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2012 In Review Office of Technology & Business Development* *to be renamed in 2013

Inventor’s Guide A Handbook for Faculty, Staff and Trainees of Mount Sinai

October 2012

Please visit the Inventor’s Guide for information regarding the technology transfer process at Mount Sinai

2012 marked the first SINAInnovations conference at Mount Sinai, led by our Dean for Therapeutic Discovery, Dr. Scott L. Friedman (far left)

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Introduction We are here to support our inventors and innovators at Mount Sinai and in doing so establish commercial partnerships to bring the most promising discoveries to patients. As year one of our re-organization in technology transfer, 2012 has been a year of building capacity and establishing a foundation for this support. The progress we have made is a result of the hard work and collaboration among our team, colleagues and partners. As a result of this good work, our team is strengthened, asset portfolios augmented, disputes settled, new deals agreed, processes improved and record revenue delivered to Mount Sinai for re-investment. Please take a look at this 2012 report and let us hear from you as to how we can support your aspirations in support Mount Sinai’s mission in seeing that the most important discoveries have a positive impact.

Vice President Technology & Business Development

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Mission & Purpose Mission We are here to see that important discoveries at Mount Sinai reach patients by doing many good deals to develop healthcare products and services for the benefit of patients and partners. We do this through dissemination of expertise and results of research through commercial channels by: • Developing and managing strong relationships (faculty, industry, investors, teams, colleagues and peers); • Developing deal ready assets (IP, market understanding and more); • Negotiating and signing many good deals (licenses and industry collaborations) and • Capturing a fair return for Mount Sinai through license revenue, research funding and efficient operations, all for further investment in innovation, research and teaching. Many Good Deals “Many” because what we do is a portfolio play where it is difficult to know which ideas will ultimately be successful. “Good” meaning a deal that has the potential to positively impact patient care and society, deliver a financial return to Mount Sinai and build partnerships with our Mount Sinai innovators as well as our commercial partners. “Deals” because we won’t accomplish our mission of benefit to patients unless there is a commitment from Mount Sinai and our commercial partners to go at risk to develop products and services. The deal, or license, equity or collaborative research agreement is robust evidence of this commitment. A Fair Return In doing good deals we also take responsibility to capture a fair and positive financial return for Mount Sinai. This return provides funds for investment in research and teaching as well as incentives to academics to participate in dissemination of ideas, for the benefit of the public, through commercial channels.

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2012 Performance Metrics*


Faculty, Students, Staff and Trainees engaged with the following:

licenses & options. Currently 126 licenses & options in our active portfolio.


collaborative & sponsored industry research agreements

million in license proceeds generated by 77 licenses & options.


million in industry research funding. $2 million in indirect costs.


equity holdings in spinouts in our active portfolio


enabling agreements: MTAs, CDAs and IIAs*


new patent filings. Currently 1112 patent cases in active portfolio.

new technology disclosures. Currently 456 disclosures in our active portfolio. * Based on fiscal year of January 1, 2012 - December 31, 2012 ** MTAs - Material Transfer Agreements CDAs - Confidential Disclosure Agreements IIAs - Inter-Institutional Agreements




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∞ Commercialization Process* Research

Form a Start-Up



Partner with Existing Business

Collaboration License Agreement





Societal Impact & Revenue


We encourage all of Mount Sinai’s research faculty and staff to disclose their inventions as soon as possible and to keep the following pre-disclosure questions in mind: •

What is this technology? What does it do and what problems does it solve?

Is anyone else working on this? How do we compare? How would our advantage(s) be demonstrated/ evidenced (i.e. clinical study end point)?

Has the technology been presented or published? Is there a thesis involved? Where, when and in how much detail was it discussed?

Is there a company or companies that would want to commercialize this? Why would they find it valuable?

What are the immediate obstacles faced? What are the next milestones? Is there more work to be done (questions to be answered) before a company would find this invention of interest?

