Expert Details

Expert in Academic technology transfer, technology licensing, university IP policies, university-industry collaborations, IP management

Expert ID: 733817 Oregon, USA

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Expert likes to create value through commercialization, especially working with researchers and small companies on early-stage technologies. From assessing the technology and finding its niche in the market to creating strategies for intellectual property protection, funding, and strategic partnering. In addition, I work with universities and research institutions on optimizing intellectual property policy and technology transfer operations. Over the last several years I have been providing guidance and mentorship to startups and entrepreneurs regarding technology development and funding strategies.

Career Highlights:
 Ongoing training and mentoring in Singapore, China, Thailand, Saudi Arabia, and the United States.
 Co-organized the ASBAR World Forum, Riyadh.
 Launched a consulting practice in 2012.
 Startup CEO of a monoclonal antibody research tool company in 2013.
 Keynote presentations at conferences in Riyadh, Japan, Singapore, Taiwan, and India.
 President of the Association of University Technology Managers (AUTM) in 200x.
 Served on the AUTM Board of Directors from 2006 to 201x.
 Participated in the launch of more than 100 startup companies.
 Co-created and managed three university technology gap funds and early/seed stage funds.
 Secured $8.75m in grants to enhance the bioscience sector in Oregon.
 Testified before the U.S. Congressional Subcommittee on Technology and Innovation.
 Published commentary in Bloomberg Businessweek online and NCURA magazine.

Expert has either directly negotiated and drafted or guided his staff in negotiating and drafting numerous license, collaboration, research agreements, materials transfer agreements, investor rights and equity agreements.

Expert has also participated in the creation of over 100 startup companies in various fields including review of investor agreements, business plans and founders rights. The following are representative of the agreements and start up companies and ranged in value from $5,000 to over $25M.

• Myriad Genetics
• Cimmaron Software (acquired)
• Insutech
• Advanced MicroLabs
• Brotica
• Envirofit
• AMES Technologies
• Novacea (acquired)
• Yecuris
• GeneFac
• Gamma Therapeutics
• ThermaCom
• Neuroprotect
• MolecularMD
• ID Biopharma (OTRADI)
• VITI

Expert has drafted and assessed university intellectual property policies and related policies such as conflict of interest, startup policies, materials transfer etc.

Working for several institutions and small business to assess the commercial potential and application of innovations, develop strategies for advancing early-stage innovations, and valuing early-stage innovations, intellectual property, and small businesses.

Expert may consult nationally and internationally, and is also local to the following cities: Portland, Oregon - Eugene, Oregon - Salem, Oregon - Gresham, Oregon - Beaverton, Oregon - Hillsboro, Oregon - Springfield, Oregon - Vancouver, Washington

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Education

Year Degree Subject Institution
Year: 1989 Degree: Masters Subject: Pharmacy Administration Institution: University of Utah
Year: 1985 Degree: Bachelors Subject: Pharmacy (Honors) Institution: Birla Institute of Technology & Science

