Yale Ventures and Funding Opportunities
December 09, 2022December 2, 2022
Presenters:
David Lewin, PhD, Director of Business Development at Yale Ventures
Panelists:
W. Mark Saltzman, PhD Goizueta Foundation Professor of Biomedical Engineering and Department Chair of Biomedical Engineering
Naftali Kaminski, MD, Boehringer Ingelheim Pharmaceuticals, Inc. Professor of Medicine and Section Chief, Pulmonary, Critical Care & Sleep Medicine
Information
- ID
- 9262
- To Cite
- DCA Citation Guide
Transcript
- 00:00All right. Thanks everybody for
- 00:02being here today. I would just
- 00:05like to give a brief introduction.
- 00:08So we're going to be discussing the.
- 00:11Interface between academia and industry,
- 00:14which is maybe something that we don't
- 00:16all naturally know how to navigate.
- 00:17So I think this should be a really a
- 00:19fun and informative session for us.
- 00:21And we're going to have three
- 00:23people speaking today.
- 00:24The first one is David Lewin,
- 00:26who is the director of Business
- 00:28Development at Yale Ventures.
- 00:30So he has over 15 years of business
- 00:33development and has been in critical in
- 00:38establishing multiple ventures through Yale.
- 00:41Including uh coltan pharmaceuticals,
- 00:43biohaven pharmaceuticals,
- 00:44I know design Pharma and Cleo
- 00:47Pharmaceuticals.
- 00:49So he'll be talking 1st and then
- 00:51after that he will be followed by
- 00:54Mark Saltzman who is a professor
- 00:57of biomedical engineering,
- 00:58CMP and chemical engineering
- 01:02and and then also we will have a
- 01:04Naftali Kaminski who is a professor
- 01:07of medicine and and and and.
- 01:11A member at Beringer Ingelheim
- 01:14Pharmaceuticals. All right.
- 01:16So I'll go ahead and turn it over to you.
- 01:18Thanks so much. Really appreciate it.
- 01:19I just I think the the format is
- 01:21going to be that I'm going to present
- 01:24some basic underlying principles and
- 01:26practices of how Yale interacts with
- 01:28the commercial community as partners.
- 01:30And then we're going to have a sort
- 01:33of open session of discussion with
- 01:35the with with Mark and Natalie.
- 01:37I don't think they're presenting.
- 01:39So to that end just very briefly.
- 01:42My background is perfect for
- 01:44business development and biotech.
- 01:46I have a PhD in cell biology from from Yale.
- 01:50And I went to industry briefly
- 01:53maybe 70 years,
- 01:54got the bug for the commercial
- 01:56side of science.
- 01:57And so that's what I bring back to
- 01:59Yale as do many of my colleagues who
- 02:01work in the in the business office.
- 02:04So we're, we're.
- 02:07Interested in science,
- 02:08but we're passionate about getting
- 02:09it out into the world.
- 02:11And so that's really what this is about.
- 02:12Today is an alternate way in which
- 02:16Yale takes the information it creates
- 02:19and disseminates it into somewhat
- 02:21tangible way out into the community.
- 02:27No, it had been working a moment ago.
- 02:32OK. So very briefly.
- 02:35I'm going to cover a few things.
- 02:37A brief introduction to
- 02:38you about Yale Ventures,
- 02:40which is a which I'll talk about a moment,
- 02:43how Yale harmonizes the needs of an
- 02:46academic environment and an academic
- 02:48mission with that of a commercial mission.
- 02:50You know some basic concepts about what
- 02:53is a patent because that's the primary
- 02:56asset that's transacted upon when we
- 02:59are transitioning from an academic
- 03:01research model to one where we're.
- 03:05Reducing it to something of
- 03:08commercial value or for value
- 03:10patients or or the community at large.
- 03:13Not all our technologies are are biomedical,
- 03:15but I'll focus on that.
- 03:17I'm also going to tell you a little
- 03:19bit about what a license is.
- 03:20A license is a very broad term,
- 03:22but it's very important to understand
- 03:25the interplay between the intellectual
- 03:27property and the permissions that are
- 03:29granted by a license to our partners.
- 03:32And those licenses come in many
- 03:34forms as you'll see.
- 03:35Some basic concepts on our practices
- 03:38and and and how we go about reconciling
- 03:41the potential tensions between a
- 03:43commercial and non commercial entity.
- 03:46A brief discussion of Yales investment
- 03:48and translational support and then
- 03:50time permitting some case studies
- 03:52just to give you a feel for the time
- 03:55and and effort and the sort of pieces
- 03:57that have to come together in order
- 03:59to actually take something from the
- 04:01bench into a commercial setting.
- 04:03So that's why I'm hoping to convey
- 04:04to you today.
- 04:09So. Yale ventures.
- 04:13Is a new formulation of reorganization of
- 04:18the entrepreneurial environment at Yale.
- 04:20It's designed to put under one
- 04:24umbrella led by Josh Kimball,
- 04:26sort of the entrepreneurial energy
- 04:28of the institution and to to take
- 04:31advantage of the overlaps and synergies,
- 04:33but also to make sure that the things
- 04:36that we learn and the successes we
- 04:38have are shared across the university.
- 04:40So everybody can benefit from
- 04:42those those those practices.
- 04:44And then those successes
- 04:45where where they happened.
- 04:46And actually the failures are
- 04:48actually kind of interesting too.
- 04:50So a little bit more.
- 04:52Particular component of Yale
- 04:54Ventures that that I'm a part of,
- 04:55which is the business development and
- 04:58licensing and IT management component.
- 05:00This is a critical unit for protecting
- 05:03the intellectual property and
- 05:05positioning it for partnership.
- 05:07And I'll talk a little bit about what
- 05:09that means and how that fits into the
- 05:11to the overall strategy of of getting.
- 05:13Yale Innovation or Yale Solutions
- 05:16out into the world in a manner
- 05:20that's beyond the academic channels.
- 05:23And so this group has about 25 people in it.
- 05:26There's 676 or seven of us who are
- 05:30business development professionals who
- 05:32come have come back to the academic
- 05:35world after being out in commercial setting.
- 05:38And we,
- 05:39we bring our scientific knowledge
- 05:41and experience to partner with your
- 05:43expertise and deep knowledge of your domains.
- 05:46And that's sort of the first take
- 05:47away here is that none of this
- 05:49works without partnership.
- 05:50We bring a component, you bring a component.
- 05:53None of us in the business development
- 05:55group are ever going to be the world's
- 05:57expert in your area of expertise,
- 05:59but that expertise is what is bringing
- 06:02commercial partners to Yale looking to
- 06:05access our solutions and that's where
- 06:07we come in to help with that transition.
- 06:10And to that end,
- 06:11Yale invests in that intellectual property
- 06:13through the people in the office and
- 06:15also through the protection of Pat's
- 06:18of intellectual property through patenting.
- 06:20But that's not the only form of intellectual
- 06:24property that comes out of Yale.
- 06:26I've got here a slide that sort of
- 06:29lists and illustrates the different
- 06:31kinds of intellectual property that
- 06:34gets transacted upon that originates from.
- 06:37The university,
- 06:37you know,
- 06:38haven't bowled the ones that are
- 06:40the most commonly transacted upon.
- 06:42But it's very important to note
- 06:43there are other types of intellectual
- 06:45property that get generated now.
- 06:46The one that's in Gray is trade secrets,
- 06:49and that's sort of the first point
- 06:51of difference between an academic
- 06:52institution and a commercial entity.
- 06:54Yale does not have trade secrets.
- 06:57That's fundamentally anathema to
- 06:58the mission of the university.
- 07:00We are in the business of
- 07:02disseminating knowledge.
- 07:03Companies retain certain competitive
- 07:06advantages by not disclosing.
- 07:09And so one of the things we have
- 07:11to do is reconcile that fundamental
- 07:13difference in philosophy.
- 07:14And we do that through our agreements
- 07:16where we have confidentiality provisions
- 07:18or or we don't take in information that
- 07:21we cannot guarantee that we can protect.
- 07:24And trade secrets have a whole set of
- 07:26laws associated with them that are
- 07:28distinct from the contract law that's
- 07:30associated with confidentiality.
- 07:31And I won't go into that.
- 07:33But the main take away is that there there
- 07:36is a variety of intellectual property
- 07:38coming from the institution that has.
- 07:41Value in many different ways.
- 07:45So I'm going to take a little bit of time.
- 07:48To discuss trademarks.
- 07:49Not because it's something we do a lot of,
- 07:52but because it's a nice way to
- 07:55summarize intellectual property
- 07:57and the concepts of ownership,
- 07:59and to put it into relatable put
- 08:02intellectual property into relatable terms.
- 08:09So you you've all seen The North Face logo?
- 08:13It's highly recognizable.
- 08:15It has value because when you see it,
- 08:18it tells you about a
- 08:20product and its qualities.
- 08:22It reminds you of an experience
- 08:24that you may have had that was made
- 08:26possible by those clothings you've gone
- 08:28skiing or hiking or whatever it was.
- 08:30That logo has meaning and there's
- 08:33a phrase that N North face has
- 08:35which is never stop exploring.
- 08:37And so this paired piece of
- 08:40intellectual property has value
- 08:41because it's associated with the.
- 08:43Product that also is perceived to have value.
- 08:48So. A trademark, then,
- 08:49is a symbol or a word or a combination
- 08:54of things that distinguish one
- 08:56company's products from all other
- 08:58products out in the market.
- 08:59And it has a value now.
- 09:03You'll hear the term infringement
- 09:05quite a bit when thinking about
- 09:08what intellectual property you
- 09:09may read things in the news about
- 09:12patent fights and all that,
- 09:13but it's about infringement,
- 09:15and you can think of infringement.
- 09:17In the case of of trademarks and other
- 09:21forms of intellectual property as a trespass,
- 09:24right?
- 09:25So if you think about that North Face logo.
- 09:27As an acre of land that's owned
- 09:30and controlled by North Face,
- 09:32if one abuses that in some way.
- 09:34It's a trespass onto that acre.
- 09:38That is owned and controlled by Northwest,
- 09:40and so an infringement. Is a trespass.
- 09:44And if you trespass, there are consequences.
- 09:50So this is a an example
- 09:52of such an infringement.
- 09:54There was a pair of of.
- 10:01The family that started a little
- 10:03company called the South **** and
- 10:05they took the logo, they inverted it
- 10:07and they said never stop relaxing.
- 10:09And so north face perceived this as
- 10:11a trespass and took them to court
- 10:12essentially said you got to stop doing this.
- 10:14You're infringing because you're
- 10:16it's it's more than a satire.
- 10:18You're selling a product similar
- 10:19to what we sell with in this case
- 10:21T-shirts or whatever it was.
- 10:22And so there's this likelihood
- 10:25of confusion concept and so the
- 10:28the people behind this.
- 10:30Where?
- 10:33Named the Winkleman father and
- 10:34son and there was a mediated
- 10:37settlement around April 1st of
- 10:392011 and and in that settlement
- 10:41the the Winkelmann family said OK
- 10:43we'll we'll stop selling these
- 10:44products and we'll stop infringing.
- 10:46We'll stop trespassing on your
- 10:47acre of North Face.
- 10:52Shortly thereafter, they founded a
- 10:54company called the **** Face, and this
- 10:57time North Face was less accommodating.
- 11:00And the consequences of the trespass were
- 11:03that they had to pay expenses and fees,
- 11:06they had to give up their merchandise,
- 11:07and there was a consequence of monetary
- 11:10consequence associated with the value or
- 11:12the of the damages caused by the trespass.
- 11:14So the important part of this.
- 11:16Vignette is when you think
- 11:18about intellectual property,
- 11:20you need to hopefully think
- 11:21about it as real estate,
- 11:22and if you can keep that frame of mind.
