Samuel Scofield 0:05
Well, thank you all for joining us right before dinner. Hopefully we will do too long. So today we're going to be chatting about technology transfer that is developed in the university and then you know, transferred into a spin out. And as we all know, you know, universities can be bastions for innovation and often play a critical, critical role in the innovation ecosystem. And many of the companies here are, you know, use us technology from university. So we'll be very relevant. So without further ado, I think we can get into introductions. So, Grace, would you like to introduce yourself? Sure.
Grace Katzschmann 0:46
So Grace catchman. I'm the Chief Operating Officer of Nanoflex, Robotics, tele robotics startup coming out of Switzerland. And we're a spin out from ETH Zurich, which is the leading research university in continental Europe. And before that, I was at geotech health in Boston. So I spent 12 years here in the US loved it. And it was one of those VCs where we were really just sourcing deals from academia, and building out to companies from scratch. And even before that, I did my graduate school at MIT, and spun out a company from that as well.
Jennifer Fried 1:24
Hi, I'm Jennifer Fried. I'm the CEO and co founder of Flow Medical, we just presented here about 30 minutes ago. So thanks for those of you that stuck around in this room. We are a spin out from University of Chicago, where I'm also adjunct faculty, and this is my second University of Chicago spit out. My first company was a surgery software company called ExplORer Surgical that we were also at LSI with a number of years ago. So going through it twice, you think it would get easier. I wish I could say that was the case. But still a lot of fun and great to be a part of the wonderful ACC institution.
Greg Fischer 2:05
Well, thank you for having me on the panel. I'm Greg Fisher. I'm the CEO and founder of AiM Medical Robotics. And we're bringing to market a MRI compatible surgical robot that's intended to allow real time MRI to be used during surgical procedures. And the whole purpose behind this is to be able to account for intraoperative brain shift and tissue shift that can and does happen during surgery. And it allows you to have substantially greater precision while at the same time reducing costs and improving efficiencies. This works based on about 15 years and about $15 million of NIH funded research that I lead SPI in an academic setting. So my PhD work was related to MRI guided interventions at Johns Hopkins, I had a faculty position at Worcester Polytechnic Institute, as we lead several large NIHR one grants related to putting MRI to guide surgical robots to use real time soft tissue imaging to guarantee you do these procedures, right. And then as of about a year ago, I took a role as CEO, and I've taken a leave of absence from the University and we have tech transfer agreement where we've exclusively licensed all this IP into the company. And then the last thing I want to mention also is while wearing my academic hat before shifting to the company, we started a large med tech accelerator called practice point headed by are funded by the state of Massachusetts. And where we dropped essentially an entire clinical environment, including an MRI scanner operating rooms, manufacturing environments in the engineering setting. And while I've passed the reins on leading that my company is actually situated in this so we have, you know, essentially our own MRI scanner down the hall from us, we can run animal studies, cadaver studies and do all of these types of things. It's been a really great partnership with the University.
Andrew Bochner 3:34
Hi, I'm Andrew Bochner. I'm the managing partner of Bochner PLLC. We're a law firm about 40 attorneys, I focus on licensing agreements, as well as portfolio development. Prior to this, I was General Counsel med tech company, made up mostly in licensed tech and dealt significantly with a variety of universities as well as a CEO that needed a lot of hand holding. And tried to take that today and give some pointers on it. What
Samuel Scofield 4:03
a great panel. So I guess I can introduce myself as well. So I'm Sam Schofield, I'm an investor a Good Growth Capital, we invest across the life sciences, but about 50% in medical technology 50% in biotechnology, we often invest at the earliest stages in companies the precede seed Series A. And typically, you know, we're investing in frequently, often in the academic spin out. So it's common that we're, we're thinking about this. And so, yeah, I think something like 20 to 30 of our companies or academic spin out, so yeah, great to be here. So I think one of the first things that might be great to just kind of set the stage with is, you know, what are some of the advantages you guys think about when, you know, developing new technologies, specifically in a university or academic setting?
Grace Katzschmann 4:56
I can start I mean, so for Nana affects robotics with spinning out of ETH Zurich. And we're in a great position where eth has its own accelerator called V Zurich. And so we literally moved 100 meters down the road from the lab where was invented. So I would say for us, like the access to infrastructure, and the access to expertise has been the two biggest things. It might seem small, but the fact that you have the bench tests that the PhD student has been developing for the last five years, right there in your reach, you don't have to try and replicate it. You don't have to try and find a CRO to replicate it. But you can just go right back to the lab. And, you know, do those experiments continuously, that saves so much time. And the other thing I really love is that a university is just a hotbed of like, intellects and ideas. And so we as a robotic system, we know, okay, we have our magnetic navigation technology, that's core. But in order to start doing tele robotics, and to start, you know, building out a whole new clinical workflow and things like that, it's going to take so much more partnership. And we've been able to find really great partners within the university to help us along. And I think, you know, there are other people on this panel that can also resonate with that. So that the best example I have right now is we need a new internet for our system to work. Right. Okay, the internet right now it works, but it's just not very reliable. So when you want to do robotic surgery, you just need to make sure, sorry, robotic surgery at distance, you got to make sure your internet's reliable, and it's secure. And we found out that a lab next door basically had its own spin out as well doing exactly this, and they've rolled it out for Swiss banking. And now, you know, were the perfect test case, to roll it out in the US as well. So I mean, that's just an example of one of the great partnerships that can come out from this cross disciplinary cross departmental collaborations in a university setting.
Jennifer Fried 7:13
Yeah, I think universities are a great breeding ground for new companies, especially in healthcare in the life sciences. And, you know, I came from the business school. And what I loved about University of Chicago, when I started my first company, when I was a graduate student there is they would create all these programs to say, let's take physicians and scientists and researchers from other parts of the university and connect them with business school students, so I could be the dumb MBA, that was working with all of these great inventors and scientists where they were taking their actual research or, you know, in our current case, actual patient care, and saying, let's innovate upon it. So I love it as a breeding ground for new ideas and taking people with different backgrounds and skill sets to put them together to build companies. And then there's, you know, so many opportunities, especially in terms of early stage funding, that's offered to early stage companies that are within a university setting, right? If you think about different government grants, University Grants, research grabs, I mean, this is an amazing place to, you know, start a new healthcare company.
Greg Fischer 8:16
Yes, I mean, there's certain things that engineering schools and universities are really good at. And there's certain things that companies are really good. And it's really important to have that that mix. So you know, when I give my pitch presentations, more often than not, I'm talking about the business side of things and the clinical side of things, it's really hard to put robots inside an MRI scanner. And actually, as an engineer, it pains me not to talk about it in all of these presentations. But that's what the last 20 years we've been working on doing this development, we've had substantial NIH funding, this is the kind of stuff that really goes really well on the university setting. But then when you get to the next trial of how do you get ready to do your IDs are getting ready for FDA approvals, or getting ready for clinical trials? That doesn't fit into the model very well of this is my PhD students dissertation project, right? It's a tremendous amount of time, there's not really a research component. So it's really good to understand what are the advantages of working with the University, we can solve a lot of these technical challenges. And then the company is really good at taking this, you know, semi kind of sort of working robot that was good enough to get publications and grants, and then take it to that next level of how do you actually make a clinically viable device and marketable device out of it. And then the other side of this not just partnering with engineering schools, but we've had really good luck partnering with the medical school. So the Brigham and Women's partner health at Brigham and Women's Hospital is one of our key partners, we're looking to do first in human trials there, but even just a lot of testing development. You mentioned grant proposals, right? All these things. There's huge opportunities. So working both with the medical schools and the engineering schools has been really instrumental for us.
