Tech Transfer eNews Blog
Technology Transfer Tactics sample issue

Royalty monetization nets $42 million as Rush cashes in on MS drug


By David Schwartz
Published: October 22nd, 2014

Rush University Medical Center in Chicago, IL, recently inked a $42 million dollar deal for the sale of worldwide royalties stemming from Ampyra, an FDA-approved drug that helps to improve walking in people with multiple sclerosis. It’s a nice lump sum that Rush can now immediately put toward new research and development, but it was not what you would call a quick or easy transaction. In fact, the buyer in this case, Toronto-based DRI Capital, had been calling on Rush for seven years before the deal finally went down, according to Craig Shepherd, DRI Capital’s managing director. But such foot-dragging is hardly unusual or ill-advised.

“Given the complexity of university governance, it takes time to coalesce not only the inventors in an institution, but the various players in the institution as well because departments and faculties and boards and others rightly want to have a say in how an asset is monetized,” explains Shepherd.

Also, Shepherd notes that research institutions often want to see how the market develops before pulling the trigger on any deals. “In this case Ampyra had been approved by the FDA in the beginning of 2010, so by the time we announced this deal there was more than four years of commercial history in the U.S., and more than three years of commercial history in Europe [where the drug is marketed as Fampyra] because the product was approved there in 2011. So it was mature enough for them to understand the trajectory and for them to conduct their own internal forecast as to how the asset would perform,” he explains. “Historically, almost all of the royalty monetization transactions have been post-regulatory approval and then within the first four years of sale, so that kind of commercial history removes the risk for both the royalty investor and the institution.”

John Mordach, senior vice president of finance and chief financial officer at Rush, explains that while the institution had been looking at potentially monetizing this asset for some time, the market conditions did not seem compelling enough to make the move until 2013. “We had our valuation firm come up with a range of what [the royalty stream] might be worth, and then paired up with that we went through an RFP process — an actual auction process,” he explains. “We sent letters to six firms to see if they would express an interest in possibly bidding on it, and we received three bids back.”

At this point, Rush matched up those bids with its own valuation, concluding that DRI Capital’s bid was within the range of what it was looking for. Negotiations then ensued, resulting in an eventual deal.

While royalty monetization transactions like the Rush/DRI Capital deal are not always in an institution’s best interests, they are evidence of a further evolution in the market for IP, observes Brian O’Shaughnessy, an IP attorney at RatnerPrestia in Washington, DC. “They demonstrate how IP can fuel the economy, fuel greater research, improve the lot of society and improve the public as a whole,” he says. “Rush now has a whole lot of money that they can turn around and invest in research and development, whereas under their agreement with Acorda [Therapeutics, the licensee], for example, they might have had to wait for 10 or 15 years to get that full sum of money.” A detailed article on the Rush monetization deal, including advice for other institutions considering a royalty stream sale, appears in the October issue of Technology Transfer Tactics. To access the full article, as well as gain access to the publication’s rich eight-year archive of success strategies and case studies for TTOs, CLICK HERE

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Northeastern undergrads pitch fair-trade coffee bars on CNBC


By David Schwartz
Published: October 22nd, 2014

Two undergrads at Northeastern University have developed an edible product that can provide the rejuvenating benefits of coffee in less time. Students Ali Kothari and Johnny Fayad recently got a 60 second spot on CNBC’s “Power Pitch” to sell their product and company, New Grounds Food, to a panel of investors. continue reading »

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Iron-Clad Royalty Audit Terms and Conditions for University IP Licenses


By David Schwartz
Published: October 22nd, 2014

University IP agreements are complex, routinely requiring audits to ensure compliance. Studies have repeatedly shown that more than three quarters of royalty payments made by licensees are based on reports that contain errors, misinterpretations, or omissions. When compliance is in question, the level of resolution and satisfaction you receive depends upon the thoroughness of the drafted financial, monitoring and auditing terms.

That’s why Technology Transfer Tactics’ Distance Learning Division has teamed up with a world-class royalty audit expert to lead a detailed webinar that will teach you how to ensure full compliance and full payment when receiving self-reported royalty information from licensees. Join royalty audit expert Matthew Hurewitz on November 5th for this critical program: Drafting Iron-Clad Royalty Audit Terms and Conditions for University IP Licenses. For complete program details and to register, CLICK HERE.