Work History

Years Employer Title Department Responsibilities
Years: 2012 to Present Employer: Undisclosed Title: President and Co-Founder Department: Responsibilities: • Working with university and government clients to create and implement licensing strategies, establish internal process for technology transfer, training, policy development, strategic planning, and innovation ecosystem development.
• Assisting small and medium size companies with fund raising, business plans, and product development.
• Co-organized the ASBAR World Forum in December 2016 in Riyadh – a conference focused on providing strategies to enhance the innovation ecosystem
• Clients in Asia, Middle East, U.S. and Chile.
• Reviewed proposals and conducting due diligence for funding company projects through Singapore’s SPRING program.
• Technology assessments and roadmaps for companies funded under the Small Business Innovative Research program at the National Institutes of Health.
• Acting Chief Executive Officer (April 2013 – October 2013) of a monoclonal antibody research tools company.
o Conducted preliminary market analysis and assessment of the business opportunity.
o Worked with investors and founding scientists to develop the business concept, and write a business plan.
o Negotiated license to acquire rights to antibodies and hybridomas from Oregon Health & Science University
o Negotiated a distributor agreement for the sale and distribution of product.
o Worked with the scientific founders to set up production, quality control and packaging protocols.
Years: 2014 to 2015 Employer: Foresight Science & Technology Title: Senior Vice President Department: Responsibilities: • Created a strategic plan for growing the company in partnership with senior management.
o Focus on capacity building in Hong Kong, Malaysia, Singapore, Middle East and India.
o Aligning company goals and strategies.
• Developed two new service lines based on a robust, market driven technology licensing and partnering program and a training and capacity building program for technology transfer offices and small and medium enterprises in Malaysia, Singapore and Thailand.
• Expanded new business opportunities in South East Asia, India, the Middle East and Europe.
• Grew the business to target small university technology transfer offices.
o Policy development and assessment.
o Providing technology transfer services.
o Training and capacity building.
o Licensing and partnerships.
• Managed Foresight programs at small universities and federal agencies.
• Proposal development for opportunities in technology transfer, technology assessment, technology licensing and partnerships and creation of technology transfer offices.
• Conducted research and technology assessments and valuations, business valuations and due diligence.
• Managed and conducted technology transfer training at universities, government agencies and small and medium enterprises for capacity building.
• Worked with small and medium enterprises to strategically assess technologies and intellectual property for commercialization, licensing and partnering.
Years: 2009 to 2012 Employer: Oregon Health & Science University Title: Assoc. Vice President/ Director Department: Responsibilities: • Co-created and operated under the Technology Transfer 3.0 business model. The model integrates research collaboration, commercialization, entrepreneurship, and alliances with industry to maximize returns by balancing short-term outcomes with long-term objectives.
• Worked with the vice president for research, vice president for technology transfer and business development and other university executives as part of the OHSU Leadership Team.
• Created and implemented strategic plans for the growth and expansion of the office and its staff as well as the merger of the Technology and Research Collaborations office with the Commercialization Strategies office to create the Technology Transfer and Business Development office.
• Served on a number of university committees to advance the commercialization function of the university. This included an ex-officio role on the Conflict of Interest Committee and the OHSU Stem Cell Research Oversight Committee.
• Increased industry sponsored research from $2.7 million to $18 million over seven years. Most notably, multi-year alliances with large and mid-sized pharmaceutical companies and companies such as Intel and FEI. In 2012, the office executed over 800 commercialization, industry sponsored research, MTAs and NDAs.
• Created the Innovation & Seed Fund at OHSU, a novel approach to address the “valley of death” encountered in technology and start-up development; participated in constructing legislation for the Oregon University Venture Development Fund modeled on the Innovation & Seed Fund.
• Developed the Springboard fund to assist OHSU startup companies and mentor faculty and student entrepreneurs.
• Helped launch 48 startups since 2004, 75% of which are located in Oregon and 13 of which have collectively raised over $25m in equity financing and SBIR/STTR between 2007 and 2012 Helped startup companies to identify and secure managerial talent, financing and facilities.
• Established relationships with local and state government agencies and trade associations.
• Obtained a five-year $3.5m grant from the Portland Development Commission (PDC) to develop infrastructure in the biotech sector.
• Worked closely with the PDC and Portland State University Research Foundation to create the “wet lab” accelerator.
• Developed the business plan for Oregon Translational Research and Drug Development Institute (OTRADI) and helped secure a $5.25m grant from the state to fund operations.
• Launched the OHSU Innovation Showcase, to promote innovation and entrepreneurship, which evolved to feature technologies from Oregon’s major research universities.
• Served on the Oregon Research Council as OHSU technology transfer and research representative.
• Streamlined operations of the office to increase efficiency through internal process re-engineering, effective use of template agreements and implementation of the OHSU Tech Portal for on-line processing of agreements.
• Mentored, facilitated and guided staff in negotiating licenses, collaborations and sponsored research agreements.
• Managed a staff of 20 plus (licensing, marketing, patenting, finance and administrative).
Years: 2008 to 2010 Employer: Association of University Technology Managers Title: President/ Board of Directors Department: Responsibilities: • Worked with the AUTM Board on patent reform, and other legislative and judicial issues; educate key officials and the U.S. Congress and administration regarding the importance of university research and technology transfer; and worked with the American Association of Universities, American Association of Medical Centers, Association of American Healthcare Centers, Bio Industry Organization and the Association of Public and Land Grant Universities on legislative issues.
• Testified at the Hearing on the Bayh-Dole Act, House of Representatives, Subcommittee of Technology and Innovation, Committee on Science and Technology, July 17, 2007.
• Completed the first comprehensive strategic plan for the organization and established a process for continuously reviewing and updating objectives and goals.
• Initiated the creation of the “Statement of Principles and Strategies for the Equitable Dissemination of Medical Technologies.”
Years: 2008 to 2011 Employer: AUTM Foundation Title: President and Chair of the Board/ Founding Board Member Department: Responsibilities: • Created a plan for sustainable revenue to fund programs that increase the impact of academic technology transfer in the local, regional and international innovation ecosystems and provide resources to build and sustain efficient programs for technology commercialization and utilization.
Years: 1994 to 2004 Employer: Colorado State University Research Foundation Title: Director Department: Responsibilities: • Developed the appropriate internal infrastructure and processes at CSURF and CSU for evaluating research, invention disclosures, patentability, market evaluation and licensing.
• Created the “Process for Technology Transfer” – a guide to implement strategies for increasing the likelihood of commercialization of inventions through appropriate assessment and allocation of resources.
• Developed the Commercial Opportunity Fund to fund technology developed for commercially promising research.
• Created the Springboard for University Entrepreneurs (S*U*E) in collaboration with the Fort Collins Virtual Business Incubator and the Center for Entrepreneurship to encourage faculty and student entrepreneurial activities and apply limited resources for maximum benefit.
• Established cost center accounting for the technology transfer office to provide greater control and responsibility.
• Provided input and support to the Vice President for Research, General Counsel, Sponsored Programs, Regulatory Compliance, Contract Administration and other offices at Colorado State University as needed.
• Managing Publisher of the annual research report for Colorado State University in 2003 and 2004.
• Worked closely with the Colorado BioScience Association to create a state wide strategic plan for bioscience industry growth.
Years: 1996 to 1999 Employer: University of Utah Title: Interim Director and Associate Director Department: Responsibilities: • Conducted triage and assessment of research and inventions for commercial applications.
• Identified and contacted potential commercial partners for technologies.
• Negotiated and drafted option, license and commercialization agreements.
• Negotiated and drafted agreements and managed relationships with startup companies.
• Worked closely with the office of Sponsored Programs on industry agreements.
• Participated in developing and implementing the Technology Innovation Grant Program (to address the valley of death), Light Bulb Brigade (to proactively use consultants for business expertise on specific projects) and Student Internship programs.
• Directly managed the commercialization of projects funded through Utah’s Center of Excellence program and University of Utah’s Technology Innovation Grant (TIG) program.
• Edited and published the Technology Transfer Newsletter “Innovations.”
• Developed and implemented a database to manage and track commercialization, agreement compliance and fulfill reporting requirements to the federal government and sponsors of research.