Samuel Scofield 9:38
Andrew, just curious, because I know you work with, you know, a variety of different companies, whether they're academic spin outs or not, you know, what's your perspective on those that have, you know, IP that was generated from academic setting versus those that are company generated?
Andrew Bochner 9:55
I'd say that usually that first round of IP is pretty strong. A more so than from, let's say industry, it's backed by years and years of research, usually have an inventor that's very passionate about it in terms of the professor, whoever, the postdoc, whoever it may be. And the good university, the good tech transfer offices are often very supportive of taking that, and particularly in the US, licensing it out, trying to find the landing for that and hopefully getting it into industry.
Samuel Scofield 10:27
Yeah, so I guess that brings us to the next question, which, you know, I think there's, there's obviously technology that's being developed at universities. And we always think about, you know, as investors is this, is this technology? Is this a product? Is this a company? And so thinking about, you know, as that progresses, do you spin out? Or do you license to a big strategic, but I guess, in the case of all of your companies that have successfully spun out, you know, what's your advice around timing the spin out? What's the, you know, what's the best time? And how do you think about that process?
Grace Katzschmann 11:03
Yeah, I mean, I think there's a lot of people who have opined in this in this big question is a really key one. I think one thing, of course, is that they've identified the right application, right. So a lot of scientists, they have a core technology. And all they need to do for a publication, because you know, the incentives in academia is you get to a publication, and it just needs to look new, and it needs to look good for maybe say, one video, then, for a company, it doesn't necessarily have to be completely new. But it needs to be really repeatable. And is to be able to fill customers need, right, and it needs to be profitable. So for our technology, and magnetic navigation, we had proof of concepts from the research lab, and I in the womb, and blood vessels. And there were so many places where we could use this. And it took us a really long time actually to actually talk to clinicians, and talk to reimbursement to the payers to figure out what would be the sweet spot. So I mean, eventually, we settled on the application and stroke and magnetic navigation of devices into the brain to treat stroke. But, you know, identifying that correct application that was really crucial for us being able to go forward and to really have a focused plan.
Jennifer Fried 12:35
Yeah, I think there's, you know, clinical and development milestones, but also, you know, I think from the business side, oftentimes, it coincides when you're ready to have a full time CEO running the business. So you know, that generally comes when when you either have enough funding, or you're ready to go out and raise funding, because VCs, like, you generally like to see a full time CEO at the home of the business, you know, not somebody that's working on a company 20% of the time, they need to know who's running it. But you know, I think a lot of that comes with, hey, what have you done to de risk it? Right? So what research have you done? Do you feel that it's viable? Not from a clinical or scientific perspective? But, you know, is this a viable company, and we are we ready to go out and say we're going to put salaries and jobs at risk of the funding of the company versus just the funding of the research?
Greg Fischer 13:27
is, I mean, I think what I found is, you know, working in the university setting is this de risking, but to me, it's on the technical side. So and what we're doing is really a big jump from, you know, what's been done before, we're really using brand new technologies, everything from designing our own motors to our own motor drivers, the electronics, the navigation, the communication protocol, there's a complete new ground up from the, from the ground up system. So having something like this that's effectively technically de risked in the university setting, that means when you start to go to commercialize it, you can actually have a full end to end system that you can demonstrate, and now the company is focused on taking that and, and bringing it to that next level of how do you actually create a product out of it, and university side, and you may not spend as much time and figuring out what's the clinical need? What's the right application that we brought up here? So for us, you know, we've really started to narrow our focus on deep brain stimulation, we're actually in the academic side was focused on oncology, you know, ultimately, the robot can hit all of these, but which is the right, you know, first market, but just in general, I think the company is really good at taking these ideas and bringing them from what essentially the technical feasibility stage to commercial product.
Samuel Scofield 14:27
Yeah. And, Jennifer, I know you touched on it, just the, you know, the team is such a critical part. And you know, what investors are looking at, you know, you hear that again and again, and, you know, a professional CEO, when's the right time to bring that in? And I think, Greg, really interested to hear your perspective on this. As someone who you know, has an academic background and is an academic founder, you know, what do you what do you see as the role and obviously, there's different play books, but just be good to hear your perspective on this. So
Greg Fischer 14:58
for me, it was like this was the right Time. So so we've been working on this for quite a while. And we got to a point where it works. And I was just so enthusiastic, so excited about this. And you know, I've been a professor for the last 15 years, I'm a full tenured professor with grants and everything. And I took the completely from the university and jumped full time. And because I really believe that, look, this is the time the technology is there. But also, the market is ready for this right, you'll start to see a lot more interest in real time imaging, from a host of companies across the board. In fact, a lot of the companies here all about how can we use some sort of image guidance to guarantee you do these procedures, right, like, this is the right time to be doing this. So, you know, I was I was just really excited to really take this to the take this to the next level. So you know, it all comes down to like, what is the right timing and the right people. So we are still partnered with the University, we're actually based in the med tech accelerator that I found it even though I moved on. So it's nice that I'm still in that same active environment. You talked about that before. So I'm still working and at least seeing in the hallway, all the faculty. In fact, since I took over CEO, we've actually licensed three patents from a former colleague of mine, so that we can start expanding and ultrasound guided procedures as well. So I think just being in that environment is incredibly valuable. And we've also actually have two PhD students that are now through sponsored research agreement, effectively working for the company or doing r&d for the company. So I think there's a really good way to be working together on this. And
Samuel Scofield 16:16
and when you do, you know, stay on, which I think is a sort of a rare occurrence. We don't see that very often. But certainly a great one, I think, what what are what are some of the roles, you know, that companies need to think about for bringing, you know, outside help in what types of functions? If it's not, maybe it is a professional CEO? But if you're an academic founder, what type of support do you need, if you're going to stay on as a CEO? So
Jennifer Fried 16:43
company dependent, right. And, you know, I just want to clarify, my comment isn't to say everybody should have a separate outside CEO, I think companies should be founder led, right? I mean, the founders who invented the technology are going to be the ones that so innately understand the problem. They know it, I mean, it's in their heart, like this is what they want to build. But I also think every founding team, at a certain point is going to say, you know, what's in my wheelhouse and what's not, you know, where do I need support. So with my last company, which is a surgery software company, you know, I was a business school student, I had a background in venture and finance, my co founder was a surgeon, neither one of us had a technology background. And so our first hire was bringing in a chief technology officer that had this really deep software background. So I think it's all about you know, as a founding team, saying, Okay, where are our gaps, and being self aware enough to say we know what those gaps are. And let's bring in the best and brightest executives to come in and compliment our team. And that's, you know, what I think you start to see with some of these early stages, and you know, there are occasions where you're going to have multidisciplinary founders, sometimes it's going to be a very scientific team, you know, sometimes very physician heavy team, and then at different stages, you say, what else do we need? And you go out, and you find that, you know, talent.
Greg Fischer 18:04
I mean, I think you hit the nail on the head there of really being self aware, and understanding what you what you know, and what you don't know. And I think this is where some, you know, faculty led startups may have trouble where you think, you know, everything. I mean, it's been really valuable finding the right people to help us and finding the right you know, business people finding the right clinical partners, find the right manufacturing partners, it's you just need to be able to build the right team and be humble and realize, look, there are a lot of people that are experts in this and bringing together that all star team so that you can take it to that next level. Andrew,
Samuel Scofield 18:31
curious, when is the right time to bring in an IP attorney? And what do you see as kind of the major value of that for early stage companies? Well,
Andrew Bochner 18:42
from a university spin out, probably predates the company. So it's usually the university doing it. But obviously, at the licensing stage, or the spin out stage, so I think everyone here has spun out from unlicensed from their own academic institution, but just as much are people approaching another academic institution that they don't have involvement in? So you pretty much need an IP attorney, when you're doing that license and best not to go to your IP attorney two weeks before you want to sign and say, okay, you know, let's get going here. Because, as pretty much everyone knows, universities move at a glacial pace at best.