- 11:25Then it becomes much easier to understand
- 11:27what rights are being granted with patents
- 11:29or other forms of intellectual property.
- 11:32And subsequently,
- 11:33when one thinks about components of
- 11:36protections of intellectual property,
- 11:37you can think of that as fences
- 11:39around that acre licenses as gates,
- 11:41and the rights granted as
- 11:42the paths within that acre.
- 11:46OK. So what kind of acres
- 11:48do we have at Yale now?
- 11:50What do we typically see as
- 11:52forms of intellectual property?
- 11:54I'm not going to read you this list.
- 11:55We see all sorts of things.
- 11:57And so as I said earlier,
- 11:59the people in the business development group
- 12:01are not experts in any of these fields.
- 12:04And but where our talents lie is
- 12:06being able to partner and bring
- 12:08together the pieces necessary to get
- 12:11these solutions out into the world.
- 12:13And to do that,
- 12:15we typically protect those
- 12:17solutions by filing patents.
- 12:24So patents, what are they?
- 12:28And why do we protect them?
- 12:29Why do we protect intellectual property?
- 12:31And how do we balance the commercial
- 12:33needs of partners with the academic needs?
- 12:35And so the way we do this
- 12:37and why we do this is to.
- 12:39Protect our partners who are going to
- 12:42take financial risks and time related
- 12:44risks and resource related risks to
- 12:46take a Yale piece of intellectual
- 12:49property and add value to it.
- 12:51Make it useful to a consumer.
- 12:55Now to do that we also have
- 12:57to balance our own concerns,
- 12:59which are that we don't restrict rights
- 13:02for further research and where possible,
- 13:05we promote the access to
- 13:08essential technologies.
- 13:09So it still begs the question,
- 13:11what is a patent?
- 13:14So patent. Is a constitutionally
- 13:18granted monopoly.
- 13:20And this is important because ultimately
- 13:23the laws governing intellectual property
- 13:26are adjudicated by the Supreme Court
- 13:28because it is a constitutional right.
- 13:31And. That right is a monopoly
- 13:35granted to an inventor.
- 13:37To take advantage of their
- 13:39creativity for a period of time.
- 13:41But there's an exchange in
- 13:44order to get that right.
- 13:46You have to teach the
- 13:48community your invention,
- 13:49and the idea is that if you teach
- 13:52everybody how to do your invention.
- 13:54And you show that your acre has value.
- 13:57People are going to want to find ways
- 14:00to access that value and they either do
- 14:03it through contractual relationships
- 14:04or they will try to innovate around it.
- 14:07Work OK.
- 14:09And that's the idea that that
- 14:11intellectual property drives innovation,
- 14:12once that intellectual property
- 14:14has been shown to have value.
- 14:16And it's that value that attracts
- 14:19our partners.
- 14:20And the other important thing
- 14:21to keep in mind,
- 14:21and again thinking about
- 14:23real estate and property,
- 14:24is that it's a negative right.
- 14:26That means you have the right
- 14:28to exclude people from your
- 14:30intellectual property space.
- 14:32If they come in without permission,
- 14:34that's again infringement.
- 14:36That's a trespass on your acre.
- 14:39And the other important thing in mind
- 14:41is just because you have a patent
- 14:43and you have this control over the
- 14:45acre doesn't mean you necessarily can
- 14:47do everything claimed by that patent.
- 14:49There are regulatory barriers
- 14:50and also it's possible that there
- 14:52are people who have intellectual
- 14:54property that surround your
- 14:55own intellectual property,
- 14:57and you can't access your acre without
- 14:59entering a relationship with those
- 15:00who own the intellectual property
- 15:02or the acreage around your own acre.
- 15:03And that's what drives business
- 15:06solutions to these kinds of
- 15:08overlapping or complementary
- 15:10pieces of intellectual property.
- 15:14So far so good. Any questions?
- 15:17I do not have a real estate
- 15:19license, by the way.
- 15:22So what's patentable?
- 15:25It's a list of things
- 15:26here. Most commonly,
- 15:27the types of things that that Yale files
- 15:31patents upon are compositions of matter.
- 15:34And methods of use of matter.
- 15:36And it's listed there as machines,
- 15:38but that includes devices,
- 15:39things that one might be able to
- 15:41describe or teach through engineering
- 15:43drawings or showing prototypes
- 15:45or beta versions of things.
- 15:46And the other important piece is that
- 15:49sometimes it's an improvement of something.
- 15:52That's non obvious based on what preceded it.
- 16:01OK, so. Patentability.
- 16:04What doesn't innovation have to have?
- 16:06What qualities does an innovation have
- 16:08to have in order to be patentable?
- 16:11It has to be novel,
- 16:12useful and non obvious,
- 16:14and non obviousness is the
- 16:15least obvious of those things.
- 16:17And the only way that I found to sort
- 16:19of illustrate that idea is to say if
- 16:21I were to give each of you 10 papers
- 16:23to read and you go into 10 separate rooms.
- 16:28Alone, I don't have any of you
- 16:30are here and you sitting there.
- 16:32You read all these papers,
- 16:33and nine of you come out with the same idea.
- 16:36It's obvious because those of you,
- 16:38you're all peers,
- 16:38you're all trained the same way,
- 16:40you all have the same background,
- 16:41and you all come to the same conclusion.
- 16:43That's obvious.
- 16:44But one of you comes out with something else.
- 16:48That's something else is not
- 16:50obvious because nine of your peer,
- 16:52that person's peers,
- 16:53came up with the same idea.
- 16:55And that's the concept of invention.
- 16:56Invention is about conception,
- 16:58the recognition that there is something
- 17:01different and a unique view of what is known.
- 17:04And what is known are
- 17:06papers in the literature,
- 17:08other people's intellectual property,
- 17:09patents,
- 17:10products,
- 17:10problems that are well known.
- 17:15So in order to get a patent.
- 17:17Allowed issue to you.
- 17:18It has to be something that's novel,
- 17:20useful and non obvious.
- 17:21And I'll talk to you a little
- 17:23bit about how you how things
- 17:25get rendered non obvious and how
- 17:27that again creates a conflict,
- 17:29the tension between the
- 17:31commercial and the academic.
- 17:32The other important thing
- 17:33is you have to have it. OK.
- 17:36And that having of it is is sort
- 17:39of manifested in your ability to
- 17:41teach others who are your peers,
- 17:43meaning those having the same knowledge base?
- 17:47How to do your invention?
- 17:50And showing that you actually have
- 17:52possessed it and done the things that
- 17:55you claim it has the value to do.
- 17:58So then the problem is.
- 18:01We've talked about what we've talked
- 18:02about sort of philosophically,
- 18:03what's obvious and what's not obvious.
- 18:05Well, there are many ways in
- 18:08which obviousness is proven.
- 18:09And so if somebody, if, if somebody,
- 18:11if, if somebody comes out of the
- 18:1310 of you with this new idea,
- 18:16but there's an 11th person.
- 18:19Who wrote some different paper that you
- 18:21didn't read and it describes your invention.
- 18:24As the 10th.
- 18:25Well, at that moment, it's no longer.
- 18:29Not obvious.
- 18:30It's obvious because somebody
- 18:32else read the same papers.
- 18:34And came up with the same idea.
- 18:35Or somebody posted something on a web page,
- 18:37or or gave a talk,
- 18:39or it's in an abstract,
- 18:40or you've done it to yourself.
- 18:42Because you've posted something and prior
- 18:44to protecting the intellectual property.
- 18:46I'll come to that process shortly.
- 18:51So that's called prior art.
- 18:52That which is already known to
- 18:54people who are experts in that
- 18:56art and the term art here is a
- 18:58sort of a technological space.
- 19:03So the picture you see there is a
- 19:08drawing from a patent application.
- 19:11For an invention that was developed in
- 19:15order to move a submerged object by
- 19:18deploying a plethora of buoyant spheres.
- 19:22And the idea was that if you stick those
- 19:24spheres into the submerged object,
- 19:25it's going to move that object.
- 19:27And then a diver or someone
- 19:28can come get that you know,
- 19:30get into that submerged object and
- 19:32access treasure or remove items and
- 19:34salvage or whatever the case may be.
- 19:36Now this patent was never issued
- 19:38and the reason it was not issued
- 19:41is that there was prior art.
- 19:42And the prior art was rather surprising.
- 19:46Turns out the prior art was in 1930s.
- 19:48Cartoon of Donald Duck deploying a
- 19:52plethora of buoyant spheres into a
- 19:54submerged object for the purpose
- 19:57of accessing treasure.
- 19:58And therefore it rendered the invention
- 20:01described on the left obvious in light
- 20:04of the existence of the idea on them.
- 20:06On the right.
- 20:09Now the lesson here the the not the lesson,
- 20:12but the the important concept here is.
- 20:16And that the practical distillation of
- 20:18that is in order to avoid prior art,
- 20:20at least your own.
- 20:21You need to talk to us as soon as
- 20:24possible or as soon as reasonable when
- 20:26you start to think you have something,
- 20:28because we do not want to impede the
- 20:31primary mission of the university,
- 20:33which is dissemination of
- 20:34knowledge through publication.
- 20:36But we want to give you the opportunity
- 20:38to protect it if there's something there,
- 20:41the potential commercial value,
- 20:42or if your ambitions are to take
- 20:45your academic ideas and reduce
- 20:47them to something practical.
- 20:49Or at least practical to the general public.
- 20:53So it's really important to us that you speak
- 20:55with us and we may tell you it's too early.
- 20:57You'll hear that a lot unfortunately,
- 20:59but part of the conversation will be,
- 21:02well, you know,
- 21:03we've seen some things like that,
- 21:04but that this seems to be a new solution.
- 21:06And you know,
- 21:07when we've spoken to people who are
- 21:09interested in these kinds of products,
- 21:10they generally want to know the following.
- 21:13And you may be doing those experiments.
- 21:16And so that we begin to be able
- 21:18to triangulate on an intellectual
- 21:20property strategy that's harmonized
- 21:22with the imperative to publish.
- 21:24Because at the end of the day,
- 21:25that's the number one activity of the
- 21:28institution and you won't hear from me.
- 21:30Don't publish,
- 21:31I will tell you
- 21:32if you publish them.
- 21:35Right then you you make your choices.
- 21:37OK. OK, so that's prior art and then
- 21:42again prior art that that we generate
- 21:45institutionally includes things
- 21:47you post on the website abstracts,
- 21:49you submit grant abstracts that
- 21:52get published for example.
- 21:54There are many different ways in
- 21:57which our own normal activities
- 21:59can be used to challenge the non
- 22:03obviousness of our own innovations.
- 22:06I basically want to take a few moments
- 22:07to kind of give you a sense of the
- 22:09amount of investment just in a pure
- 22:11monetary and time way related to the
- 22:14protection of intellectual property.
- 22:16This next slide.
- 22:19So it's, I mean,
- 22:20I think everybody here has been
- 22:22through some kind of a thesis
- 22:23defense or I think everybody's
- 22:25faculty or or above or postdocs.
- 22:27This is essentially a thesis defense
- 22:29that is protracted and expensive
- 22:31and frustrating in its own way.
- 22:36It takes time, it takes money,
- 22:37and it takes effort.
- 22:39And there's really no guaranteed outcome.
- 22:41And you don't have a committee
- 22:43telling you yes if you do this then.
- 22:45You have to deal with examiners who
- 22:48look at your patent application and
- 22:51decide as individuals whether it's
- 22:54obvious whether it's novel or useful.
- 22:57And then it's a debate,
- 22:59negotiation, an argument, a trial,
- 23:04with examiners at the patent
- 23:06offices to convince them that you
- 23:08are entitled to build a fence of a
- 23:10certain dimension around your acre,
- 23:12and you may have come in there looking for.