ALSO COMING SOON:

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LSU program aims to fill a gap in gap funding 


By David Schwartz
Published: October 22nd, 2014

Research Park Corporation (RPC), part of the innovation hub Louisiana Technology Park, is launching a program to assist promising research projects that didn’t receive investment from Louisiana State University’s LIFT² Fund. You might say it’s a gap fund to fill a gap in the previous gap fund. continue reading »

The Mind the Gap Report is chock-full of must-have strategies to help universities build, expand, or partner with gap funding programs. Click here for details >>

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South Korean researchers develop technology to wirelessly recharge mobile devices


By David Schwartz
Published: October 22nd, 2014

Researchers at KAIST, a public university in South Korea, are developing a technology that can recharge mobile devices wirelessly. Led by professor Rim Chun-taek, the research team is working on what they call the Dipole Coil Resonant System (DCRS), which so far has successfully sent 209 watts of electricity from a distance of 5 meters — the furthest wireless power transmission ever recorded. continue reading »

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Philadelphia research park launches fund to complement POC center


By David Schwartz
Published: October 22nd, 2014

The University City Science Center, an urban research park in Philadelphia, is adding a funding effort to help academic researchers turn their innovations into companies. The Phase 1 Ventures fund will be fueled by a $1 million grant from the U.S. Economic Development Administration. It aims to provide more opportunities to create start-ups around innovations with high commercial potential. continue reading »

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Now available: Technology Transfer Tactics Best Practices Compendium


By David Schwartz
Published: October 22nd, 2014

The Technology Transfer Tactics BEST PRACTICES COMPENDIUM is a must-have, 492-page resource that’s chock-full of how-to strategies and proven best practices covering a comprehensive range of the most critical challenges facing tech transfer professionals. The all-new BEST PRACTICES COMPENDIUM offers a cost-effective way to learn from successful tactics and programs developed and implemented by colleagues at tech transfer offices across the country.

With this comprehensive reference you’ll boost your program’s results with unprecedented access to proven best practices implemented by dozens of top TTOs. This new resource is packed with detailed tips, tactics, ideas, expert guidance, and nuts and bolts solutions in 11 critical technology transfer areas: marketing, start-ups, faculty outreach, operations and staffing, portfolio management, contracting and licensing, funding, partnerships, policies & procedures, patent and legal issues, and economic development. For details, a complete table of contents, and to order, click here >>>

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U Chicago launches new start-up incubator for students and faculty across campus


By David Schwartz
Published: October 22nd, 2014

The University of Chicago is launching a new incubator aimed at creating new businesses and job growth in the technology and innovation sectors across Illinois.

continue reading »

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U of Technology in Sydney licenses novel cell line for treating Type 1 diabetes


By David Schwartz
Published: October 22nd, 2014

The University of Technology in Sydney, Australia (UTS) and clinical-stage biotech company Nuvilex Inc. have entered into a licensing agreement to commercialize a UTS technology that holds promise for ending the daily injections needed by individuals with insulin-dependent diabetes. continue reading »

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Marketable technologies abundant in NM, but funding and management talent are not


By David Schwartz
Published: October 22nd, 2014

In his Tech Bytes column in the Albuquerque Journal, Kevin Robinson-Avila notes the plethora of promising technologies on display at the University of New Mexico’s recent Deal Stream Summit. That’s the bright side. On the not-so-bright side, he adds, is that “many technologies on display this month — especially the ones shown during a two-day event at UNM to showcase emerging university inventions — will require a lot more management talent and early-stage funding to take even their first steps to market.” continue reading »

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Cambridge U and AstraZeneca build on their partnership to boost medical R&D


By David Schwartz
Published: October 22nd, 2014

Cambridge University and pharmaceutical giant AstraZeneca are now collaborating to boost the development and commercialization of new medicines. continue reading »

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Comings and goings


By David Schwartz
Published: October 22nd, 2014

RTI International, a nonprofit support center for research and development, has selected Dr. Terri Lomax, a leading proponent of entrepreneurship in North Carolina’s Research Triangle region, to become Vice President for Discovery, Science and Technology. Lomax most recently served as Vice Chancellor for Research, Innovation and Economic Development at North Carolina State University (NCSU), where she oversaw and led the school’s research policy, private and government partnerships, and planning and administration related to research and innovation efforts. “She has helped make NC State a nationally recognized research powerhouse,” says NCSU Chancellor Randy Woodson, “playing a key role in the development of our research hubs and helping raise our research expenditures to unprecedented levels.” Lomax also led NCSU’s tech transfer efforts and has worked as a professor of plant biology at the university.

“RTI and NC State share in their DNA a passion for results-oriented research and innovation,” says Lomax. “Turning knowledge into practice through collaboration among varied disciplines is a core strength of both institutions, and one that is critical if we are to solve today’s toughest challenges. I’m excited about this new opportunity at RTI, an organization that flourishes — like the Research Triangle itself — because of collaboration between the area’s local universities, government and businesses.”

Source: WRAL TechWire

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