 Sensors for Rapid Detection
Arup Neogi
05/08/2020
Dixon R04
Genetic Manipulation of Cereal Crops for Lignin Deposition and Senescence Rate
Jaime Barros-Rios, Richard Dixon
04/21/2020
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FY 2020 NEW INVENTIONS DISCLOSURES (continued)
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Invention ID
Title
Inventors
Tech Disclosure Date
Heard M1
UNT English First-year Writing Resources
Matthew Heard
04/16/2020
Verbeck G15
Standoff Detection of Disease and Virus Metabolites Using Environment Air Capture Coupled to a Tunable Membrane Inlet Mass Spectrometer
Guido Verbeck
03/24/2020
Rosales-Ruiz J1
PORTL: The Portable Operant Research and Teaching Lab
Jesus Rosales-Ruiz
03/18/2020
Verbeck G16
NutraLIMS
Guido Verbeck
03/12/2020
Lin Y6
Generation of many diffraction spots using graded photonic super-crystal
Yuankun Lin
03/12/2020
Ecker M1
Shape memory polymer bandage to seal anastomotic leakages
Melanie Ecker
02/20/2020
Callahan K2
The Use of Virtual Reality (VR) to Assess the Potential Capacity of Autism Service Providers to Implement the Characteristics of Behavioral Artistry and Effectively Deliver Applied Behavior Analysis Interventions.
Kevin Callahan
02/17/2020
Mahbub I2
High Surface Area Reverse Electrowetting for Self-Powered Wireless Wearable Motion Sensor
Ifana Mahbub
02/10/2020
Jagadeeswaran P7
5.8S RNA Monoclonal Antibody: A potential Drug to Treat Thrombosis
Pudur Jagadeeswaran
01/30/2020
Schnurr D1
Collaboration HUB Platform Design
Drew Schnurr
01/30/2020
Choi W10
High Energy Density Lithium–metal Battery by MoS2 Coated Li-metal
Wonbong Choi
01/20/2020
Choi W9
2D TMD Alloys as Catalysts for Cathode in Li- S Batteries
Wonbong Choi
01/20/2020
Mohanty S10
User Guidance System
Saraju Mohanty
12/26/2019
Invention ID
Title
Inventors
Tech Disclosure Date
Mohanty 11
iGLU: A Device for Accurate Non-Invasive Blood and Serum Glucose-Level Monitoring and Insulin Delivery for its Control in Smart Healthcare
Saraju Mohanty
12/07/2019
Lin Y5
Graded Photonic Super-crystals with a Triangular Symmetry for the Light Extraction in Organic Light Emitting Diodes
Yuankun Lin
02/13/2020
Root D3
High Affinity Peptide Modulation of Myosin Subfragment-2 as a Treatment for Heart, Obesity, and Muscle Diseases
Douglas Root
12/03/2019
Mishra R4
Method for Designing Aluminum Alloys for Powder Bed Additive Manufacturing
Rajiv Mishra
11/23/2019
Azad R1
Deep Learning Based Tool for Cancer Detection and Classification
Rajeev Azad, Steven Gore
11/19/2019
Vaidyanathan V2
Mechanically Actuated Rehabilitation Kinematicon
Vijay Vaidyanathan
11/13/2019
Reidy R6
Process to Produce Nanoparticles
Richard Reidy
11/01/2019
Zhang H5
Laser Ultrasound Through Wall Communication
Haifeng Zhang
10/29/2019
Mikler A3
Web-Based RE-PLAN
Armin Mikler
10/29/2019
Lindo N1
Child and Adolescent Career Construction Interview (CACCI): An Expressive Arts Group Intervention for School Counselors and Mental Health Professionals
Peggy Ceballos, Natalya Lindo
10/17/2019
Siller H1
Walkway Safety Certification Online Class
Hector Siller
10/01/2019
Taylor D1
The Structured Clinical Interview for DSM-5 Sleep Disorders (SCISD) and the Revised Version (SCISD-R)
Daniel Taylor
09/29/2019
Belshaw S8
Flash Suppressor
Scott Belshaw, Jacob Bryant, Michael Saylor, Lorrin Underwood
09/09/2019
15
FY 2020 NEW PATENT APPLICATIONS ISSUED
Tech ID
Title
Deming K1
Dahotre N2
Choi W5
A Genetically Two-DimenLaser-Assisted Modified Probiotic sional TranMachining (LAM) for the Treatment sition Metal of Non-Monoof PKU Disease Dichalcogenide lithic Composite Referred to Micro-SupercaBone Material as PHEnominal pacitors
Verbeck G10
A Reverse Gas Stack Model for Portable Chemical Detection Devices to Located Threat and Point-of-Source from Effluent Streams.