- 23:15Yellowstone park.
- 23:16You might leave with these truck park, right?
- 23:21And it's a negotiation, but you,
- 23:24you know, if a patent issues,
- 23:26there'll be a defined fence
- 23:28around that intellectual property.
- 23:29So this process starts out relatively
- 23:32inexpensively in terms of dollars,
- 23:35although it can be expensive
- 23:37in terms of expectations.
- 23:39And so part of what our job in
- 23:40our office is to say to you,
- 23:42look, we're going to get started,
- 23:43but there are lots of ways you're
- 23:44not going to get Yellowstone.
- 23:48Meaning that. We're going to ask for a lot,
- 23:51but we are going to expect that to
- 23:54be narrowed and we will only get
- 23:56that which we could demonstrate.
- 23:58Fits the criteria of patentability
- 24:00and this process is protracted.
- 24:02It typically takes three to
- 24:04four years for a first patent
- 24:05to issue in a family of patents.
- 24:07And then there are a series of
- 24:09things that happen along the
- 24:11way for continuing prosecution.
- 24:12And if we're going to prosecute
- 24:14it in the US only,
- 24:15it's going to have one level of
- 24:16expense if we're going to prosecute
- 24:18outside of the US in addition,
- 24:20it has additional expenses and
- 24:22those decisions are commercial
- 24:24in nature because ultimately.
- 24:26The purpose of patenting is commercial.
- 24:29There's no other reason to patent.
- 24:30It's not a publication.
- 24:35The sole purpose of the patent is to keep
- 24:37people out of your intellectual property
- 24:39space so that you have a period of time
- 24:42protected in order to make investment,
- 24:44or have your partners make investment
- 24:46in order to bring something to market.
- 24:49And the value of the patent
- 24:51only manifests well,
- 24:52the value of had manifests in that it's
- 24:55it's stakes out your acre so people don't
- 24:57come into it or are disinclined to trespass.
- 25:00Or you bring a product to market that's
- 25:02claimed or covered by that patent and then
- 25:04you can go after someone for infringement.
- 25:07That can only happen after the patent issues
- 25:09and the product is sold by somebody else.
- 25:13So the take away here is it's a long,
- 25:15drawn out process.
- 25:16It's a big investment,
- 25:17can be hundreds of thousands of dollars.
- 25:20By the time it's all said and done,
- 25:21there has to be a pretty good
- 25:23commercial reason to do it.
- 25:26Now we will take risks because usually the
- 25:30research is far ahead of where the market is.
- 25:33So it's a balancing act to pick things,
- 25:37lay out a strategy.
- 25:40Maintain options,
- 25:40but not do so in a Willy nilly way.
- 25:44There has to be a more than just
- 25:45an intellectual property strategy.
- 25:47There has to be a funding strategy,
- 25:48a partnering strategy that has to be
- 25:51a definable product or at least a a
- 25:54rational product concept to justify this
- 25:56because all these pieces have to come
- 25:58together in either in the hands of a
- 26:00partner that we license to or partner
- 26:01who's going to spin out a company.
- 26:08Yes, what percent of what percent of
- 26:10disclosures come to you and don't
- 26:12amount to patent or don't amount
- 26:14to anything further than that?
- 26:18The inputs are about 250 disclosures a year,
- 26:22so people who come to us and
- 26:24say I think I have something.
- 26:25And then that gets whittled down
- 26:27through this whole process of
- 26:29assessing its commercial potential.
- 26:31We might file patent applications this first
- 26:34step in the process on maybe 150 of them.
- 26:40And then of those probably 120
- 26:42might get converted to what's
- 26:44called the non provisional where
- 26:46we're stepping up our investment.
- 26:48Of those, I think that probably.
- 26:5510 to 15% actually become partnered licensed.
- 26:59Somebody says, OK, we think you're right,
- 27:00you have something here,
- 27:01we need it, we want it.
- 27:03And that might happen through through
- 27:05a license or a new venture might
- 27:07even be a lower percentage than that.
- 27:10And of those of those 10 or 15%
- 27:13that actually get partnered?
- 27:15Those that actually end up being a
- 27:17product being protected by those
- 27:18patents is probably less than 1%.
- 27:22But part of the value, yeah.
- 27:23So Michael Singer was here yesterday
- 27:26and he was asking me what we're doing
- 27:28to advise our junior faculty on.
- 27:34Sorry, most of our audience is on zoom.
- 27:36So Michael Singer yesterday
- 27:36was here and he was asking
- 27:38me what we're doing to ensure
- 27:40that our junior faculty know whether
- 27:42they have something as patentable.
- 27:43So you've established these principles here,
- 27:46but what would be the advice that
- 27:47you'd give to someone who's working
- 27:48in the laboratory about what are
- 27:50the principles that you think they
- 27:52should be thinking about as they are
- 27:54considering whether their discovery
- 27:56is is worth engaging in a disclosure?
- 27:59Yeah, it's an interesting question.
- 28:02It's, it's a conversation which
- 28:03I alluded to earlier.
- 28:07And the. Whether something is
- 28:09worth packing on, it's kind of a an
- 28:12overlapping series of of assessments
- 28:13about what's already out there.
- 28:17Is what's being proposed.
- 28:23Sufficiently novel to overcome what's known.
- 28:26Having overcome it, is there a?
- 28:29Desire or an anticipated desire or
- 28:32conceivable desire that someone might
- 28:34want to purchase something based
- 28:35upon that innovation and that's that
- 28:37becomes a lot of guessing because
- 28:39that that opportunity to purchase
- 28:41and what that product looks like
- 28:44is typically 5 or 10 years out.
- 28:46In most cases.
- 28:48From the time we hear about things.
- 28:51So the advice?
- 28:54Really is to kind of.
- 28:58The opportunistic in the sense
- 28:59of like a Venus Flytrap,
- 29:00you're going to do what you're going to do,
- 29:02right? And. Something.
- 29:04Might be of that something might
- 29:08trigger that hair on the Venus Flytrap, but.
- 29:13You can't really bake that,
- 29:15you know. You know.
- 29:16You can't really sort of know you
- 29:17have that until you've had the conversation.
- 29:19Have a sense of of.
- 29:21Who else, besides your academic colleagues,
- 29:24care about that space?
- 29:26And if they care about,
- 29:28why do they care about it?
- 29:31It's a it's a hard it's a hard question
- 29:34to answer I guess the short answer is just
- 29:37talk to us you know we will if there's.
- 29:40Yeah, it's really you need to talk
- 29:42to us and and and and educate us
- 29:44about what you're doing as much as
- 29:46us trying to say OK well great.
- 29:49You know what is a product look like?
- 29:51What's the solution sometimes
- 29:53the question is? Great.
- 29:55You know, you've you've treated a
- 29:57cell or you've treated a mouth,
- 29:59an embryo and a mouse.
- 30:00What's the clinical trial look like?
- 30:02Are you going to dose pregnant women?
- 30:05But it just may be fundamentally
- 30:07you still have something else to
- 30:10overcome with the technology in order.
- 30:13To have it be viable in commercial setting.
- 30:17Does that answer your question?
- 30:18I know it's kind of neither here nor there,
- 30:20but it's it's a.
- 30:23Yeah, I mean I guess that the IT
- 30:25really raises the question of whether
- 30:27we need to have some sort of formal
- 30:29evaluation process in the course
- 30:31of mentoring rising faculty where
- 30:33where we ask the simple question and
- 30:35and you know I think we haven't,
- 30:37we haven't at Yale classically been
- 30:39asking the question of whether there's
- 30:41something that can be commercialized
- 30:42from the research that's been that's
- 30:44been done in our mentoring structures.
- 30:47So it's just an observation I'm assuming
- 30:49you play a mentoring role and and so I would.
- 30:52Encourage you to have those you mentor,
- 30:55you know.
- 30:56Come to these events.
- 30:58Come to Pitch Fest,
- 30:59which is going to be on December 8th.
- 31:01I'll tell you about that later,
- 31:02where faculty are going to be
- 31:05pitching ideas that are.
- 31:07Have commercial prospects.
- 31:09That are going to be then assessed
- 31:12by venture capital in a live audience
- 31:15and you get a sense of what that back
- 31:17and forth is between an innovator
- 31:19and an investor or an innovator
- 31:21and a partner and so.
- 31:25Some of this is self selection.
- 31:26If someone says no,
- 31:27I've got to really focus on the,
- 31:29you know,
- 31:30XYZ stage of career and that's what
- 31:32they want to do.
- 31:32Great.
- 31:33And then there are some who may feel
- 31:36that there's value in in in doing
- 31:38both for their career as well As for.
- 31:41Demonstration of the utility
- 31:42of what they're doing.
- 31:46Yeah. So as a panelist, I'll say that.
- 31:49One of the reasons we are completely
- 31:52underperforming in this area is
- 31:54because we leave it to the grassroots.
- 31:56Believe it to the grassroots that
- 31:59it's the responsibility of the
- 32:01early career or the late career.
- 32:03Because I bet you we have more than
- 32:06250 professional patents just to
- 32:08the School of Medicine per year.
- 32:11And I bet you that we have more
- 32:13than 10 that our commercializable.
- 32:15But we have never done the systemic
- 32:17approach which actually going
- 32:18to departments doing retreats.
- 32:21And actually looking at what
- 32:24is actually actionable.
- 32:26As somebody who, at least his career,
- 32:28didn't battered.
- 32:29And potentially law actually caused.
- 32:32Our field the delay in development
- 32:34because something that wouldn't people
- 32:36would have if they were protected
- 32:38people would have commercialized it.
- 32:40Because they were not protected,
- 32:41they never went into clinical practice.
- 32:44I think we're missing something
- 32:45by throwing it out to investigate.
- 32:48And I think that our approach
- 32:50should be completely opposite.
- 32:51Instead of the investigator coming to you,
- 32:54you're coming to the investigators.
- 32:56And to the to the department.
- 33:00And. Doing this venture retreat,
- 33:03I I completely agree.
- 33:04I went to the pharmacology retreat.
- 33:06I looked at the posters,
- 33:08many of whom are people I work with,
- 33:09but also I encountered a
- 33:12spectacularly interesting poster
- 33:14on insect fructose receptors.
- 33:16And I met with that faculty member.
- 33:18And, you know, so we do that.
- 33:20But, you know,
- 33:21there are a finite number of us,
- 33:23and there's a limit to the
- 33:25degree that we can, you know,
- 33:26go to every faculty member.
- 33:27So it's a balance between
- 33:30being invited to the retreat.
- 33:32And being invited to these events
- 33:35and and encouraging senior faculty
- 33:37to encourage their mentees,
- 33:38as was proposed to,
- 33:40to look at what they're doing
- 33:43through an unfamiliar lens
- 33:45until it becomes familiar.
- 33:53All right.
- 33:581.
- 34:01Does.
- 34:10Going to solve that.
- 34:13So part of the process today
- 34:15is to educate researchers on
- 34:17patentability and what is patent,
- 34:19what's an inventor and and about the process.
- 34:21So hopefully referring to
- 34:24the query in the chat,
- 34:26this is laying that groundwork.
- 34:32One of the very important point I
- 34:34want to make is that inventorship is
- 34:38distinct and separate from authorship.
- 34:40Inventorship is a legal concept.
- 34:44It's a matter of law,
- 34:45and if you get it wrong.
- 34:47It can have negative impacts
- 34:49on the intellectual property,
- 34:50either by leaving if you've left
- 34:51someone off or you've put someone on,
- 34:53you shouldn't be.
- 34:54And fortunately for me,
- 34:56I don't have to make that call.
- 34:57We have lawyers who interview
- 34:59inventors and tell us, OK,
- 35:00these people have made a contribution
- 35:03that rises to the level of Inventorship,
- 35:06and I'll leave it at that because
- 35:09I want to make sure we have enough
- 35:11time to have the panel. So.