Samuel Scofield 19:23
So for the CEOs on the stage, what in your experience, what have investors, you know, typically looked for when evaluating your companies, as it pertains to, you know, the IP and the, you know, technology that's been developed at university?
Jennifer Fried 19:41
Start, I mean, I think, you know, for any company that's licensed or technology out of university, like you have to have a license agreement in the data room, right. So the investors are going to go in, they're going to want to see that they're going to see they're going to want to see the terms and the big thing they're going to be looking for are Hey, are there going to be any terms that are going to be a major problem down the road? Look for a strategic acquirer. So, you know, for us, like we brought in our own IP counsel very early to review that license agreement to know that, hey, we're probably still gonna end up modifying this down the road, right? They're almost never untouched, but you want to have that in place. And then I think also thinking about as a company, have you done enough to write what's your IP strategy. And so, for us, we thought it'd be really helpful to have our own IP counsel and work very closely with the University of Chicago's IP team, as we engage investors.
Grace Katzschmann 20:32
So I mean, going back to my experience with PureTech, health, which was spinning companies out of academia, I mean, investors, I think a lot of people in this room are familiar with what investors generally look for in a company. But for academic spinouts, in particular, I remember we would try and identify what was the killer experiment, right, which would either prove the hypothesis that the company had or just, you know, show us that it wasn't true at all. Sometimes it was around mechanism of action, sometimes it was around whether or not we would get enough bioavailability. But basically identifying what is the killer experiment we had to do. And then we would set up in SRA, a sponsored research agreement with that university, to first do that color experiment, right. And so it was a very easy way for us to, first of all, de risk the investment for us. But second of all, if the experiment work, there was often a chance, we could also get IP out of it. Because we were sponsoring the research. So I thought that was a, you know, a really unique way for a VC to be able to work with a university at that stage.
Greg Fischer 21:50
So we talked about the agreements. But I think in terms of what's actually contained in the IP, what I've seen is they're looking for both depth and breadth. And it's really important for to have, you know, very focused IP around, this is what you're building, really protecting exactly what you're making. But also, at least for us, it's very much a platform technology. And what people get excited about is, hey, it's not just a neuro robot, we actually have it around pretty much anywhere in the body, we want to be sticking needles inside an MRI scanner, right, and needle steering and all these things that may not actually apply to neurosurgery. But we're really useful for, you know, prostate, or spine or abdominal things like that. So I think this idea of being able to show that, look, you actually have an IP portfolio that's much broader, and, you know, you don't necessarily know what's going on behind, you know, in the brains of everybody that's reviewing, but they may see and they're had different applications beyond what you're doing. So what you see as your killer app, maybe the first application, but the these companies that you're partnering with may actually want to start doing something else. So I think it's really important to make sure you protect what you're making clear, you know, a moat around it to protect what you're doing, but also be able to cover more or less the entire platform or use cases that it could be applied to, I'll
Andrew Bochner 22:49
just add that that's usually also a flag, positive flag. But when companies take the license from the university, and then they add IP on top of it, that they're developing mo A's or use cases or something like that, and they've continued to develop, obviously, freedom to operate is critical. But also some of the key business terms like, you know, is there a rofan, that's going to take a year to play through when there's, when there's a potential acquisition on the table is the agreement assignable or sub licensable, those are all things that you're often going to want to look at. And some of those terms may not be something that you can do at the initial license, but knowing that that academic institution is actually pretty flexible, when it comes time to it, and they can move quickly is also important to investors as well.
Samuel Scofield 23:39
And Andrew, you know, in, in the diligence process with with investors, how, if at all, can an IP attorney assist in that process?
Andrew Bochner 23:51
Well, obviously, freedom to operate is the biggest key to all of that, you know, knowing that the company doesn't have infringement risk or has modified infringement risk, also, knowing what the landscape is like. And again, just because this happens all the time, not doing that when the deal is on the table, but having that you know, ready to go when the company is starting to shop for investment and things like that having all the basic documents in a row like have inventors actually assigned all the rights to the company. One thing that comes up, we're talking about founder led companies is investors want to see that there's, the founders actually assign the rights, not that they Adam Newman did like we work and kept it for themselves. But you know, that they've they've assigned that and there's a plan that if let's say the CEO goes back to academia, they agree to cooperate. There's some sort of employment agreement around that.
Samuel Scofield 24:48
And this for anyone who wants to take it, you know, what, what advice do you have for CEOs in terms of the kind of best practices around license agreements?
Greg Fischer 24:57
I mean, I can say for us, one of the things that was really important is making sure that they really want to see the company succeed and structure the licenses in a way that's going to make the company, you know, grow, you don't want a company that you don't want a license agreement that's essentially going to kill the company with fees, you know, upfront. So I know when we set up ours, it was set up in such a stage where there's very little upfront costs, and even the patent reimbursement expenses more than half until you hit certain milestones. And, and the royalties need to be at a point where minimum royalties, for example, not kicking in for a couple of years, I think we had three years before minimum royalties kicked in and things like that. It's a lot ways. It's a way to let the company start really growing, without that burdening it until you get a little bit further down the road. So I think that's a biggie. And then the other one is making sure you have the sub licensing agreements, because that's something I've certainly seen interested in a lot of folks have asked about, so definitely make sure that's in there,
Grace Katzschmann 25:45
all of that and making sure you get an exclusive global rate to use.
Jennifer Fried 25:51
That's the point. Yes, we'll be on and as Andrew, what are your secrets to going faster?
Andrew Bochner 25:58
Well, I think it's, again, knowing the university it's a little counterintuitive, but the top universities are the ones that are most proficient at it. And they've built good tech transfer offices that know how to move. When you look at at sort of your your B league or Sealy universities that don't have robust tech transfer offices. They're actually greedier, and they don't know the process. And I had one few months ago, that was a year and a half from when we started negotiations. And they were just too greedy. And you know, the answer is now they're left with an asset they can't do anything with because my client just walked away from it. So know who you're getting into bed with, know that you're going to have to there's no perfect license, you're always going to have to go back and renegotiate things, but have a an internal process for doing that. And, you know, know that when things pick up, it's time to pick up and go to the university and say, Hey, we're thinking of doing this? Can we start the discussion? Yeah,
Samuel Scofield 26:55
that's great. So I think, you know, let's dive in there a little bit more on kind of the tech transfer offices, you know, I think when when people talk about tech transfer offices, you know, it's, it's often the Stanford's in the MIT's of the world. And, you know, the really sophisticated tech transfer offices, but you know, as much as there's great technology being developed at those institutions, there's also great technology being developed it, you know, other institutions. So, you know, what are some of the challenges associated with working with some of these groups, and any advice on navigating those
Greg Fischer 27:36
I mean, I can just say, from our experience, it's important to really know what you want going into this, and you can help lead it. And in fact, with some of the smaller universities, you might actually in some cases have more control over that, because they're not necessarily going to have these boilerplate agreements, and they're willing to be more flexible. But you definitely need to know what's important to you when you're going into these agreements, and make sure you negotiate that.
