- [Todd Pazdera] We play like a business development role.
We play a little bit of a contracting role.
Kind of a patent management role.
A scouting sort of role.
In a company you have like four individuals
for each of that and at UCSF, or at a lot of institutions,
you kind of have one person who does those different roles.
- [Kevin Hartman] Welcome to Strategy for Scientists.
This is a podcast for scientists
interested in learning about
business strategy through stories.
I am Kevin Hartman with Strategy for Scientists
at the University of California, San Francisco, UCSF.
Today we will hear from Todd Pazdera,
Assistant Director of licensing
in the office of technology management, or OTM at UCSF.
We just heard Todd describing the scope of his work.
Put briefly, he helps set up agreements
between academic researchers
and industry partners.
In research collaboration agreements
a biotech or pharma company will work together
with an academic lab to co-discover or
co-develop a new product.
Todd explains why companies might seek to set up
agreements with academic labs.
- [Todd Pazdera] UCSF is a world renowned
medical life science institution.
The reason that companies want to come here
is because we have the best of the best experts
in particular biological areas
or life science related areas.
It's really hard to find that in industry
unless you can scoop somebody up from academia.
In general pharma and biotechs just simply don't have
that kind of basic science expertise.
And for them to get it they would have to poach
a twenty year scientist from a university.
Which is really hard to do.
- [Kevin Hartman] So, rather than to try to
develop their expertise
in a particular biological area,
companies rely on the basic scientists in academia.
Todd explains that academics similarly benefit
by relying on the expertise of companies
to develop and commercialize their science.
For this discussion,
Todd talks about collaboration in the therapeutic space,
since this is where many of OTM's big partnerships
have been formed.
- [Todd Pazdera] What the companies bringing
is the direct discovery.
They're the ones with the huge libraries
of small molecules for drug discovery.
They're the ones with the antibody development expertise.
Many companies have their own unique proprietary
antibody systems for doing discovery.
They collaborate with us,
a lot of times they do the screening over at the company
and then they'll send the leads back to us
and then we'll do the basic science
and the mouse models, animal models to see
does this look like it's ameliorating the phenotypic effects
that the mouse model is a system for?
For modeling human disease.
The way to use a very scientific approach
to drug discovery,
you need both of those elements.
You need the strong deep long biological expertise
and you need the drug discovery capabilities
to screen thousands and hundreds of thousands
and millions of compounds.
You need companies like Pfizer and GSK
and so forth that have rooms full of robots
that screen through hundreds of thousands of compounds.
Not something that can be done here at UCSF.
- [Kevin Hartman] In a research collaboration
the partners come together to develop something
that would have been more difficult
or impossible to create on their own.
Another kind of agreement that OTM handles
is license agreements.
These are for cases where UCSF researchers
have already created something of value.
As a scientist you may want to protect your exclusive rights
to the value of your discovery or your creation
by filing intellectual property rights.
License agreements are then the contracts that govern
the use of these discoveries.
- [Todd Pazdera] The main focus of our office is licensing.
And what that means is that we set up a license agreement
to convey UCSFs rights in intellectual property.
That intellectual property can either be patent rights,
trademarks, copyright, know how, materials.
Those are all different forms of intellectual property.
The license agreement conveys the rights that we have,
it gives a license to the licensee to utilize those rights.
We are not transferring the rights to them,
we're just giving them a time limited license
to be able to use those rights.
Generally, the reason that they want those rights
is to be able to exclude third parties from
practicing what's protected by those rights.
- [Kevin Hartman] It took me a few tries to understand
the relationship between
intellectual property rights and licenses.
So let's take for example, a case where UCSF holds a patent.
That patent is a set of rights that UCSF has
to exclude others from using their invention.
This patent would have been granted by
the US patent and trademark office
after UCSF filed a patent application.
Now if UCSF wanted to let someone else use that invention,
presumably in exchange for a royalty payment,
they would set up a license agreement with that person.
There are similar agreements for the other forms of
intellectual property that OTM,
or the tech transfer office handles,
such as copyrights and trademarks.
Todd gives us some categories of research
that are potentially patentable.
- [Todd Pazdera] For a patent right...
a patent license...
Typically that would be things like diagnostics.
Therapeutics.
What we generically call platform technologies.
Medical devices.
Those in general are the sort of four main categories
of things that we might file patent applications on
which hopefully someday will become patents.
It's those patent rights that we license
through the license agreement.
- [Kevin Hartman] The next type of intellectual property
that Todd deals with is copyright.
Copyright assigns the rights to use, reproduce,
or distribute the creative works.
Journal articles, for example,
are restricted by copyright.
So what aspects of research
would be covered by copyright license?
- [Todd Pazdera] Copyright typically is software.
It can be anything that's written
in a tangible medium.
It can be methods that are written out.
It can be pamphlets, et cetera.