- 35:15Just to finish up on the on the.
- 35:24Pats themselves are are. Formalized
- 35:27documents that have key components.
- 35:30This patent here describes and claims
- 35:32and was issued to protect an invention
- 35:35to prevent the second shark bite.
- 35:40And even though this patent is
- 35:42ridiculous and no product ever got
- 35:44to market based on this second
- 35:46shark bite prevention technique.
- 35:49It has all the components that any
- 35:51patent would have for a cure for cancer.
- 35:54Or cure for any other disease or a
- 35:56medical device, or whatever it may be.
- 35:59But the important part of the patent,
- 36:02the business end of the patent.
- 36:04Is defense created by the claims?
- 36:08The claims are the fence around your acre.
- 36:11And unless someone trespasses into your
- 36:14acre by crossing that claim boundary.
- 36:18They are not infringing,
- 36:19they are not trespass and so the
- 36:22argument that whole multi year exercise.
- 36:24With the examiner is to make sure
- 36:27try to get that fence as far out from
- 36:30the center of your acre as possible.
- 36:35So now I want to briefly speak
- 36:37about licenses, which are you
- 36:39can think about as the the gates.
- 36:42Into that acre and within the licenses
- 36:44are the terms that define the path that
- 36:47a person can walk within that acre.
- 36:52OK, so licenses are?
- 36:56Formalized documents usually,
- 36:58but not always. Has anyone here
- 37:00ever signed a license themselves?
- 37:04All of you have every one of you,
- 37:06multiple times.
- 37:07Every time you click agree on
- 37:09your Apple or Samsung update,
- 37:11you're signing a license when
- 37:13you receive a grant.
- 37:15You're signing a contract.
- 37:19So you encounter them all the time.
- 37:21They come in different forms,
- 37:22but fundamentally their permission.
- 37:25And that permission.
- 37:26It is frequently preceded by
- 37:28a vast amount of negotiation
- 37:30because the parties are trying
- 37:33to define both the value of your
- 37:35acre and the degree to which.
- 37:38It can be wandered through.
- 37:41And what are the rules
- 37:42for staying on the path?
- 37:46And so the. The license itself is a
- 37:50story that brings these pieces together.
- 37:54It describes the intellectual
- 37:56property and the parties.
- 37:58It has the beginning. It has an end.
- 38:02It has drama in the sense of
- 38:04milestones need to be achieved or not,
- 38:07in which case the thing might get terminated.
- 38:10There's diligence.
- 38:11You have to perform.
- 38:12The character has to achieve its goals.
- 38:14Hit its quest right.
- 38:18If there's success, it gets shared.
- 38:25And eventually it ends. And it's ended.
- 38:29It ends typically when the patent life ends.
- 38:31And at the very beginning I told you
- 38:33that a patent grants or intellectual
- 38:34property has a monopoly function,
- 38:36but that monopoly function has an end.
- 38:39And that's the end.
- 38:41That can end because someone
- 38:42violated the terms of the agreement,
- 38:44or it can end because the patent expires.
- 38:46Or it can end because it
- 38:48wasn't a product after all,
- 38:49and it's not worth any further.
- 38:51But it's a story.
- 38:52The license is a story.
- 38:53The pieces fit together.
- 38:58And it describes whether or not you
- 39:01can enter that gate, walk down a path,
- 39:04and you're only permitted to go to the
- 39:06far left corner and have a picnic,
- 39:07or you're allowed to wander around the
- 39:09entire acre and do whatever you want.
- 39:11It just depends on how the value is
- 39:14perceived and what the rules are
- 39:16within that acre and what you get in
- 39:19exchange for granting those rights.
- 39:22So I'm going to summarize the whole
- 39:24preceding part of what I told you
- 39:25in this slide, which is a nice
- 39:27picture of some private property.
- 39:29There's no hunting, there's no trespassing.
- 39:30You can't go in, OK?
- 39:33And in the other case it's.
- 39:36A piece of property where someone says yes,
- 39:37you can come in.
- 39:38You got to stay on the path,
- 39:40you got to pick up your litter.
- 39:42You can't camp.
- 39:44Leave it as you found it.
- 39:47Whatever the rules may be,
- 39:47but this is essentially intellectual
- 39:49property and licensing in one slide.
- 39:52So if you can just think about the
- 39:54electric property and the licensing
- 39:55and the context of real estate,
- 39:57you're way ahead of the game.
- 39:59So what kind of licenses do you encounter
- 40:02in your careers and and in your activities?
- 40:05As academics?
- 40:06I already mentioned grants.
- 40:09You proposed to the federal government.
- 40:11A set of specific games.
- 40:14And you are given that award
- 40:18to do those things.
- 40:20You can't take that money and go
- 40:22do something completely different,
- 40:23right?
- 40:23That's why the office is sponsoring projects
- 40:26used to be called grants and contracts.
- 40:29The types of agreements that our office is
- 40:31involved if are confidentiality agreements,
- 40:33which is usually the first type of
- 40:35agreement in a relationship between
- 40:37US and the commercial entity.
- 40:39You do licenses,
- 40:40granting rights,
- 40:41sponsored research agreements or something
- 40:43that you are probably familiar with,
- 40:46collaboration agreements and
- 40:47material transfer agreements,
- 40:48and these are really important.
- 40:50Umm.
- 40:51Normally when I'm speaking to graduate
- 40:53students or postdocs or junior faculty
- 40:56who haven't been through this process.
- 40:58As much as you probably have.
- 41:01Material transfer agreements.
- 41:04Are high risk tended can
- 41:06be a high risk for partner?
- 41:09Pfizer is not going to give you their
- 41:11phase three compound that you put in.
- 41:12Your specific aim is essential
- 41:14for achieving those aims because
- 41:16they've put 5000 two hundred
- 41:18$300 million into something.
- 41:19So you should have a contingency
- 41:21plan because the process and the
- 41:23time associated with negotiating
- 41:24this material transfer agreements.
- 41:26It's protracted,
- 41:27it's protracted because the
- 41:29complexity and risk are requirement
- 41:32to protect our academic rights,
- 41:34but recognize the risks being
- 41:36taken to partner with and send
- 41:38you something they've invested in.
- 41:39And unfortunately,
- 41:40the only two people who do MTA's
- 41:43at Yale for the most part,
- 41:45and they do about four or 500A year.
- 41:47It just takes a lot of time.
- 41:49So contingencies are important.
- 41:51So actually,
- 41:52if you really want to ask them
- 41:54to hire more MTA people,
- 41:55really speed things up.
- 41:58And these pieces fit
- 41:59together very frequently,
- 42:00right, you know? I, you know,
- 42:03I have mercy on Don Wiggan.
- 42:05I'm sure you all know that name,
- 42:06because he's the guy, right?
- 42:09He's doing hundreds and hundreds
- 42:10and hundreds of these things.
- 42:13So, you know, just think about or advise
- 42:16your mentees about contingency planning
- 42:19if if there's a critical reagent.
- 42:22And also sometimes at the end of the day,
- 42:24it's cheaper to just have the stuff made.
- 42:26And to try and save the $5000 at the cost
- 42:29of 6 or 12 months to get it for free.
- 42:41So I've been saying this a
- 42:43bit early. Communication.
- 42:47Interacting with us it's
- 42:49critical for for success.
- 42:52I'm note as I said,
- 42:53none of us are experts in in
- 42:54your areas of expertise and what
- 42:56we're bringing to the table is
- 42:57a complementary set of skills.
- 43:01Umm. We license some things because
- 43:05the technology. Has a use but.
- 43:08It's not enough by itself to justify
- 43:11a whole venture, a whole new company.
- 43:15And then other times we do startups
- 43:18because it's something which.
- 43:19Is groundbreaking needs that kind
- 43:21of focus or has the ability to
- 43:24do more than a partner can do?
- 43:26It's beyond the its value and utility
- 43:29exceeds the needs and scope and
- 43:31capabilities and investment that
- 43:32a partner can bring for a single
- 43:35project using that technology.
- 43:40So in the process itself is iterative
- 43:44and we will go out with an idea and we
- 43:46will hear the same critique from 5 or
- 43:486 VC's and five or six biotechs and we
- 43:51will having done this together with you.
- 43:54You'll say, OK, alright,
- 43:55maybe next time I'm doing this
- 43:57experiment I can add this idea or try
- 44:00that and address this constant thorn
- 44:02in the commercialization side, right?
- 44:04You know, there are many people who have
- 44:07compounds that work fabulously in cells.
- 44:09But until you dose the mouse and show,
- 44:12it's orally bioavailable because
- 44:14all the other drugs on the market
- 44:17are orally bioavailable.
- 44:19It's not going to get the same
- 44:20attention and it's just a translational,
- 44:22sad truth.
- 44:23Because people are choosing where
- 44:25to risk their resources,
- 44:27they're going to risk them where we have
- 44:30mitigated that risk to a reasonable extent.
- 44:35And so to solve that problem
- 44:38to the degree that we can,
- 44:40Yale has a variety of resources to try
- 44:44and sort of bridge this translational
- 44:46barrier to answer the gating questions
- 44:49that we hear from potential partners.
- 44:53A wordy slide, you can ignore most
- 44:54of it other than the main bullets,
- 44:56which is we have the logic fund,
- 44:57which is a substantial fund over 20,
- 44:59I think $25 million that
- 45:02is dedicated to answering.
- 45:07Those gating questions?
- 45:09That may not be amenable meaning fundable.
- 45:13By federal government or or foundations.
- 45:19We encourage you to come to
- 45:21the Yale Innovation Summit.
- 45:22We have 1000 people show up,
- 45:24and if you may not be presenting something,
- 45:26you'll be meeting people and seeing
- 45:29how they are conveying their ideas
- 45:32in a commercial context. We have.
- 45:37Infrastructure for training.
- 45:38So if you have junior faculty who
- 45:41are interested in this process.
- 45:43Encourage you to to say, hey, you know,
- 45:46bring your ideas to us and and
- 45:48we'll see if we can find an advisor,
- 45:51such as an entrepreneur and residence.
- 45:52These are people who have a connection to
- 45:54Yale's desire to do something for Yale,
- 45:56to interact with faculty who are
- 45:59on the cutting edge and advise
- 46:02them based on the IR experience.
- 46:04But what do you need to know in
- 46:07order to move something forward?
- 46:10And I think this is probably my last slide,
- 46:14which is we have coming up on December 8th.
- 46:17The life Science pitch fest.
- 46:20It's going to be in the Alexion building.
- 46:22There'll be about 250 to 300 people there,
- 46:25the majority of whom are going to be
- 46:27from industry and venture capital.
- 46:29And the faculty presenters are
- 46:31listed on this website.
- 46:33You can get a sense of the types
- 46:35of projects that are going to be
- 46:37pitched and what's going to be mind
- 46:38boggling to you is they're going
- 46:40to take two decades worth of work.
- 46:43Compress it down to 5 minutes
- 46:45to the essential Nuggets.
- 46:47To get that first.
- 46:49Idea out there?
- 46:51In a clear and concise way to a
- 46:54commercial audience for the sole purpose
- 46:56of getting the 30 minute meeting.
- 46:59But they have to tell a story that's
- 47:02concise and focusing on the endpoint
- 47:04value that they're predicting exists.
- 47:07So I encourage you to come,
- 47:09I encourage you to encourage your mentees,
- 47:11students, postdocs to register
- 47:13and and get a feel for it.
- 47:15And frankly,
- 47:18it's rare that you might see a faculty
- 47:20member under 6 Extreme duress having
- 47:22to get everything down to five minutes
- 47:24and there might be some shut in Freud
- 47:26it with regard to your thesis defense,
- 47:28so.
