The technology transfer office at Childrens Hospital Los Angeles (CHLA) is veering off the traditional path to commercialization, with a pending sealed-bid private sale of a portfolio of 10 issued U.S. patents and foreign patent applications for noninvasive substance detection, including a noninvasive blood glucose monitor. The TTO has hired the IP brokerage firm ICAP Ocean Tomo, LLC, in Chicago to conduct the private sale for the hospital. CHLA had tried the traditional commercialization route with this particular technology for several years, says Jessica Rousset, director of the hospital’s TTO. However, the standard path was slow-moving, particularly given the limited availability of the inventor, who is also a healthcare professional, she reports.<\/p>\n
In preparing for the private sale, ICAP Ocean Tomo conducted a portfolio valuation using a proprietary patent rating system. “They came back with a valuation that actually made a lot of sense to us,” says Rousset, though its assumptions seemed to neglect the upside potential of the IP. “If the technology were to be a front runner in the market, then the valuation that they gave us would be certainly on the lower end,” she states. To hedge this risk and alleviate the concerns of some of CHLA’s board members about the valuation, the TTO was able to add a second payment to the deal structure Ocean Tomo would be brokering. The milestone payment would be triggered “when a licensee’s revenues reach a certain threshold, whether from product sales or sublicensing.” The upfront fee included in the agreement is based on ICAP Ocean Tomo’s conservative valuation.<\/p>\n
CHLA worked with ICAP Ocean Tomo to negotiate a customized template license agreement, which in turn will be conveyed to potential bidders. The agreement is a hybrid between a straight sale and a standard license agreement with all of the reporting obligations and various triggers for payments to the IP holder, she explains. CHLA isn’t granting the IP rights as an assignment, which is ICAP Ocean Tomo’s traditional model, “but as an exclusive license, which is necessary for federally funded IP,” she explains. “Furthermore, we were able to get the appropriate reservation of rights in the terms and conditions that is customary when licensing government-funded technologies,” allowing CHLA and other academic institutions to continue to work with the licensed IP. The financial terms pre-set in the license represent minimum bids. “So if the bid comes in under those amounts, we are under no obligation to accept them,” points out Rousset. A detailed article on the private sale, scheduled for November 30, appears in the October issue of Technology Transfer Tactics<\/em>. For subscription information, CLICK HERE<\/a>.<\/p>\n The technology transfer office at Childrens Hospital Los Angeles (CHLA) is veering off the traditional path to commercialization, with a pending sealed-bid private sale of a portfolio of 10 issued U.S. patents and foreign patent applications for noninvasive substance detection, including a noninvasive blood glucose monitor. The TTO has hired the IP brokerage firm ICAP […]<\/p>\n","protected":false},"author":67,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7],"tags":[],"class_list":["post-54693","post","type-post","status-publish","format-standard","hentry","category-news"],"_links":{"self":[{"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/posts\/54693","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/users\/67"}],"replies":[{"embeddable":true,"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/comments?post=54693"}],"version-history":[{"count":0,"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/posts\/54693\/revisions"}],"wp:attachment":[{"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/media?parent=54693"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/categories?post=54693"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/tags?post=54693"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}
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