Career Accomplishments

Associations / Societies
Current member of:
American Chemical Society
Association of University Technology Managers
Licensing Executive Society

President, Association of University Technology Managers (AUTM)
President, AUTM Foundation, 2010-201x

Past Board Memberships
OHSU-University of Portland Entrepreneurship Certificate
Portland Business Accelerator
AUTM Foundation, Founding Board Member
Oregon Bioscience Association
Colorado Bioscience Association Council
Center for Entrepreneurship, Fort Collins, Colorado
Western Institute for Biomedical Research, Salt Lake City, Utah
Company Advisory Boards and Boards
Yecuris, Inc.
AMES Technologies, Inc.
Najit Technologies Inc.
Brotica, Inc.
Licenses / Certifications
Registered Technology Transfer Professional
Publications and Patents Summary
Available upon request.

Additional Experience

Training / Seminars
Training, Courses and Workshops Conducted
• University gap funds: Creating and managing gap funds effectively
• Intellectual property 101: What researchers need to know about intellectual property
• Intellectual property “traps” in university-industry contracting
• Startups and enterpreneurship
• Invention Assessment
• Elements of Licensing & Partnering (financial and non financial)
• Negotiation fundamentals
• Valuing technologies and patents
• Introduction to agreements in technology transfer

Fields of Expertise

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