- 47:28With that,
- 47:29I think we have about 1/2 hour 35
- 47:33minutes to have a panel discussion
- 47:35and thank you for your attention.
- 47:49So I guess we'll ask you guys to to
- 47:52come up and it's my understanding that
- 47:55you have free you could chat about
- 47:58your experiences. That's the idea.
- 48:02And then we'll take a few minutes
- 48:04for each of you to do that and
- 48:05then we'll open things up for
- 48:07questions. That sounds good.
- 48:12Mark, do you want to start?
- 48:15Fessor of chemical and biomedical
- 48:18engineering is this live?
- 48:20Is it working? Oh, it's
- 48:21on. It's not broadcasting here, right?
- 48:23It's just over there, right? Yeah. Used
- 48:27to hearing some feedback when I started.
- 48:30I'm a professor of chemical and
- 48:32biomedical engineering here.
- 48:33Been at Yale for 20 years,
- 48:36was a faculty member at Cornell and
- 48:38Johns Hopkins before I came here.
- 48:40So altogether been a faculty member
- 48:43for 35 years doing research mainly on
- 48:47developing new materials for drug delivery.
- 48:50So implants, coatings,
- 48:52but more recently nanoparticles that can
- 48:56deliver drugs in a sort of targeted that
- 48:58way and so to say a little bit about.
- 49:00The reason why I'm sitting here,
- 49:02I have a lot of experience from all those
- 49:05institutions with the technology transfer,
- 49:07with the with filing invention disclosures,
- 49:12working through the process of getting
- 49:14patents and and then trying to identify
- 49:17people who are going to carry those those
- 49:20those patents forward into real products.
- 49:23So today I I'm, I have three startup
- 49:28companies that I'm working on.
- 49:31The various stages,
- 49:31I'd be happy to talk about that
- 49:33and the differences between them.
- 49:35I have a number of collaborations with
- 49:38industry and including sponsored research
- 49:41from industry and have over the course
- 49:45of my career collaborated with industry,
- 49:47had them license patents and.
- 49:50Also as I mentioned,
- 49:52started a company so could
- 49:54talk at least about my
- 49:55experience in those spaces.
- 49:56And I'll just emphasize what Dave
- 49:59said that I've had a very fruitful
- 50:01interactions with what used to
- 50:03be OCR and now in Yale Ventures.
- 50:06My main contact there is John fuses
- 50:08and you should start having those
- 50:12conversations with people in Yale Ventures.
- 50:14Find out who your contact person
- 50:16will be when you have a license
- 50:18to and they will be very helpful.
- 50:24Yeah, I'm, I'm Natalie and I
- 50:26won't mention first that if you
- 50:28want to be invited to this forum
- 50:30you have to live in Westville.
- 50:32So we're neighbors, but just quickly.
- 50:37So I'm going to put on our physician
- 50:39by training do mostly my main research
- 50:42is broken after this is you may say
- 50:44that what I do is discovery science.
- 50:47So we profile a lot of stuff and
- 50:48then we come up with mechanistic
- 50:50apotheosis and we'll do the animal or.
- 50:53Soul culture
- 50:53experiments and and naturally this is very.
- 50:59Amenable basically, to patenting,
- 51:01because we find new things all
- 51:03the time and they're all Israel.
- 51:06You can also say that I'm a little bit
- 51:09of an accidental or reluctant adventure.
- 51:12I literally did not think
- 51:13that this was my job.
- 51:14When I started my career and
- 51:16over the years interacted,
- 51:18I was I trained in Israel.
- 51:21The Research Fellowship at UCSF.
- 51:24Then after going back to Israel was brought
- 51:28back to University of Pittsburgh and 10
- 51:31years ago to Yale and actually made several.
- 51:34One is key discoveries but also key ventures.
- 51:38And one of the interesting things
- 51:39that that's what I was referring to,
- 51:41one of my first discoveries
- 51:43was basically a biomarker.
- 51:45Oh, which is highly validated.
- 51:47But we didn't bother to even
- 51:49think of protecting it.
- 51:50It wasn't.
- 51:50It was a set of parameters so easily
- 51:53parted and we just didn't do it.
- 51:57And. That's why it's not available
- 51:59to patients today, right,
- 52:01because there's literally there's
- 52:02no been reason to commercialize it.
- 52:05So I think that's sort of my driver to
- 52:07have these discussions get involved.
- 52:08I Love Actually with all the
- 52:11other administrative office,
- 52:12I will say that OCR, Oh yeah,
- 52:14which is is the best.
- 52:17And and by far be parking.
- 52:22You definitely need contracts. And even,
- 52:26and I cook and I really like it. So
- 52:28definitely this is a this is
- 52:30a group that's really nice to
- 52:31interact with and available,
- 52:33helpful, positive you can
- 52:35have to meet your mentees very safely.
- 52:39It's really a good group to work with.
- 52:44So we get one question and sort of how
- 52:46do you balance publication promotion
- 52:50and you know patents? You know,
- 52:54as to faculty member who who
- 52:56promotions very important. However
- 52:58you sort of found that balance. So
- 53:02that's a great question and I didn't
- 53:04think about it very much when I was
- 53:06an assistant professor because I just
- 53:07wanted to publish and I so I missed some
- 53:09opportunities to to patent things as well.
- 53:13But part of it for me was not
- 53:15understanding really the process well
- 53:18enough and and now we think about
- 53:21patenting almost every with almost
- 53:23every paper that we write because
- 53:26there's some level of of innovation
- 53:29there just in the nature of what.
- 53:31We do if we're making some new chemicals,
- 53:33new polymer for example,
- 53:35for for a drug delivery system.
- 53:38Then and and you just have to think
- 53:42ahead and go through the process of
- 53:45talking to to the folks in the Yale
- 53:47ventures about you know here I have
- 53:49this idea you can't wait till the
- 53:50day you're submitting the paper.
- 53:52But when you start writing when you
- 53:54start writing the paper think about
- 53:56whether there's something in here
- 53:57that might be valuable to protect
- 53:59and and and have the conversations
- 54:01and and by the time the paper is
- 54:03published hopefully if there is
- 54:05something in there the patent has
- 54:06also been the provisional patents
- 54:08also been filed and so that.
- 54:09When you,
- 54:10when you're in that,
- 54:11once you have that mindset
- 54:13and feel that it's pretty,
- 54:14it doesn't really add much burden
- 54:16to the process of publishing.
- 54:21The burden comes if you wait and
- 54:23then you have to struggle and try to,
- 54:25you know, fit everything in or delay your
- 54:28publication and that's uncomfortable.
- 54:30So, and I over the years I I've I was a
- 54:35department chair for 12 years so I was
- 54:37presenting a promotion cases to tenure.
- 54:42The committees and and over the past years
- 54:46that I've been here, I've noticed that.
- 54:49While patent does not a conventional
- 54:51kind of a publication, it is a,
- 54:53it is a, it is a real,
- 54:55it is a real publication in the sense
- 54:57that it's online and it's published
- 54:59and often contains information that's
- 55:01not in your other publications.
- 55:03And it's also evidence that you went
- 55:05through this intellectual process
- 55:07of demonstrating that
- 55:08what you published in a paper
- 55:10also had potential commercial value
- 55:12and was unique and and all the other
- 55:15aspects that Dave mentioned about
- 55:17patents and so the tenure committees.
- 55:19I think increasingly,
- 55:20and I'd be interested in your
- 55:22view of this as well,
- 55:23recognize patents as a intellectual
- 55:26contribution and it's not ignored
- 55:30in the way that I think it might
- 55:33have been diminished in 2003
- 55:35when I first started doing that.
- 55:38So I think it's all possible that
- 55:40that process is all possible
- 55:42to do and compatible with being
- 55:44a faculty member, even
- 55:45a junior faculty. I
- 55:47feel the same, I think. I don't
- 55:50think we ever had a paper delayed
- 55:52because of the need to pass in and.
- 55:57Our approach in the lab is relatively simple.
- 55:59You know when you have free.
- 56:01Or four figures, which means you started
- 56:04summarize your paper and you know
- 56:06you're going to be submitting in three
- 56:07to four months like to just a few more
- 56:10experiments that are messed up with you.
- 56:12That's where we start to have the discussion.
- 56:13Is that protectable? Is it worth it?
- 56:17And and I've become more and
- 56:20more actually decentralized.
- 56:21It used to be only me
- 56:23and the love and now I actually encourage.
- 56:26Early I do protect the OCR people,
- 56:28so I don't want them to be overwhelmed,
- 56:30but I encourage, I'm sure people
- 56:33who had their original observation
- 56:34sometimes to do the exploration,
- 56:35so I don't think that's a big issue.
- 56:41Definitely in the translational
- 56:44clinical departments.
- 56:45They used to completely ignore.
- 56:47Even when I arrived there was ten years ago.
- 56:50They ignored patterns in the last few years.
- 56:55They really, you know, the pythons
- 56:57are actually the suitables.
- 56:58You'll see them in multiple places. So
- 57:01and in my view,
- 57:03a pattern that has been executed
- 57:06is actually probably more.
- 57:07Has a little bit more of a,
- 57:10I don't know, extending
- 57:11that you can finish things then.
- 57:15Than the recent paper to some extent.
- 57:23Hi, I'm rashan. I'm an assistant
- 57:25professor of neurology. So
- 57:28I have two questions for you
- 57:30from 2/1 for Mark Salzman and
- 57:33one for David Williams. So one
- 57:35thing is about in the David Winsor
- 57:37presentation is that I saw one
- 57:40in one slide that saying that not all
- 57:42the parents have been accepted by year.
- 57:45So I want to know more about that
- 57:48why all of them are not being
- 57:50pursued through year? Ohh what
- 57:52are the consequences of what are
- 57:54the things that's going to happen
- 57:56if it is not a patented under Yale?
- 57:58And the second thing is
- 58:00about Mark Salzman's companies.
- 58:03So what is the actual role after
- 58:05making all these three companies?
- 58:08So what is actually your
- 58:09role there or are you going
- 58:10to, because I know that you have
- 58:12the right grants, you had mentor
- 58:14undergrads and I mean both dogs and
- 58:17everybody. So I know it's a busy life,
- 58:20but what is the actual role between the.
- 58:23The companies you have and here here.
- 58:30And that's it. To in person.
- 58:38In a way you can think about
- 58:41the patenting processes and
- 58:42investment and as I mentioned.
- 58:45It's an investment to protecting a
- 58:47space that has commercial utility.
- 58:50And so the decision. Not to proceed.
- 58:58Ideally, not always,
- 59:00but ideally is data-driven.
- 59:02It's just data you're not used to.
- 59:05And usually the data is qualitative and
- 59:08the opinion of people who have their
- 59:10own fixed ideas and what value is.
- 59:13So. The money decides.
- 59:17And the VC's just aren't going
- 59:19to invest in what you do.
- 59:21Then we look for maybe also looking
- 59:25to biotechs that already exist
- 59:27who might need your solution.
- 59:31But if they say no.
- 59:34Then we try and find out why in both cases,
- 59:37which comes back to this idea
- 59:39that if you hear enough times,
- 59:41you better save a mouse before you
- 59:43come knocking on the door again.
- 59:45Let's find a way to save a mouse.
- 59:49And if you save the mouse,
- 59:51then the next question will always be,
- 59:52well, that's great, but you know,
- 59:55drugs in this class or whatever
- 59:57are orally bioavailable.
- 59:58What's the PK look like
- 59:59when you delivered orally?
- 01:00:00As the next says,
- 01:00:02it's this constant moving set of.
- 01:00:05Of Gates to move the project
- 01:00:08forward and at some point.
- 01:00:10They're either aren't the resources,
- 01:00:12or the experiments don't work out,
- 01:00:14or you have to go back to the
- 01:00:16drawing board and there's no reason
- 01:00:18to continue to prosecute the
- 01:00:20original patent filing because.