Jennifer Fried 27:56
I think we all pause, because even though we're here on the panel, we still have some PTSD about going through this process. So I wish there was a magic wand. But you know, I think a lot of the advices that was shared, you know, really applies here of, you know, going in knowing who you're working with, and having some patience to,
Andrew Bochner 28:18
I'll add two things. One is speak to people who have dealt with that university before know what made them tick, what they didn't. You know, at the end of the day, there's a tech tramp tech transfer officer on the other side, and you know, one office might have one person, that's amazing. And one person that sucks. And, you know, no, no, what it is that they like, some are just inflexible on certain terms. And I will say this, that lawyers are the worst offenders of this, get on the phone, don't email, you know, just talk through the issues understand the why they're digging in, as opposed to just seeing them dig in on a term. And maybe it's something you can talk through. But oftentimes, phone calls, even face to face can help get through a lot of that. Yeah, I
Grace Katzschmann 29:00
think, you know, looking between when comparing comparing different tech transfer offices, one big thing to know is how much power that the professor usually have in those negotiations. I think Andrew has lots of experience. Yeah, but in my experience, if the professor has a lot of sway, I mean, it usually goes quite easy in the end, like, as long as the professor as a co founder, he's motivated to get this technology out of the lab, there's usually a way you can get through if the university really respects what the professor wants. If not, then yeah, it's kind of a uphill battle.
Samuel Scofield 29:40
Yeah, in Greece, I think it'd be interesting for the audience to hear obviously, you know, spun out of a European based institution. And so I think, curious to hear kind of what you understand to be kind of some of the differences between, you know, North American startups that come out of American Universities and what are some of those locations?
Grace Katzschmann 30:01
Yeah, I mean, I think the biggest thing, honestly, for me is the more conservative culture. In Europe, I mean, I, my experience is limited to Switzerland, right. But typically in Europe, you get smaller funding rounds, lower valuation, I actually I actually had an investor say to me, a US investors data media, the day when I was pitching, say, Oh, we usually go to Europe for a discount. And that's, that's what she said after we told her our valuation. So, you know, the conservative culture can make things more difficult and fundraising. But on the other hand, what I've noticed is that, by the time the technology gets spun out at a university, it's also a lot more mature, because they know they have so much more proof points that they have to meet in order to get people to invest. So interestingly enough, I think in Switzerland, for the startups, that the rate of them succeeding is almost double that of in the US. And I wonder if that's actually yeah, if that's actually due to the conservative nature, right, that they know that before they go out there and start asking for money, they have to really have like a fully fleshed out concept, in order to attract that funding. So I would say, you know, the pros and cons to it. But in my experience, at least at Nanoflex, Robotics, when we came out, it was a fully functional prototype, they had done preclinical trials, there was a huge IP portfolio behind it. And that's really helped us to accelerate much faster than I think a robotic startup in the US typically would have at our age.
Samuel Scofield 31:52
So Andrew, I'd be curious, just from the perspective of seeing lots of companies go through this process of spinning out and licensing IP, do you have any examples where things things went wrong? And something that the audience can learn from? From those lessons? Yeah.
Andrew Bochner 32:10
I'd say, well, often at the first agreement stage, companies are often worried, scared to negotiate, they think that the deal is gonna blow up, the university might walk away, or even in their first deal with, with industry, whether it's a bigger company, they're afraid to push for what's important for them. And don't be afraid to do that. This is not You're not going to hurt someone's feelings. Usually, they just say no. So I'd say, getting a little bit outside the comfort zone is important. I think also, as I said before, getting ahead of the curve. So in terms of timing, realizing that especially with tech transfer offices, everything takes time. So if you know you're going to do something, and six months from now having a plan because they don't sign those in a month. Those are probably the two most important things I would flag.
Samuel Scofield 33:05
So I'm curious when when you think about industry partnerships, you know, you're you're focused at an early stage on working with the, you know, the university to make sure that you have control over the IP, when is the right time to consider industry partnerships? And how do you think about that versus an academic partnership?
Greg Fischer 33:30
I think it depends on what kind of industry partnership you're talking about. I mean, some industry partnerships are much more like an r&d relationship, right. So that's something that as a faculty member, we'd be very comfortable with. In fact, I'm very, very interested in doing some co development deals, and essentially r&d contracts working with large strategic companies, because that's the kind of things that we're actually very comfortable with. So it's a little bit different than the university side where they're, you're really trying to develop the technology. Now it's more about taking that technology and making it for a specific application. But you know, if you can find a partner that you want to work with, I mean, that's really going to drive you towards something that you know, is going to be a really good killer app, because they wouldn't be pushing you in that direction. And wanting to do that if they they didn't see value in that.
Jennifer Fried 34:08
I think in general, in early stage med tech company like engaging with industry early and often across the spectrum and ways to partner with them. And you know, one example relative into this conversation is when we were looking at our license for Flow Medical, which is my new company, which is a P E thrombolysis catheter, I actually called some of my contacts in corporate development at some of the big cardiology companies. And I said, Can you help provide me with perspective as a friend on some of these terms, and it was very helpful because they were able to go through the license and say, Hey, this all looks pretty good. But here are the two things that would cause me a lot of pause if I were in the situation of acquiring it. And that's where I was able to pick up the phone and talk to the tech transfer office and say, here's the perspective I'm getting you know, we're all aligned and that we want to see a successful exit we want to see this, you know, be a structure that works. Let's talk through these specific terms. So I think, you know, experienced folks in industry can be incredibly valuable from, you know, Day Zero.
Samuel Scofield 35:09
Alrighty, I think we are at time so I appreciate everyone for taking the time at the end of the day and I'd like to thank my panel as well. You
Biotech and medtech strategy and operations professional with strong analytical skills and experience spanning seed-stage to late-stage drug and product development. Highly adaptable to the needs of an organization, having worked across multiple functions including discovery R&D, non-clinical, business development, corporate development and program management. Background in entrepreneurship and venture capital with a Ph.D. in Health Sciences and Technology from Massachusetts Institute of Technology.
Biotech and medtech strategy and operations professional with strong analytical skills and experience spanning seed-stage to late-stage drug and product development. Highly adaptable to the needs of an organization, having worked across multiple functions including discovery R&D, non-clinical, business development, corporate development and program management. Background in entrepreneurship and venture capital with a Ph.D. in Health Sciences and Technology from Massachusetts Institute of Technology.
I recently joined Flow Medical as CEO and Co-Founder, where we are developing a next-generation thrombolysis catheter to treat pulmonary embolism. Learn more at www.flowmedical.co!
Previously, I was the co-founder and CEO of Explorer Surgical, a digital playbook for the operating room and procedure suites. Explorer Surgical was founded at the University of Chicago in 2015 out of a research laboratory in the Department of Surgery. After raising $10M in funding and commercializing our software to a global base of medtech and hospital customers, our company was acquired by GHX in 2021.
My passion is building innovative businesses in the healthcare industry, especially those that use technology to solve inefficiencies and improve patient care. I invest personal capital as well as institutional as a Partner in Portfolia's FemTech Fund and as a GP at The Fund Midwest.
I recently joined Flow Medical as CEO and Co-Founder, where we are developing a next-generation thrombolysis catheter to treat pulmonary embolism. Learn more at www.flowmedical.co!
Previously, I was the co-founder and CEO of Explorer Surgical, a digital playbook for the operating room and procedure suites. Explorer Surgical was founded at the University of Chicago in 2015 out of a research laboratory in the Department of Surgery. After raising $10M in funding and commercializing our software to a global base of medtech and hospital customers, our company was acquired by GHX in 2021.
My passion is building innovative businesses in the healthcare industry, especially those that use technology to solve inefficiencies and improve patient care. I invest personal capital as well as institutional as a Partner in Portfolia's FemTech Fund and as a GP at The Fund Midwest.