Serial Number
15/800,529
16/310,917
16/091,474
201680071271.3
Country
United States
United States
United States
China
File Date
11/1/17
12/18/18
10/4/18
6/5/18
Patent Number
10,744,168
10,729,497
10,727,004
CN 108473305 B
Issue Date
8/18/20
8/4/20
7/28/20
1/3/20
Inventors
Katherine Deming, Ione Hunt von Herbing, Michael Allen
Narendra Dahotre, Soundarapandian Santhanakrishnan
Wonbong Choi
Guido Verbeck
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FY 2020 NEW LICENSES Agreement Type
Effective Date
Technologies
License
07/02/2020
Schnurr D1
License
08/31/2020
Petrie T1
License
08/20/2020
Belshaw S4
License
06/11/2020
Verbeck G10
License
06/11/2020
Verbeck G15
Option
07/01/2020
Chyan O6, Chyan O9
License
06/09/2020
Verbeck G10
Option
04/21/2020
Belshaw S4
License
04/06/2020
Jagadeeswaran P8
Option
10/15/2019
Verbeck G14
License
12/01/2019
AMMPI
License
09/17/2019
Siller H1
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CHAPTER 5
Commercialization Story LICENSES FOR INTELLECTUAL PROPERTY:
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Sometimes the function of Research Commercialization Agreements is seen as just contracting, or it is just the unit that spins out technologies. But the two functions act together to bring a strategic advantage to UNT. When the contracting and commercialization are synchronized and able to move at the speed of business, it allows for transformative transactions that, once accomplished, open a floodgate of more opportunities for UNT to engage with industry, which then increases funding of research and has a lasting impact on the value of UNT’s degrees. A great example of such a transformative opportunity is the 2019 transaction with LaCore Nutraceuticals, a private company that develops over-the-counter vitamins, nutraceuticals and other
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health additives and chemicals. In a ground-breaking transaction with UNT through chemistry professor Guido Verbeck, LaCore executed a multi-phase, long-term project that included a $1 million gift to UNT (one of the largest single corporate gifts to UNT); a five year, $500,000 sponsored research contract; a five year lease to labs in Inspire Park; over $60,000 of value in converting the labs into wet-lab space; internships for UNT students working as chemists in industry; and an option to license UNT intellectual property. This holistic package of interactions with a company demonstrates UNT’s ability to leverage research, advancement, facilities and both our industry renowned researchers and their students as vehicles for engaging with industry and delivering Tier One Our Way.
APPENDIX
UNT Intellectual Property Policy Research Intellectual Property Policy number: 08.003 Policy description: The purpose of this policy is: (1) to encourage the creation, development, and management of Intellectual Property including, patents, copyrights, trade secrets, know-how, and trademarks in the best interest of the public, the Creator(s), UNT, and the research sponsor(if any); (2) to provide for protection of Intellectual Property through patents, copyrights, trade secrets and trademarks; (3) to ensure that monetary and other benefits derived from Intellectual Property including patents, copyrights, trade secrets and trademarks are equitably distributed to the Creator(s), UNT and other parties and (4) to address ownership issues related to Intellectual Property developed at or on behalf of UNT. See full policy (PDF): Research Intellectual Property https://policy.unt.edu/sites/default/files/08.0030_Research_20Intellectual%20Property.pdf Policy owner: VP for Research and Innovation Policy contact: Jamie Peno, Director of Research Integrity and Compliance Division of Research and Innovation 940-565-3941 Jamie.Peno@unt.edu Applies to: Faculty, staff, students, all university Date issued: Saturday, January 1, 2005 References: Online Courseware Intellectual Property https://policy.unt.edu/policy/06-032 Copyright Compliance https://policy.unt.edu/policy/08-001 Cross-References: Copyright Compliance https://policy.unt.edu/policy/08-001 Online Courseware Intellectual Property https://policy.unt.edu/policy/06-032
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