- 01:00:21It's going down a path.
- 01:00:23That doesn't have isn't going to
- 01:00:26represent what the product might look like.
- 01:00:28And so part of this communication,
- 01:00:30I emphasized the early communication.
- 01:00:32You heard emphasis of early communication.
- 01:00:35It doesn't.
- 01:00:35It's not intended to understate the
- 01:00:38requirement for ongoing communication.
- 01:00:40On my part to tell you or for you
- 01:00:43to be involved in the interaction
- 01:00:46with companies so that you can hear,
- 01:00:48it's not my opinion that it has to be
- 01:00:50orally bioavailable, it's the markets.
- 01:00:52And it's just a different kind of market.
- 01:00:54When you submit grants,
- 01:00:56you're entering the market
- 01:00:59of competing ideas.
- 01:01:00And this is just a different
- 01:01:02version of competing ideas.
- 01:01:03And we make those choices.
- 01:01:08As much as possible based on that data.
- 01:01:12Sometimes that's just not available.
- 01:01:16But that's primarily why
- 01:01:17we would stop prosecution.
- 01:01:19So there's just no clear
- 01:01:21commercial hypothesis,
- 01:01:22there's no financing hypothesis and
- 01:01:23it's not quite clear what's going
- 01:01:25to be put in a bottle and sold.
- 01:01:31And I think your other question
- 01:01:33with regards to, OK, now you
- 01:01:34have a company or a relationship,
- 01:01:36what's the workload and what are you doing?
- 01:01:39So, so different roles
- 01:01:40depending on the situation,
- 01:01:42but so the the three I mentioned,
- 01:01:44they're all startup companies.
- 01:01:46And so typically you know you have an idea,
- 01:01:48you have your laboratory,
- 01:01:49you have some patents,
- 01:01:51you published a a flashy paper
- 01:01:54demonstrating the idea and and you
- 01:01:56decide you're going to start a company.
- 01:01:59And so you are a founder of the
- 01:02:01company because you're going to do
- 01:02:03the work of starting the company.
- 01:02:04Now you're going to have to
- 01:02:06collect other people to help you
- 01:02:07to do that you need probably.
- 01:02:08People are gonna give you money
- 01:02:10and you you need people to help
- 01:02:12manage the company after it started.
- 01:02:13And so you might do that with some other
- 01:02:16partners and so you'd be a cofounder.
- 01:02:18So the effort of that is the
- 01:02:20effort of that that when you're
- 01:02:22starting up it's it's hard to
- 01:02:24predict what it will be.
- 01:02:26I think the more compelling
- 01:02:28the idea the easier it is.
- 01:02:31But then the company gets formed and
- 01:02:32typically you would be a consultant to
- 01:02:35the company because they're going to
- 01:02:37need your input in order to advance.
- 01:02:39And to transfer the technology
- 01:02:41out of your laboratory you you
- 01:02:44could on one other companies I'm a
- 01:02:46member of the Board of Directors,
- 01:02:47so I'm, I'm part of the group that's
- 01:02:50directing the work of the company.
- 01:02:55I guess those are the
- 01:02:56most common roles. So in
- 01:03:00terms of time management,
- 01:03:01you have an obligation to manage your
- 01:03:04total time spent on external activities
- 01:03:06because of the faculty handbook,
- 01:03:08you're allowed to work on
- 01:03:10external project external,
- 01:03:12external to Yale for up to one day a week.
- 01:03:14And so that's an important part of the,
- 01:03:16one important part of the conflict
- 01:03:18of interest forms that you fill out
- 01:03:21whenever you have some kind of a
- 01:03:23consulting arrangement with the.
- 01:03:25External.
- 01:03:27Is it defining how how many hours
- 01:03:30you're gonna work on it per?
- 01:03:32Year and making your through your
- 01:03:34total activity doesn't add up to
- 01:03:36more than a certain amount that that
- 01:03:38that sort of one day week.
- 01:03:43You you can't have a formal
- 01:03:45role in the company beyond the
- 01:03:48director consultant though.
- 01:03:51But, but then some people take a
- 01:03:53year or two years off to sort of get
- 01:03:55the company off the ground, right?
- 01:03:59Certainly our faculty have
- 01:04:00taken sabbaticals to do that.
- 01:04:02One other important relationship
- 01:04:03that can happen with a new
- 01:04:05venture or with a partner through
- 01:04:07licensing to an existing company,
- 01:04:09sponsored research,
- 01:04:10where certain questions still have
- 01:04:13to be addressed that are both.
- 01:04:15Academically interesting and
- 01:04:17commercially interesting.
- 01:04:18And so that's another form of
- 01:04:21relationship which perhaps is time
- 01:04:23consuming in in in the real sense,
- 01:04:25but is supported and in parallel
- 01:04:29is advancing 2 objectives that
- 01:04:31are complementary ideally.
- 01:04:34And if
- 01:04:35you're Pi on a sponsored
- 01:04:36research agreement that's from
- 01:04:37a startup company or from a
- 01:04:39from another existing company,
- 01:04:41that's your Yale time.
- 01:04:43The time you spend on that is is
- 01:04:44is part of your Yale time, not
- 01:04:46your external time.
- 01:04:57Hey, so the work that I do is in
- 01:05:00computational immunology and I was
- 01:05:03wondering if you could name any
- 01:05:05examples of types of discoveries
- 01:05:07or inventions derived purely
- 01:05:08from computational biology which
- 01:05:10could be potentially protectable.
- 01:05:17Yeah, that's a. Wow, OK.
- 01:05:27Two forms of intellectual property
- 01:05:30that are potentially relevant in
- 01:05:32that context are rather broad.
- 01:05:34Mean software, copyright methods,
- 01:05:37things of that nature.
- 01:05:39The challenge there is that
- 01:05:40because you need to publish and
- 01:05:42people have to reproduce it.
- 01:05:44As soon as you publish an algorithm,
- 01:05:46someone else can, you know,
- 01:05:48program it in and and and do
- 01:05:50it in some way that doesn't.
- 01:05:52Infringe on the copyright.
- 01:05:55It's very hard to get patents on software.
- 01:06:00It's possible, but very rare.
- 01:06:03So more typically what might come
- 01:06:06out is that you prove your system
- 01:06:10delivers something of value.
- 01:06:12And there's the academic version,
- 01:06:14which is all sort of has
- 01:06:17a lot of open source.
- 01:06:19And so on.
- 01:06:20And then there's a commercially
- 01:06:22hardened version that is based
- 01:06:24on the algorithm but uses the
- 01:06:26commercial software and that
- 01:06:28might be useful to a company.
- 01:06:30But the company either being founded
- 01:06:33or partnered with is going to want to
- 01:06:36see a demonstration of the deliverables.
- 01:06:38So let's say your computational
- 01:06:40immunology approach is for the
- 01:06:42purpose of identifying drugs that
- 01:06:44have a new use in context they
- 01:06:47previously weren't appreciated,
- 01:06:48and your system has a higher
- 01:06:50degree of reliability.
- 01:06:52You need to have shown that in
- 01:06:54fact you identified something.
- 01:06:56And then you showed that it delivered
- 01:06:58that in a model that's generally
- 01:07:00accepted in terms of treating a disease.
- 01:07:04So now you have this system in place,
- 01:07:06a platform to find things.
- 01:07:08You've proven that when you apply it,
- 01:07:11it delivers something of value.
- 01:07:12And then the intellectual property
- 01:07:14there is a combination of the
- 01:07:17commercial version of the software.
- 01:07:19The know how associated to apply it.
- 01:07:23A particular deliverable that might
- 01:07:25represent an opportunity for a pipeline.
- 01:07:28Or is a demonstration that if
- 01:07:30you partner with somebody else
- 01:07:32who has a bunch of questions,
- 01:07:33they're going to get an answer they can use.
- 01:07:37But in terms of concrete protection
- 01:07:40of intellectual property?
- 01:07:41It's kind of a hard space.
- 01:07:42You're in the business of publishing,
- 01:07:43you're going to teach people,
- 01:07:44you're going to get promoted.
- 01:07:45You're going, you know,
- 01:07:46based on your demonstration and
- 01:07:48public domain that you have this
- 01:07:50solution and others are going to
- 01:07:51want to repeat it because that's the
- 01:07:53nature of academic research, right?
- 01:07:55That should be repeatable. So.
- 01:07:59The IP that would probably be protected
- 01:08:02would be the fruits of that application.
- 01:08:05And if in order and any
- 01:08:07particular component of that,
- 01:08:09that's tangible and required in
- 01:08:12order to deliver that value.
- 01:08:14So if you create a computer or a
- 01:08:16box or a laser or or whatever,
- 01:08:19that provides data uniquely useful
- 01:08:21for the application of that software.
- 01:08:24It doesn't matter who other people
- 01:08:26have the software,
- 01:08:26they can't use it in a meaningful way.
- 01:08:29Apps in the box.
- 01:08:31Does that make sense?
- 01:08:32So you have to build a bouquet
- 01:08:37of components that together.
- 01:08:40Yield something of value,
- 01:08:42but as individual parts by themselves.
- 01:08:44They're useful,
- 01:08:45but not as useful as the totality.
- 01:08:47Some very hard space.
- 01:08:49To to to create IP from the pure.
- 01:08:53Methodology and software.
- 01:08:56But it would be a great
- 01:08:57space to partner with other
- 01:08:58people to create opportunities. So. So
- 01:09:01for example it could imagine
- 01:09:03diagnostics you might find,
- 01:09:04you might find some signatures, some
- 01:09:07immune system signatures that are
- 01:09:09markers of disease and you partner with
- 01:09:11somebody to make a device that could
- 01:09:13quickly and easily measure those things.
- 01:09:15Might be someone in engineering
- 01:09:17here who has a technology that
- 01:09:19could be used to to make a device
- 01:09:22like that or or you or you uncover
- 01:09:24some some, you know compounds.
- 01:09:26So you know, because of your
- 01:09:28work, you discover some compounds
- 01:09:30or combination of compounds that
- 01:09:31might be useful in treating a disease.
- 01:09:33But then you need to find a
- 01:09:34laboratory that that could test
- 01:09:36that idea and demonstrate it.
- 01:09:37But I could imagine lots
- 01:09:39of ways you could be involved. But I
- 01:09:42would say also the other way,
- 01:09:43which is if there's one field that not
- 01:09:46protecting your stuff is really useful,
- 01:09:48it's computational,
- 01:09:49because if you can get something out
- 01:09:52there that a lot of people don't use,
- 01:09:55don't know your name,
- 01:09:56so actually your value later is going to
- 01:09:59be way higher than if you protected it.
- 01:10:01So again, as having worked a lot with
- 01:10:05developing tools for computational
- 01:10:07houses or rational originally of
- 01:10:09microarrays than RAC can now.
- 01:10:11Cell already everything we put out public.
- 01:10:14Gets such a wave of success,
- 01:10:17especially if you do it early and everything.
- 01:10:20We try to protect my copyright,
- 01:10:22which is nobody ever looked at it.
- 01:10:24Yeah, so that's an interesting but,
- 01:10:25but I love the idea of the signatures
- 01:10:27and the bundling that that works well.
- 01:10:31Let me just add one other important thing,
- 01:10:33which I think Mark alluded to.
- 01:10:35Our office has a rather panoramic
- 01:10:38view of what's going on.
- 01:10:40And so you might come to my
- 01:10:42colleague Richard Anderson,
- 01:10:43who handles computational science
- 01:10:45and does some biomedical and he'll
- 01:10:47we'll have our meetings and.
- 01:10:49And he'll say, I'm working with
- 01:10:50such as person on this thing.