Gregory Fischer has spent his career developing innovative technologies for image-guided surgical interventions. He is a pioneer in MRI-compatible surgical robotics capable of utilizing real-time images from inside the body to guide precision robot-assisted interventions. Dr. Fischer is a Founder and the CEO of AiM Medical Robotics, a company leveraging technology from his team's prior NIH-funded research to revolutionize the neurosurgery experience. Dr. Fischer has been the William Smith Dean’s Professor of Robotics Engineering at Worcester Polytechnic Institute (WPI) and PI of the Automation and Interventional Medicine Robotics Research Laboratory (AIM Lab). His research focus has been on medical robotics, specifically the use of real-time feedback to guide surgical procedures. He was the Founding Director of the PracticePoint Research and Development Center for Healthcare Cyber-physical Systems, a state-supported Medtech accelerator with advanced point-of-practice clinical testing facilities including an OR and 3T MRI suite dedicated to research and product development. Dr. Fischer is also a Senior Member of the National Academy of Inventors.
Gregory Fischer has spent his career developing innovative technologies for image-guided surgical interventions. He is a pioneer in MRI-compatible surgical robotics capable of utilizing real-time images from inside the body to guide precision robot-assisted interventions. Dr. Fischer is a Founder and the CEO of AiM Medical Robotics, a company leveraging technology from his team's prior NIH-funded research to revolutionize the neurosurgery experience. Dr. Fischer has been the William Smith Dean’s Professor of Robotics Engineering at Worcester Polytechnic Institute (WPI) and PI of the Automation and Interventional Medicine Robotics Research Laboratory (AIM Lab). His research focus has been on medical robotics, specifically the use of real-time feedback to guide surgical procedures. He was the Founding Director of the PracticePoint Research and Development Center for Healthcare Cyber-physical Systems, a state-supported Medtech accelerator with advanced point-of-practice clinical testing facilities including an OR and 3T MRI suite dedicated to research and product development. Dr. Fischer is also a Senior Member of the National Academy of Inventors.
Specialties: Patent, Trademark, Intellectual Property, Due Diligence, Licensing, Litigation
Specialties: Patent, Trademark, Intellectual Property, Due Diligence, Licensing, Litigation
Samuel Scofield 0:05
Well, thank you all for joining us right before dinner. Hopefully we will do too long. So today we're going to be chatting about technology transfer that is developed in the university and then you know, transferred into a spin out. And as we all know, you know, universities can be bastions for innovation and often play a critical, critical role in the innovation ecosystem. And many of the companies here are, you know, use us technology from university. So we'll be very relevant. So without further ado, I think we can get into introductions. So, Grace, would you like to introduce yourself? Sure.
Grace Katzschmann 0:46
So Grace catchman. I'm the Chief Operating Officer of Nanoflex, Robotics, tele robotics startup coming out of Switzerland. And we're a spin out from ETH Zurich, which is the leading research university in continental Europe. And before that, I was at geotech health in Boston. So I spent 12 years here in the US loved it. And it was one of those VCs where we were really just sourcing deals from academia, and building out to companies from scratch. And even before that, I did my graduate school at MIT, and spun out a company from that as well.
Jennifer Fried 1:24
Hi, I'm Jennifer Fried. I'm the CEO and co founder of Flow Medical, we just presented here about 30 minutes ago. So thanks for those of you that stuck around in this room. We are a spin out from University of Chicago, where I'm also adjunct faculty, and this is my second University of Chicago spit out. My first company was a surgery software company called ExplORer Surgical that we were also at LSI with a number of years ago. So going through it twice, you think it would get easier. I wish I could say that was the case. But still a lot of fun and great to be a part of the wonderful ACC institution.
Greg Fischer 2:05
Well, thank you for having me on the panel. I'm Greg Fisher. I'm the CEO and founder of AiM Medical Robotics. And we're bringing to market a MRI compatible surgical robot that's intended to allow real time MRI to be used during surgical procedures. And the whole purpose behind this is to be able to account for intraoperative brain shift and tissue shift that can and does happen during surgery. And it allows you to have substantially greater precision while at the same time reducing costs and improving efficiencies. This works based on about 15 years and about $15 million of NIH funded research that I lead SPI in an academic setting. So my PhD work was related to MRI guided interventions at Johns Hopkins, I had a faculty position at Worcester Polytechnic Institute, as we lead several large NIHR one grants related to putting MRI to guide surgical robots to use real time soft tissue imaging to guarantee you do these procedures, right. And then as of about a year ago, I took a role as CEO, and I've taken a leave of absence from the University and we have tech transfer agreement where we've exclusively licensed all this IP into the company. And then the last thing I want to mention also is while wearing my academic hat before shifting to the company, we started a large med tech accelerator called practice point headed by are funded by the state of Massachusetts. And where we dropped essentially an entire clinical environment, including an MRI scanner operating rooms, manufacturing environments in the engineering setting. And while I've passed the reins on leading that my company is actually situated in this so we have, you know, essentially our own MRI scanner down the hall from us, we can run animal studies, cadaver studies and do all of these types of things. It's been a really great partnership with the University.
Andrew Bochner 3:34
Hi, I'm Andrew Bochner. I'm the managing partner of Bochner PLLC. We're a law firm about 40 attorneys, I focus on licensing agreements, as well as portfolio development. Prior to this, I was General Counsel med tech company, made up mostly in licensed tech and dealt significantly with a variety of universities as well as a CEO that needed a lot of hand holding. And tried to take that today and give some pointers on it. What
Samuel Scofield 4:03
a great panel. So I guess I can introduce myself as well. So I'm Sam Schofield, I'm an investor a Good Growth Capital, we invest across the life sciences, but about 50% in medical technology 50% in biotechnology, we often invest at the earliest stages in companies the precede seed Series A. And typically, you know, we're investing in frequently, often in the academic spin out. So it's common that we're, we're thinking about this. And so, yeah, I think something like 20 to 30 of our companies or academic spin out, so yeah, great to be here. So I think one of the first things that might be great to just kind of set the stage with is, you know, what are some of the advantages you guys think about when, you know, developing new technologies, specifically in a university or academic setting?
Grace Katzschmann 4:56
I can start I mean, so for Nana affects robotics with spinning out of ETH Zurich. And we're in a great position where eth has its own accelerator called V Zurich. And so we literally moved 100 meters down the road from the lab where was invented. So I would say for us, like the access to infrastructure, and the access to expertise has been the two biggest things. It might seem small, but the fact that you have the bench tests that the PhD student has been developing for the last five years, right there in your reach, you don't have to try and replicate it. You don't have to try and find a CRO to replicate it. But you can just go right back to the lab. And, you know, do those experiments continuously, that saves so much time. And the other thing I really love is that a university is just a hotbed of like, intellects and ideas. And so we as a robotic system, we know, okay, we have our magnetic navigation technology, that's core. But in order to start doing tele robotics, and to start, you know, building out a whole new clinical workflow and things like that, it's going to take so much more partnership. And we've been able to find really great partners within the university to help us along. And I think, you know, there are other people on this panel that can also resonate with that. So that the best example I have right now is we need a new internet for our system to work. Right. Okay, the internet right now it works, but it's just not very reliable. So when you want to do robotic surgery, you just need to make sure, sorry, robotic surgery at distance, you got to make sure your internet's reliable, and it's secure. And we found out that a lab next door basically had its own spin out as well doing exactly this, and they've rolled it out for Swiss banking. And now, you know, were the perfect test case, to roll it out in the US as well. So I mean, that's just an example of one of the great partnerships that can come out from this cross disciplinary cross departmental collaborations in a university setting.