But typically if we are talking about a copyright license
it's for software.
- [Kevin Hartman] The last type of license agreements
are trademark agreements.
Trademarks are the names and designs that identify a brand.
UCSF's logo itself is regulated under trademark.
But what branding might faculty need to be trademarked?
- [Todd Pazdera] Trademark is probably the category
we license the least.
But for us it would be maybe a faculty member.
Especially with software,
they might be calling it something, right?
They might have some sort of acronym or something
that they're using in connection with the software.
And it's possible for us to try to trademark that name
and that could provide value to the company as well.
And we could license that.
- [Kevin Hartman] So the office of technology management
sets up the agreements that allow other parties
to use various forms of UCSF intellectual property.
Todd explains the process they go through
on behalf of the scientists.
- [Todd Pazdera] The first thing that we typically do
is we negotiate terms for the agreement.
And usually that focuses on the financial terms.
We develop those terms using a variety of methods.
The simplest of the methods is to look at
other deals in similar space.
We also use a number of business related methodologies
like calculating at present values of
future potential revenues,
from the potential products that are made.
That can often be difficult depending on
what stage the technology is in.
In many cases we are licensing
earlier stage technologies.
One of our goals to move towards
further developing those technologies in-house
so that they have increased value
before we go out and market them.
- [Kevin Hartman] While financial terms are critical,
there are important non financial terms as well.
Diligence is another key component for us
outside of the financial terms.
Diligence is making sure that the licensee
is developing products in a timely manner
so that they're meeting specific milestones
that are set out in the agreement.
Again if its therapeutic that they're reaching Phase One
by a particular point.
They're reaching Phase Two
by a particular point.
And so on and so forth.
We don't want anyone shelving university technology.
We're not in the business of licensing patent rights simply
to make some money and have a company put them on the shelf.
We want those patent rights to be used
to protect a particular product
that's going to make it to market and help patients.
- [Kevin Hartman] The process doesn't end
once the terms have been settled.
The OTM or other tech transfer office,
will take a role between maintaining the agreements
between academia and industry.
- [Todd Pazdera] I have some licensees where it's like
you do the license and they send a report every year
and maybe you see them in a meeting
and you get a little update and you say 'hi'.
I have other licensees where I'm involved on a regular basis
in patent strategy discussions.
Maybe there's adjustments that
need to be made to the license
that are being requested by the licensee,
maybe there's new IP that's come out
that could beneficial to the existing licensee,
so you have to either amend the license
or do a new license agreement.
You obviously have to monitor the agreement,
like payments.
Making sure the diligence is being met.
- [Kevin Hartman] In all, license agreements are
one of the ways to make sure that
research done at UCSF has real impact.
While both parties in these partnerships want
to make scientific discoveries,
there are very different attitudes
between industry and academia
on how discoveries should be publicized.
Todd works on behalf of the scientists at UCSF
to protect their interests.
- [Todd Pazdera] Publication is the corner stone
of an academic scientist
so everything we do
is done in a way to ensure that
our scientists can publish.
Sometimes we have to work out some unique mechanisms,
if you will, to make sure that we can publish
and that the partner feels comfortable.
Let's say that the partnership
has gotten to the point where,
we've identified a potential drug candidate that's going to
move forward into clinical trials.
That is something that we would want to
consider keeping under wraps
until patent application publishes.
Usually we come up with other mechanisms
to make sure that we can publish
such as publishing on what we call tool compounds,
so they're compounds that are related to the drug candidate
but not the drug candidate itself.
And those tool compounds have the same,
relatively the same, biological effects in the model systems
that are being studied at the scientific level.
So we can still publish on those.
We can still show the mechanism,
but we're not disclosing the actual
structure of the potential real drug.
- [Kevin Hartman] Despite distinct interests along
many of the terms of an agreement,
Todd makes sure that the overall partnerships formed
are mutually beneficial.
- [Todd Pazdera] Everything is a negotiation,
that's what makes our job.
To me that's what makes our job so fun.
To me it's all about negotiation and coming to terms
that both parties feel are fair and reasonable.
- [Kevin Hartman] Partnerships of this sort
are allowed two separate entities
to use their special expertise in a productive way.
In the case of industry academic partnerships
the academic side typically handles
the basic research and discovery.
And the industry partner sees the product
through to development and commercialization.
We thanked Todd for sharing with us his role
in setting up collaborations
where the whole is greater than the sum of the parts.
Thank you for listening to Strategy for Scientists.
(gentle upbeat piano music)
If you're interested in learning more,
check out the online lectures co-produced by iBiology
and the UCSF Office of Career and Professional Development.
We would like to thank the Burroughs Welcome Fund,
and the NIH National Institute of General Medical Sciences,
NIGMS for grant funding.
Thanks also to the PRX Podcast Garage for the studio space
and helping us get started with this production.
Tune in here for more stories
about scientists using strategy.