- 01:10:52I was like, oh, you know,
- 01:10:53I know somebody in another department
- 01:10:56who's interested in solving a
- 01:10:57problem that this might work with.
- 01:10:59And you may never have encountered
- 01:11:00that person. It's a big place.
- 01:11:02So a really important part of
- 01:11:03what Yale Ventures does is is make
- 01:11:06connections within the institution.
- 01:11:08There's a surprising lack of
- 01:11:10communication between this side of
- 01:11:11campus and that side of campus.
- 01:11:13So you know,
- 01:11:14there's a really great collaboration
- 01:11:15that Mark's been involved with
- 01:11:17involving the chemistry department,
- 01:11:18the pharmacology department
- 01:11:21and himself for addressing.
- 01:11:23A new way of dealing with the the
- 01:11:26new bar associated with HIV drugs.
- 01:11:29Now the goal is can you dose a person?
- 01:11:32Can you dose a person once every six months?
- 01:11:35Well, in order to do that,
- 01:11:36you have to formulate the drug.
- 01:11:38The drug has to have the right kind
- 01:11:40of half life and you've got to save a
- 01:11:42mouse with a single dose over six months.
- 01:11:44And so putting these pieces
- 01:11:46together is really important.
- 01:11:49And sometimes that happens organically.
- 01:11:51People cross pollinate,
- 01:11:52it treats and sometimes go to
- 01:11:55pitch Fest innovation summit.
- 01:11:57And sometimes it's because I'm talking
- 01:11:59to a colleague who mentions they're
- 01:12:01working with someone and just someone
- 01:12:03says what are we going to do with this then?
- 01:12:06So again,
- 01:12:08talking to us,
- 01:12:09giving us the seeds to
- 01:12:11plan is very important,
- 01:12:12even if we're not going to file
- 01:12:14necessarily on that particular thing
- 01:12:16at this time really so much is about.
- 01:12:21People coming together to build things.
- 01:12:23That are bigger than their
- 01:12:25individual projects.
- 01:12:31So how have you chosen to
- 01:12:32sort of create a company
- 01:12:33versus other options like licensing
- 01:12:36or selling the technology?
- 01:12:42So I literally don't want
- 01:12:44to start up companies,
- 01:12:45but I find myself doing it so.
- 01:12:48And the reason is every now
- 01:12:50and then you just have to.
- 01:12:52Actually, the seasoned entrepreneurs,
- 01:12:54if you're not deeply involved,
- 01:12:56they're more reluctant today.
- 01:12:57So the quick, you know,
- 01:12:59it's a little bit of a game of trust.
- 01:13:00Like if you don't believe in intervention,
- 01:13:02why would we believe in your intervention?
- 01:13:04So are you willing to spend
- 01:13:06your nights developing
- 01:13:07it? And yeah, so I find
- 01:13:09myself now as a scientific founder of a
- 01:13:12company that hopefully will get funded soon,
- 01:13:14and I sort of enjoy it.
- 01:13:17I literally don't like Speaking of
- 01:13:19the money aspect of it and they all
- 01:13:22know that they will wait there, yeah.
- 01:13:24That it's hard for me,
- 01:13:26but they actually are very
- 01:13:28respectful of that, right?
- 01:13:29So that's the other thing.
- 01:13:30What what would you do it?
- 01:13:32We actually discovered, you know, the.
- 01:13:33The receipt and the there's a reason
- 01:13:36why they're in Health Sciences is
- 01:13:38because they also want to cure disease,
- 01:13:40that they just want to make money.
- 01:13:44But. So initially my
- 01:13:46approach was we'll just license out
- 01:13:48stuff and I don't want to be involved.
- 01:13:51I don't think that this works,
- 01:13:52to be honest. I think you have
- 01:13:54to be a little bit more engaged.
- 01:13:55That's why. The same thing.
- 01:13:57I don't like pictures because I
- 01:13:59think it's the other way around.
- 01:14:00There should be a pitch for which
- 01:14:02we sit and the venture capital
- 01:14:04has present 5 minutes of what,
- 01:14:06how much money they're going to give us.
- 01:14:08But
- 01:14:09I also live,
- 01:14:10live in the real world and
- 01:14:11said, OK, good, yeah, I accept
- 01:14:13it. So I will show
- 01:14:14up and I do my best to win, right?
- 01:14:17But I I get it. And I think for
- 01:14:20all of us living with this.
- 01:14:21Cognitive dissonance is not a bad idea.
- 01:14:23We should recognize there is
- 01:14:24a little bit of a conflict
- 01:14:25there. But we just have to handle
- 01:14:28it. We the one thing we don't want to
- 01:14:30do is crawl in our ivory tower and
- 01:14:33not have an influence on the world,
- 01:14:35so hopefully this helps from my point.
- 01:14:40Yeah, I, I I totally agree with that.
- 01:14:42I've had. The experience I've had
- 01:14:45with licensing technologies was
- 01:14:47that they never went anywhere.
- 01:14:49And often it gets licensed to protect you,
- 01:14:52to protect the company
- 01:14:54from a competitor, right?
- 01:14:55You're forming a competitor that they
- 01:14:57would then have to have to overcome.
- 01:15:01So. So it seems more true now than
- 01:15:04it was at the beginning of my career.
- 01:15:06Most companies grow or acquire
- 01:15:08new technologies by buying a small
- 01:15:10company and integrating it into their
- 01:15:12thinking out by not by licensing from
- 01:15:14universities because that there's less
- 01:15:16risk for them that way and so. So,
- 01:15:21but so this decision though really comes
- 01:15:24you can't do it by yourself and
- 01:15:26because you need people with money,
- 01:15:28you need people with experience
- 01:15:30and running companies.
- 01:15:31And so it's when those things cluster
- 01:15:33around, you know, you, you, you.
- 01:15:35When they cluster around a
- 01:15:37project from your lab or an
- 01:15:38idea that you have that could
- 01:15:39be translated, that's that's
- 01:15:41when you start it up.
- 01:15:43And you hope
- 01:15:44the rest of the patients get
- 01:15:45licensed by somebody but.
- 01:15:48Don't count on it.
- 01:15:50So what's the most difficult portion
- 01:15:52of the cluster to bring together?
- 01:15:53The money cofounders, all of it,
- 01:15:57it's all, it's all difficult.
- 01:15:59And so I think every story
- 01:16:01you hear about a startup
- 01:16:02probably be slightly different.
- 01:16:03There's no sort of template
- 01:16:05that I that I know of.
- 01:16:08But but my experience finding in in.
- 01:16:13This area of the world,
- 01:16:16so between Boston and New York,
- 01:16:18which are real, real magnets for
- 01:16:23people that have experience managing
- 01:16:25companies and leading companies,
- 01:16:27it's that part that's the
- 01:16:28hardest to to find here,
- 01:16:30although it's been getting better partly
- 01:16:32because of the work of deal ventures.
- 01:16:34And as we create more mass
- 01:16:36of these activities,
- 01:16:37there'll be more experienced
- 01:16:39management people around.
- 01:16:43Just want to comment about licensing
- 01:16:46versus licensing versus new ventures.
- 01:16:49Some technologies just don't have enough.
- 01:16:54Mass to sustain a company.
- 01:16:57There a solution,
- 01:16:59but it's not independently useful
- 01:17:01or independently investible
- 01:17:03absent some other infrastructure.
- 01:17:07In terms of.
- 01:17:10Making those things work,
- 01:17:12I actually like to take the approach
- 01:17:14where it's a it's a platform company.
- 01:17:17With sort of a way of doing something,
- 01:17:19whether it's software or
- 01:17:22fundamental chemistry,
- 01:17:24I like to do a license to a company.
- 01:17:30In a narrow slice.
- 01:17:32And that's data that shows venture capital.
- 01:17:35There's somebody out there that
- 01:17:36thinks there's commercial value.
- 01:17:38So if I have a platform and
- 01:17:39I can do a deal with a pharma
- 01:17:41for a small sliver of that.
- 01:17:43It it's proof that we've been through
- 01:17:46the diligence grinder in terms of the IP.
- 01:17:48It's proof that somebody thinks
- 01:17:50it's a solution for something.
- 01:17:53And it sets a value point for at least one
- 01:17:57application of the platform to a project.
- 01:18:01And it mitigates risk because it the
- 01:18:04venture capital can envision an exit
- 01:18:06either of an asset or the entire company.
- 01:18:09And so there's a balance.
- 01:18:10You have to think about how to.
- 01:18:14Both prove the technology
- 01:18:16works and also prove its.
- 01:18:18Commercial viability?
- 01:18:21So. The balance between,
- 01:18:24I think you do both, you know,
- 01:18:25you do a little bit of licensing,
- 01:18:26you test the waters, you get a sense
- 01:18:29of what it takes to convince somebody.
- 01:18:31And then if there's more to it,
- 01:18:33you might spin out a company to
- 01:18:35make the most of the platform,
- 01:18:36the most of the sort of
- 01:18:38fundamental technology.
- 01:18:38Because putting it all in a pharma
- 01:18:40or putting it all in one place where
- 01:18:43it's not the main event is a waste.
- 01:18:45They're going to use it for
- 01:18:46the one problem they have.
- 01:18:47They're going to get their one solution
- 01:18:48and it's going to sit on the shelf.
- 01:18:50So in that sense, I agree, you know?
- 01:18:52You have to find the right
- 01:18:54kind of relationship.
- 01:18:56You're going to let them
- 01:18:57wander around the entire acre,
- 01:18:58or you going to give them a path and
- 01:19:00they can have a picnic in the corner?
- 01:19:02It's,
- 01:19:02it's sort of simple minded but
- 01:19:05it's really works right and and so
- 01:19:07I think that you know there's a
- 01:19:09there's an experiment that needs to
- 01:19:11get done in choosing whether or not
- 01:19:13it's solely licensable because it's
- 01:19:15a one hit wonder or whether it's
- 01:19:17really something there that has the
- 01:19:19ability to be broadly applicable.
- 01:19:21And then you make decisions.
- 01:19:22That's something you want to.
- 01:19:24License iteratively to a lot of people.
- 01:19:27Because of the nature of the solution,
- 01:19:29is something you want to put into
- 01:19:31a company so that company can use
- 01:19:33it itself and also solve things
- 01:19:35for other people.
- 01:19:36So it becomes a very interesting business
- 01:19:39problem and the business structure.
- 01:19:42That.
- 01:19:44Really is technology dependent.
- 01:19:46You you are a platform generator and.
- 01:19:50Not everyone can make
- 01:19:51the most of the platform.
- 01:19:53So you cut it up into pieces and and
- 01:19:56you make sure it's clarity as to who
- 01:19:58get what's who gets what part of it.
- 01:20:00But maybe not.
- 01:20:00One entity can make the most of it.
- 01:20:02And part of what our job is to
- 01:20:04do is to make sure as much as
- 01:20:06possible that the most is made
- 01:20:07of the of of the salute,
- 01:20:08of the Yale solution to X.
- 01:20:16I have one last question for you.
- 01:20:18So how does the money
- 01:20:19work right? Who's paying for
- 01:20:20the patents? What happens when
- 01:20:21a company gets what does the
- 01:20:23money work? That's for me too.
- 01:20:27Well.
- 01:20:31That is the money work.
- 01:20:32Well, you can talk about the
- 01:20:34yeah, yeah. So we have a budget.
- 01:20:39And it's not infinite.
- 01:20:41And so part of the process is is
- 01:20:43coming to an understanding about
- 01:20:45what it is we're protecting and why.
- 01:20:48And what do we imagine the trajectory is
- 01:20:51of that particular protections value?
- 01:20:54The way it works is that the
- 01:20:57initial investment is pretty
- 01:20:59small in terms of dollars.
- 01:21:02In terms of time, that's another matter.