Jennifer Fried 7:13
Yeah, I think universities are a great breeding ground for new companies, especially in healthcare in the life sciences. And, you know, I came from the business school. And what I loved about University of Chicago, when I started my first company, when I was a graduate student there is they would create all these programs to say, let's take physicians and scientists and researchers from other parts of the university and connect them with business school students, so I could be the dumb MBA, that was working with all of these great inventors and scientists where they were taking their actual research or, you know, in our current case, actual patient care, and saying, let's innovate upon it. So I love it as a breeding ground for new ideas and taking people with different backgrounds and skill sets to put them together to build companies. And then there's, you know, so many opportunities, especially in terms of early stage funding, that's offered to early stage companies that are within a university setting, right? If you think about different government grants, University Grants, research grabs, I mean, this is an amazing place to, you know, start a new healthcare company.
Greg Fischer 8:16
Yes, I mean, there's certain things that engineering schools and universities are really good at. And there's certain things that companies are really good. And it's really important to have that that mix. So you know, when I give my pitch presentations, more often than not, I'm talking about the business side of things and the clinical side of things, it's really hard to put robots inside an MRI scanner. And actually, as an engineer, it pains me not to talk about it in all of these presentations. But that's what the last 20 years we've been working on doing this development, we've had substantial NIH funding, this is the kind of stuff that really goes really well on the university setting. But then when you get to the next trial of how do you get ready to do your IDs are getting ready for FDA approvals, or getting ready for clinical trials? That doesn't fit into the model very well of this is my PhD students dissertation project, right? It's a tremendous amount of time, there's not really a research component. So it's really good to understand what are the advantages of working with the University, we can solve a lot of these technical challenges. And then the company is really good at taking this, you know, semi kind of sort of working robot that was good enough to get publications and grants, and then take it to that next level of how do you actually make a clinically viable device and marketable device out of it. And then the other side of this not just partnering with engineering schools, but we've had really good luck partnering with the medical school. So the Brigham and Women's partner health at Brigham and Women's Hospital is one of our key partners, we're looking to do first in human trials there, but even just a lot of testing development. You mentioned grant proposals, right? All these things. There's huge opportunities. So working both with the medical schools and the engineering schools has been really instrumental for us.
Samuel Scofield 9:38
Andrew, just curious, because I know you work with, you know, a variety of different companies, whether they're academic spin outs or not, you know, what's your perspective on those that have, you know, IP that was generated from academic setting versus those that are company generated?
Andrew Bochner 9:55
I'd say that usually that first round of IP is pretty strong. A more so than from, let's say industry, it's backed by years and years of research, usually have an inventor that's very passionate about it in terms of the professor, whoever, the postdoc, whoever it may be. And the good university, the good tech transfer offices are often very supportive of taking that, and particularly in the US, licensing it out, trying to find the landing for that and hopefully getting it into industry.
Samuel Scofield 10:27
Yeah, so I guess that brings us to the next question, which, you know, I think there's, there's obviously technology that's being developed at universities. And we always think about, you know, as investors is this, is this technology? Is this a product? Is this a company? And so thinking about, you know, as that progresses, do you spin out? Or do you license to a big strategic, but I guess, in the case of all of your companies that have successfully spun out, you know, what's your advice around timing the spin out? What's the, you know, what's the best time? And how do you think about that process?
Grace Katzschmann 11:03
Yeah, I mean, I think there's a lot of people who have opined in this in this big question is a really key one. I think one thing, of course, is that they've identified the right application, right. So a lot of scientists, they have a core technology. And all they need to do for a publication, because you know, the incentives in academia is you get to a publication, and it just needs to look new, and it needs to look good for maybe say, one video, then, for a company, it doesn't necessarily have to be completely new. But it needs to be really repeatable. And is to be able to fill customers need, right, and it needs to be profitable. So for our technology, and magnetic navigation, we had proof of concepts from the research lab, and I in the womb, and blood vessels. And there were so many places where we could use this. And it took us a really long time actually to actually talk to clinicians, and talk to reimbursement to the payers to figure out what would be the sweet spot. So I mean, eventually, we settled on the application and stroke and magnetic navigation of devices into the brain to treat stroke. But, you know, identifying that correct application that was really crucial for us being able to go forward and to really have a focused plan.
Jennifer Fried 12:35
Yeah, I think there's, you know, clinical and development milestones, but also, you know, I think from the business side, oftentimes, it coincides when you're ready to have a full time CEO running the business. So you know, that generally comes when when you either have enough funding, or you're ready to go out and raise funding, because VCs, like, you generally like to see a full time CEO at the home of the business, you know, not somebody that's working on a company 20% of the time, they need to know who's running it. But you know, I think a lot of that comes with, hey, what have you done to de risk it? Right? So what research have you done? Do you feel that it's viable? Not from a clinical or scientific perspective? But, you know, is this a viable company, and we are we ready to go out and say we're going to put salaries and jobs at risk of the funding of the company versus just the funding of the research?
Greg Fischer 13:27
is, I mean, I think what I found is, you know, working in the university setting is this de risking, but to me, it's on the technical side. So and what we're doing is really a big jump from, you know, what's been done before, we're really using brand new technologies, everything from designing our own motors to our own motor drivers, the electronics, the navigation, the communication protocol, there's a complete new ground up from the, from the ground up system. So having something like this that's effectively technically de risked in the university setting, that means when you start to go to commercialize it, you can actually have a full end to end system that you can demonstrate, and now the company is focused on taking that and, and bringing it to that next level of how do you actually create a product out of it, and university side, and you may not spend as much time and figuring out what's the clinical need? What's the right application that we brought up here? So for us, you know, we've really started to narrow our focus on deep brain stimulation, we're actually in the academic side was focused on oncology, you know, ultimately, the robot can hit all of these, but which is the right, you know, first market, but just in general, I think the company is really good at taking these ideas and bringing them from what essentially the technical feasibility stage to commercial product.
Samuel Scofield 14:27
Yeah. And, Jennifer, I know you touched on it, just the, you know, the team is such a critical part. And you know, what investors are looking at, you know, you hear that again and again, and, you know, a professional CEO, when's the right time to bring that in? And I think, Greg, really interested to hear your perspective on this. As someone who you know, has an academic background and is an academic founder, you know, what do you what do you see as the role and obviously, there's different play books, but just be good to hear your perspective on this. So
Greg Fischer 14:58
for me, it was like this was the right Time. So so we've been working on this for quite a while. And we got to a point where it works. And I was just so enthusiastic, so excited about this. And you know, I've been a professor for the last 15 years, I'm a full tenured professor with grants and everything. And I took the completely from the university and jumped full time. And because I really believe that, look, this is the time the technology is there. But also, the market is ready for this right, you'll start to see a lot more interest in real time imaging, from a host of companies across the board. In fact, a lot of the companies here all about how can we use some sort of image guidance to guarantee you do these procedures, right, like, this is the right time to be doing this. So, you know, I was I was just really excited to really take this to the take this to the next level. So you know, it all comes down to like, what is the right timing and the right people. So we are still partnered with the University, we're actually based in the med tech accelerator that I found it even though I moved on. So it's nice that I'm still in that same active environment. You talked about that before. So I'm still working and at least seeing in the hallway, all the faculty. In fact, since I took over CEO, we've actually licensed three patents from a former colleague of mine, so that we can start expanding and ultrasound guided procedures as well. So I think just being in that environment is incredibly valuable. And we've also actually have two PhD students that are now through sponsored research agreement, effectively working for the company or doing r&d for the company. So I think there's a really good way to be working together on this. And
Samuel Scofield 16:16
and when you do, you know, stay on, which I think is a sort of a rare occurrence. We don't see that very often. But certainly a great one, I think, what what are what are some of the roles, you know, that companies need to think about for bringing, you know, outside help in what types of functions? If it's not, maybe it is a professional CEO? But if you're an academic founder, what type of support do you need, if you're going to stay on as a CEO? So
Jennifer Fried 16:43
company dependent, right. And, you know, I just want to clarify, my comment isn't to say everybody should have a separate outside CEO, I think companies should be founder led, right? I mean, the founders who invented the technology are going to be the ones that so innately understand the problem. They know it, I mean, it's in their heart, like this is what they want to build. But I also think every founding team, at a certain point is going to say, you know, what's in my wheelhouse and what's not, you know, where do I need support. So with my last company, which is a surgery software company, you know, I was a business school student, I had a background in venture and finance, my co founder was a surgeon, neither one of us had a technology background. And so our first hire was bringing in a chief technology officer that had this really deep software background. So I think it's all about you know, as a founding team, saying, Okay, where are our gaps, and being self aware enough to say we know what those gaps are. And let's bring in the best and brightest executives to come in and compliment our team. And that's, you know, what I think you start to see with some of these early stages, and you know, there are occasions where you're going to have multidisciplinary founders, sometimes it's going to be a very scientific team, you know, sometimes very physician heavy team, and then at different stages, you say, what else do we need? And you go out, and you find that, you know, talent.