- 01:21:04But we can file a patent application
- 01:21:07for a couple 1000 bucks and then we
- 01:21:10have a year to sort of figure out some
- 01:21:12things because very frequently we're
- 01:21:13up against the publication deadline.
- 01:21:15And if we don't file before the publication,
- 01:21:18we've generated the priority
- 01:21:19I was talking about.
- 01:21:20That closes a lot of doors.
- 01:21:23So we have this window.
- 01:21:25To file and we we we want to file on enough.
- 01:21:29That covers the.
- 01:21:32Publication that's pending.
- 01:21:33But not so much that we're contaminating
- 01:21:36the waters for future inventions.
- 01:21:38So there's already a discussion
- 01:21:39that has to go on.
- 01:21:40How much do you protect and
- 01:21:42when and what's going to happen
- 01:21:44during that initial year?
- 01:21:46To demonstrate that we possess
- 01:21:48the invention in some way,
- 01:21:50and so that initial investment is
- 01:21:51more about time than about money and
- 01:21:54there's a cost of expectation associated,
- 01:21:56we have to,
- 01:21:57there has to be an understanding
- 01:21:59that if the following doesn't happen.
- 01:22:01Then we may not take it to the next step,
- 01:22:04because the next step is an order
- 01:22:05of magnitude more expensive.
- 01:22:10And then at that point you again,
- 01:22:12you test the waters, figure things out,
- 01:22:14and if at that point there's still
- 01:22:17nothing there to justify it,
- 01:22:19then maybe we let it go
- 01:22:20abandoned and start again,
- 01:22:21or we protected much more narrowly.
- 01:22:25That's kind of the way it works.
- 01:22:28And that all comes out of
- 01:22:29the Yale ventures budget.
- 01:22:33You might have also been asking about
- 01:22:35what happens with it like gets licensed or
- 01:22:37license. I mean I think it's
- 01:22:39also how does Yale, I mean
- 01:22:41yeah, so the policy,
- 01:22:44the policy currently is for inventions
- 01:22:47disclosed after I believe it's October 1st.
- 01:22:51That income is distributed to.
- 01:22:56The inventors, the university,
- 01:22:58the departments and the lab are not
- 01:23:01staken and some proportionality that
- 01:23:03I don't call off the top of my head.
- 01:23:06And if it was disclosed prior to that date,
- 01:23:09it follows the old policy which says
- 01:23:12that it's distributed to the well.
- 01:23:15I guess this part I don't know if
- 01:23:17we're still going to get used to
- 01:23:18be that our office formerly known
- 01:23:20as Office of Cooperative Research
- 01:23:21was an eat what you kill office.
- 01:23:23So we were funded based on taking 10%
- 01:23:25off the top of any income that came
- 01:23:27through because we're not paid through
- 01:23:29indirects and all the rest of that.
- 01:23:31And so the remaining 90%?
- 01:23:34For inventions that are disclosed
- 01:23:35that were disclosed prior to the
- 01:23:37policy change date are distributed
- 01:23:39according to how much income comes in,
- 01:23:41ranging from 30 to 50 to 30%.
- 01:23:44Back to the innovators,
- 01:23:45but not to the departments, not to the labs.
- 01:23:53I think the new policy still
- 01:23:54is still stratified by how much
- 01:23:56comes in for years, right?
- 01:23:59I believe so in terms of
- 01:24:02the distributions to Yale.
- 01:24:04There's a few more percentage
- 01:24:06to to the inventors,
- 01:24:07but if you have a spinout company right,
- 01:24:10is this Yale taking some of
- 01:24:11that afterwards or does Yale?
- 01:24:14Different question.
- 01:24:16Again, depends on.
- 01:24:19Policy change but. Typically.
- 01:24:21Putting aside how the distributions would go,
- 01:24:24they would well,
- 01:24:25the distributions would follow the
- 01:24:27current policy, the new policy,
- 01:24:28or the old policy pending.
- 01:24:29But.
- 01:24:32Today, the practice is that in
- 01:24:35negotiating a license to a new venture.
- 01:24:38Yale, institutionally
- 01:24:39will be an equity holder.
- 01:24:41If and when that equity is monetized.
- 01:24:45Where it's translated into some other
- 01:24:47kind of tangible value down the road.
- 01:24:49That portion at Yale has.
- 01:24:52As Yale Equity is is distributed according
- 01:24:56to the applicable patent policy.
- 01:24:59Seems like a pretty yeah.
- 01:25:02So equity is A is A is,
- 01:25:04is, is a form of money,
- 01:25:06in essence 1 hopes and it it's
- 01:25:08going to get distributed.
- 01:25:12The only difference, really,
- 01:25:13would be that Yale will hold on to the
- 01:25:16equity until the monetization event.
- 01:25:18Versus making immediate
- 01:25:20distributions in the vast majority
- 01:25:22of the cases to the inventors.
- 01:25:30Really quick.
- 01:25:35Is you know the, I guess the.
- 01:25:38Activities involved with commercialization
- 01:25:40and is that better reserved for
- 01:25:43kind of a mid to late career,
- 01:25:45I mean obviously there's and
- 01:25:48I think more experienced.
- 01:25:51Family members obviously have more to more
- 01:25:54to contribute in in the mid to late career,
- 01:25:56but I mean, is it possible that this is a?
- 01:25:59You know, for some,
- 01:26:00for somebody in early career, that this
- 01:26:02could be a big distraction or a bad.
- 01:26:05You know, I guess, yeah,
- 01:26:07I mean kind of a a distraction
- 01:26:09to pursue early career,
- 01:26:10but you know is it best reserved for
- 01:26:13later and I guess obviously there's,
- 01:26:15you know differences between.
- 01:26:19What people are involved in,
- 01:26:20but I don't know, I just just curious
- 01:26:22to hear your thoughts on that.
- 01:26:24Yeah, so it's a really tough question and
- 01:26:25I think both naturally and I mentioned
- 01:26:27that early in our careers we didn't
- 01:26:29pay much attention to it and probably
- 01:26:30missed opportunities because of that.
- 01:26:32But but at the time it was
- 01:26:34probably a good decision.
- 01:26:35I feel like it was a good decision for me.
- 01:26:3710 years worked out pretty well.
- 01:26:39So that was a good thing to keep
- 01:26:41a target on, but I I think it's because.
- 01:26:46You know, particularly here,
- 01:26:47but other places as well.
- 01:26:48I think the, the,
- 01:26:49the Yale benchers equipment equivalent
- 01:26:51in other places has grown just
- 01:26:52like Yale Ventures has grown here.
- 01:26:54There's more support and more different
- 01:26:56kinds of support than there were
- 01:26:58when we were starting our careers.
- 01:26:59So I think that's good.
- 01:27:00I think there's more mentorship in
- 01:27:02departments with people that have
- 01:27:04the experience at this than there was
- 01:27:06when I started it.
- 01:27:07There was there, there
- 01:27:08were people in my department that
- 01:27:10were senior that had much experience.
- 01:27:12So those two things give you.
- 01:27:15Resources, right, to help
- 01:27:17you make decisions. And and
- 01:27:18it could be that, you know,
- 01:27:19something you discover now is it right?
- 01:27:22It's big and you don't want to miss
- 01:27:23out on that opportunity either.
- 01:27:25So I would connect to, you know,
- 01:27:28senior people in your department who have
- 01:27:30experience with these kinds of things.
- 01:27:32And I would connect with, you know,
- 01:27:34ventures when you have ideas
- 01:27:35and see if they really do seem
- 01:27:37like they have some legs. OK.
- 01:27:42I think the
- 01:27:43decision to. File
- 01:27:45provisionals is an easy one, right? That's a.
- 01:27:49Low hanging fruit.
- 01:27:50If you have something,
- 01:27:51you don't want to mess on that right?
- 01:27:53I think the decision if you're
- 01:27:54going to become a scientific
- 01:27:56founder is slightly different. Of.
- 01:28:00I'd say especially
- 01:28:01looking at more sort of West Coast to Bay
- 01:28:03Area. It's very natural
- 01:28:05that people start as assistant professors
- 01:28:07and by the time they're up for tenure,
- 01:28:10they're CEO's of companies.
- 01:28:13Now, we don't have it this
- 01:28:16culture here that much.
- 01:28:18And some people still stay in academia.
- 01:28:20Some people.
- 01:28:22You know they will take the year.
- 01:28:24Some people will take the year or two off,
- 01:28:26put the company on its legs and go back,
- 01:28:29and some people will just hand it off.
- 01:28:32Right. And just leave.
- 01:28:33But but I've seen it a lot.
- 01:28:35A person who was an undergrad in my lab.
- 01:28:37Chemistry.
- 01:28:40Undergrad from CMU.
- 01:28:42Is now. The CEO
- 01:28:44for really nice company right.
- 01:28:46You know, it shows that I'm happy.
- 01:28:48You know when I when we discussed it,
- 01:28:50I thought she should do it MD,
- 01:28:51PhD she wanted the PhD.
- 01:28:52When we discussed it,
- 01:28:54she discussed early career system,
- 01:28:56professorship or entrepreneurship.
- 01:28:57I said early career professorship.
- 01:29:00She took the entrepreneurship, right.
- 01:29:01So I I I think these are valid careers and
- 01:29:04the more we have good people in industry,
- 01:29:07the better we all do.
- 01:29:08So there's nothing wrong with it.
- 01:29:11So that's the way I would look at it.
- 01:29:12So if you enjoy it,
- 01:29:13if you have something you want to do.
- 01:29:16Be a scientific founder.
- 01:29:17And if this takes that out,
- 01:29:19you're out of academia.
- 01:29:20Nothing
- 01:29:21bad about it.
- 01:29:25Just sort of one comment
- 01:29:26as a non professional.
- 01:29:28From what I've seen and when I
- 01:29:31look at people's grants. Umm.
- 01:29:34Is all sorts of speculation about
- 01:29:37the utility to cure disease or
- 01:29:40something of that nature and I
- 01:29:43think that if you are going to.
- 01:29:47Have that kind of.
- 01:29:48Approach that, you know I'm going
- 01:29:50if you're a yeast biologist,
- 01:29:51going to the American Heart Association,
- 01:29:53which they do, and they're claiming
- 01:29:55this research is going to, you know,
- 01:29:57facilitate treating heart disease.
- 01:30:02Having had exposure to companies and
- 01:30:06entrepreneurs and commercial environment
- 01:30:07so that you can frame that argument.
- 01:30:11In a credible way,
- 01:30:12as part of the justification
- 01:30:14for the support you're seeking.
- 01:30:16It can't do any harm, I would say in
- 01:30:19terms of putting things into context.
- 01:30:20And why is this a value to society
- 01:30:23beyond pure value knowledge?
- 01:30:25And then different kind then
- 01:30:27and as you move along.
- 01:30:29Different kinds of grants become available.
- 01:30:33Or you become more credible when
- 01:30:36you apply for them because.
- 01:30:39You can describe the next set of experiments.
- 01:30:44Because you've been exposed to
- 01:30:45something you didn't previously
- 01:30:47have exposure to a new context.
- 01:30:48You interact with someone.
- 01:30:49You hear about a disease you never heard
- 01:30:52of but your biology is relevant to.
- 01:30:54And so part of the investment of
- 01:30:56the time may not be the particular
- 01:30:59invention or a particular project now.
- 01:31:02But just what it teaches you
- 01:31:05outside of your silo.
- 01:31:07And knowing that real innovation,
- 01:31:09typically innovation,
- 01:31:09is a function of cross pollination,
- 01:31:12you're self pollinating.
- 01:31:15And so that's part of the value proposition.
- 01:31:18Even if there isn't a
- 01:31:20particular invention now.
- 01:31:24So I think we've run out
- 01:31:25of time. Yes. Thank you.