Greg Fischer 18:04
I mean, I think you hit the nail on the head there of really being self aware, and understanding what you what you know, and what you don't know. And I think this is where some, you know, faculty led startups may have trouble where you think, you know, everything. I mean, it's been really valuable finding the right people to help us and finding the right you know, business people finding the right clinical partners, find the right manufacturing partners, it's you just need to be able to build the right team and be humble and realize, look, there are a lot of people that are experts in this and bringing together that all star team so that you can take it to that next level. Andrew,
Samuel Scofield 18:31
curious, when is the right time to bring in an IP attorney? And what do you see as kind of the major value of that for early stage companies? Well,
Andrew Bochner 18:42
from a university spin out, probably predates the company. So it's usually the university doing it. But obviously, at the licensing stage, or the spin out stage, so I think everyone here has spun out from unlicensed from their own academic institution, but just as much are people approaching another academic institution that they don't have involvement in? So you pretty much need an IP attorney, when you're doing that license and best not to go to your IP attorney two weeks before you want to sign and say, okay, you know, let's get going here. Because, as pretty much everyone knows, universities move at a glacial pace at best.
Samuel Scofield 19:23
So for the CEOs on the stage, what in your experience, what have investors, you know, typically looked for when evaluating your companies, as it pertains to, you know, the IP and the, you know, technology that's been developed at university?
Jennifer Fried 19:41
Start, I mean, I think, you know, for any company that's licensed or technology out of university, like you have to have a license agreement in the data room, right. So the investors are going to go in, they're going to want to see that they're going to see they're going to want to see the terms and the big thing they're going to be looking for are Hey, are there going to be any terms that are going to be a major problem down the road? Look for a strategic acquirer. So, you know, for us, like we brought in our own IP counsel very early to review that license agreement to know that, hey, we're probably still gonna end up modifying this down the road, right? They're almost never untouched, but you want to have that in place. And then I think also thinking about as a company, have you done enough to write what's your IP strategy. And so, for us, we thought it'd be really helpful to have our own IP counsel and work very closely with the University of Chicago's IP team, as we engage investors.
Grace Katzschmann 20:32
So I mean, going back to my experience with PureTech, health, which was spinning companies out of academia, I mean, investors, I think a lot of people in this room are familiar with what investors generally look for in a company. But for academic spinouts, in particular, I remember we would try and identify what was the killer experiment, right, which would either prove the hypothesis that the company had or just, you know, show us that it wasn't true at all. Sometimes it was around mechanism of action, sometimes it was around whether or not we would get enough bioavailability. But basically identifying what is the killer experiment we had to do. And then we would set up in SRA, a sponsored research agreement with that university, to first do that color experiment, right. And so it was a very easy way for us to, first of all, de risk the investment for us. But second of all, if the experiment work, there was often a chance, we could also get IP out of it. Because we were sponsoring the research. So I thought that was a, you know, a really unique way for a VC to be able to work with a university at that stage.
Greg Fischer 21:50
So we talked about the agreements. But I think in terms of what's actually contained in the IP, what I've seen is they're looking for both depth and breadth. And it's really important for to have, you know, very focused IP around, this is what you're building, really protecting exactly what you're making. But also, at least for us, it's very much a platform technology. And what people get excited about is, hey, it's not just a neuro robot, we actually have it around pretty much anywhere in the body, we want to be sticking needles inside an MRI scanner, right, and needle steering and all these things that may not actually apply to neurosurgery. But we're really useful for, you know, prostate, or spine or abdominal things like that. So I think this idea of being able to show that, look, you actually have an IP portfolio that's much broader, and, you know, you don't necessarily know what's going on behind, you know, in the brains of everybody that's reviewing, but they may see and they're had different applications beyond what you're doing. So what you see as your killer app, maybe the first application, but the these companies that you're partnering with may actually want to start doing something else. So I think it's really important to make sure you protect what you're making clear, you know, a moat around it to protect what you're doing, but also be able to cover more or less the entire platform or use cases that it could be applied to, I'll
Andrew Bochner 22:49
just add that that's usually also a flag, positive flag. But when companies take the license from the university, and then they add IP on top of it, that they're developing mo A's or use cases or something like that, and they've continued to develop, obviously, freedom to operate is critical. But also some of the key business terms like, you know, is there a rofan, that's going to take a year to play through when there's, when there's a potential acquisition on the table is the agreement assignable or sub licensable, those are all things that you're often going to want to look at. And some of those terms may not be something that you can do at the initial license, but knowing that that academic institution is actually pretty flexible, when it comes time to it, and they can move quickly is also important to investors as well.
Samuel Scofield 23:39
And Andrew, you know, in, in the diligence process with with investors, how, if at all, can an IP attorney assist in that process?
Andrew Bochner 23:51
Well, obviously, freedom to operate is the biggest key to all of that, you know, knowing that the company doesn't have infringement risk or has modified infringement risk, also, knowing what the landscape is like. And again, just because this happens all the time, not doing that when the deal is on the table, but having that you know, ready to go when the company is starting to shop for investment and things like that having all the basic documents in a row like have inventors actually assigned all the rights to the company. One thing that comes up, we're talking about founder led companies is investors want to see that there's, the founders actually assign the rights, not that they Adam Newman did like we work and kept it for themselves. But you know, that they've they've assigned that and there's a plan that if let's say the CEO goes back to academia, they agree to cooperate. There's some sort of employment agreement around that.
Samuel Scofield 24:48
And this for anyone who wants to take it, you know, what, what advice do you have for CEOs in terms of the kind of best practices around license agreements?
Greg Fischer 24:57
I mean, I can say for us, one of the things that was really important is making sure that they really want to see the company succeed and structure the licenses in a way that's going to make the company, you know, grow, you don't want a company that you don't want a license agreement that's essentially going to kill the company with fees, you know, upfront. So I know when we set up ours, it was set up in such a stage where there's very little upfront costs, and even the patent reimbursement expenses more than half until you hit certain milestones. And, and the royalties need to be at a point where minimum royalties, for example, not kicking in for a couple of years, I think we had three years before minimum royalties kicked in and things like that. It's a lot ways. It's a way to let the company start really growing, without that burdening it until you get a little bit further down the road. So I think that's a biggie. And then the other one is making sure you have the sub licensing agreements, because that's something I've certainly seen interested in a lot of folks have asked about, so definitely make sure that's in there,
Grace Katzschmann 25:45
all of that and making sure you get an exclusive global rate to use.
Jennifer Fried 25:51
That's the point. Yes, we'll be on and as Andrew, what are your secrets to going faster?
Andrew Bochner 25:58
Well, I think it's, again, knowing the university it's a little counterintuitive, but the top universities are the ones that are most proficient at it. And they've built good tech transfer offices that know how to move. When you look at at sort of your your B league or Sealy universities that don't have robust tech transfer offices. They're actually greedier, and they don't know the process. And I had one few months ago, that was a year and a half from when we started negotiations. And they were just too greedy. And you know, the answer is now they're left with an asset they can't do anything with because my client just walked away from it. So know who you're getting into bed with, know that you're going to have to there's no perfect license, you're always going to have to go back and renegotiate things, but have a an internal process for doing that. And, you know, know that when things pick up, it's time to pick up and go to the university and say, Hey, we're thinking of doing this? Can we start the discussion? Yeah,
Samuel Scofield 26:55
that's great. So I think, you know, let's dive in there a little bit more on kind of the tech transfer offices, you know, I think when when people talk about tech transfer offices, you know, it's, it's often the Stanford's in the MIT's of the world. And, you know, the really sophisticated tech transfer offices, but you know, as much as there's great technology being developed at those institutions, there's also great technology being developed it, you know, other institutions. So, you know, what are some of the challenges associated with working with some of these groups, and any advice on navigating those
Greg Fischer 27:36
I mean, I can just say, from our experience, it's important to really know what you want going into this, and you can help lead it. And in fact, with some of the smaller universities, you might actually in some cases have more control over that, because they're not necessarily going to have these boilerplate agreements, and they're willing to be more flexible. But you definitely need to know what's important to you when you're going into these agreements, and make sure you negotiate that.
Jennifer Fried 27:56
I think we all pause, because even though we're here on the panel, we still have some PTSD about going through this process. So I wish there was a magic wand. But you know, I think a lot of the advices that was shared, you know, really applies here of, you know, going in knowing who you're working with, and having some patience to,
Andrew Bochner 28:18
I'll add two things. One is speak to people who have dealt with that university before know what made them tick, what they didn't. You know, at the end of the day, there's a tech tramp tech transfer officer on the other side, and you know, one office might have one person, that's amazing. And one person that sucks. And, you know, no, no, what it is that they like, some are just inflexible on certain terms. And I will say this, that lawyers are the worst offenders of this, get on the phone, don't email, you know, just talk through the issues understand the why they're digging in, as opposed to just seeing them dig in on a term. And maybe it's something you can talk through. But oftentimes, phone calls, even face to face can help get through a lot of that. Yeah, I
Grace Katzschmann 29:00
think, you know, looking between when comparing comparing different tech transfer offices, one big thing to know is how much power that the professor usually have in those negotiations. I think Andrew has lots of experience. Yeah, but in my experience, if the professor has a lot of sway, I mean, it usually goes quite easy in the end, like, as long as the professor as a co founder, he's motivated to get this technology out of the lab, there's usually a way you can get through if the university really respects what the professor wants. If not, then yeah, it's kind of a uphill battle.
Samuel Scofield 29:40
Yeah, in Greece, I think it'd be interesting for the audience to hear obviously, you know, spun out of a European based institution. And so I think, curious to hear kind of what you understand to be kind of some of the differences between, you know, North American startups that come out of American Universities and what are some of those locations?
Grace Katzschmann 30:01
Yeah, I mean, I think the biggest thing, honestly, for me is the more conservative culture. In Europe, I mean, I, my experience is limited to Switzerland, right. But typically in Europe, you get smaller funding rounds, lower valuation, I actually I actually had an investor say to me, a US investors data media, the day when I was pitching, say, Oh, we usually go to Europe for a discount. And that's, that's what she said after we told her our valuation. So, you know, the conservative culture can make things more difficult and fundraising. But on the other hand, what I've noticed is that, by the time the technology gets spun out at a university, it's also a lot more mature, because they know they have so much more proof points that they have to meet in order to get people to invest. So interestingly enough, I think in Switzerland, for the startups, that the rate of them succeeding is almost double that of in the US. And I wonder if that's actually yeah, if that's actually due to the conservative nature, right, that they know that before they go out there and start asking for money, they have to really have like a fully fleshed out concept, in order to attract that funding. So I would say, you know, the pros and cons to it. But in my experience, at least at Nanoflex, Robotics, when we came out, it was a fully functional prototype, they had done preclinical trials, there was a huge IP portfolio behind it. And that's really helped us to accelerate much faster than I think a robotic startup in the US typically would have at our age.
Samuel Scofield 31:52
So Andrew, I'd be curious, just from the perspective of seeing lots of companies go through this process of spinning out and licensing IP, do you have any examples where things things went wrong? And something that the audience can learn from? From those lessons? Yeah.
Andrew Bochner 32:10
I'd say, well, often at the first agreement stage, companies are often worried, scared to negotiate, they think that the deal is gonna blow up, the university might walk away, or even in their first deal with, with industry, whether it's a bigger company, they're afraid to push for what's important for them. And don't be afraid to do that. This is not You're not going to hurt someone's feelings. Usually, they just say no. So I'd say, getting a little bit outside the comfort zone is important. I think also, as I said before, getting ahead of the curve. So in terms of timing, realizing that especially with tech transfer offices, everything takes time. So if you know you're going to do something, and six months from now having a plan because they don't sign those in a month. Those are probably the two most important things I would flag.
Samuel Scofield 33:05
So I'm curious when when you think about industry partnerships, you know, you're you're focused at an early stage on working with the, you know, the university to make sure that you have control over the IP, when is the right time to consider industry partnerships? And how do you think about that versus an academic partnership?
Greg Fischer 33:30
I think it depends on what kind of industry partnership you're talking about. I mean, some industry partnerships are much more like an r&d relationship, right. So that's something that as a faculty member, we'd be very comfortable with. In fact, I'm very, very interested in doing some co development deals, and essentially r&d contracts working with large strategic companies, because that's the kind of things that we're actually very comfortable with. So it's a little bit different than the university side where they're, you're really trying to develop the technology. Now it's more about taking that technology and making it for a specific application. But you know, if you can find a partner that you want to work with, I mean, that's really going to drive you towards something that you know, is going to be a really good killer app, because they wouldn't be pushing you in that direction. And wanting to do that if they they didn't see value in that.
Jennifer Fried 34:08
I think in general, in early stage med tech company like engaging with industry early and often across the spectrum and ways to partner with them. And you know, one example relative into this conversation is when we were looking at our license for Flow Medical, which is my new company, which is a P E thrombolysis catheter, I actually called some of my contacts in corporate development at some of the big cardiology companies. And I said, Can you help provide me with perspective as a friend on some of these terms, and it was very helpful because they were able to go through the license and say, Hey, this all looks pretty good. But here are the two things that would cause me a lot of pause if I were in the situation of acquiring it. And that's where I was able to pick up the phone and talk to the tech transfer office and say, here's the perspective I'm getting you know, we're all aligned and that we want to see a successful exit we want to see this, you know, be a structure that works. Let's talk through these specific terms. So I think, you know, experienced folks in industry can be incredibly valuable from, you know, Day Zero.
Samuel Scofield 35:09
Alrighty, I think we are at time so I appreciate everyone for taking the time at the end of the day and I'd like to thank my panel as well. You
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