How was this work funded? Do we have obligations to this (these) sponsor(s)? Do we have obligations to the third parties who supplied the materials or equipment used in the research?

What else would you like us to know about this work?

* For complete definitions of each stage of our commercialization process, please visit the Inventor’s Guide at

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2010 / 2011 / 2012 Licensing Proceeds

Enabling Agreements

(in $ millions)













20 10 0







200 100 0


* Number of agreements generating revenue



Material Transfer Agreements Confidential Disclosure Agreements Inter-Institutional Agreements

Patent Filings

Technology Disclosures 200

80 70


60 50


40 30


20 10 0








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2012 Financial Summary Office of Technology and Business Development Summary Financial Results 2010-2012

Gross Revenue

2010 Actual 21,386,020

2011 Actual 25,919,938

2012 Actual 75,993,197

Less: Third Party Distributions*




Net Revenue to Mount Sinai




Less: Operating Expenditures Litigation and Transaction Patent Prosecution & Proof of Concept OTBD Department

(1,386,455) (2,410,754) (2,502,462)

(7,005,407) (2,728,661) (2,402,068)

(4,308,545) (2,695,879) (3,841,913)

Net Cash Into/(Out of ) Mount Sinai




Equity Holdings in Mount Sinai Spin-outs** Company Autism Therapeutics Contrafect Corporation Green Hills Biotechnology Hamilton Thorne LTD Red Point Bio Thorne Diagnostics Vivaldi Biosciences

Number of Shares 130,000 75,000 6,863 235,819 982,575 776 664,878

* Includes distributions to inventors and joint owners of intellectual property ** Equity held by Mount Sinai as of December 31, 2012. All are privately held companies *** Based on fiscal year of January 1, 2012 - December 31, 2012

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2012 Financial Summary Distribution of Licensing Revenue

OTBD Operating Expenses

Staff Mount Sinai

Consulting & Services



Other Institutions


Licensing Revenue by Type

Legal Expenses




Patent & Proof of Concept


Transactions & Disputes


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New Initiatives Blue Mountain Technologies Blue Mountain Technologies is an internal initiative managed by the Office of Technology and Business Development, formed to bring Mount Sinai’s growing portfolio of medical devices, molecular diagnostics and research reagents to market through commercial partnerships. The initiative is led by Felipe Araujo, PhD, MBA, Director of Blue Mountain Technologies, who works closely with the Mount Sinai Antibody Facility and the Center for Therapeutic Antibody Discovery (CTAD). 2012 marked CTAD’s first call for targets program to identify preliminary targets for therapeutic antibody development. Selected projects will receive funding from the Office of Technology and Business Development and the Institute for Translational Sciences. For more information on Blue Mountain Technologies, please contact Felipe at or visit Blue Mountain’s website at

Industry Request For Proposal’s (RFP’s) Corporations and other innovation-focused institutions are increasingly interested in engaging with academic research partners. Pharmaceutical companies have specific areas of therapeutic focus for general collaborations. They also solicit specific research projects from medical universities in the form of calls e.g. RFP’s. There are also several opportunities available to screen academic in-house targets and compounds. Industry collaborations formed with Mount Sinai faculty can expedite inventions from discovery to the clinical phase by providing research funding as well as relevant expertise. The Office of Technology and Business Development monitors industry call for targets programs and coordinates proposals with Mount Sinai. In 2012, Louise Lammers, PhD, joined our team as Coordinator of Industry Sponsored Research to lead these efforts. For questions regarding funding opportunities through industry RFP’s, please contact Louise at or visit our funding website at

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C-TIE C-TIE & Innovation Agenda The mission of the Center for Technology, Innovation, and Entrepreneurship (C-TIE) at Icahn School of Medicine at Mount Sinai is to pursue research and education at the intersection of basic science discovery and applied science implementation in order to advance the invention and development of new biomedical technologies. The Office of Technology and Business Development is pleased to be working with Geoffrey Smith in shaping an innovative culture at Mount Sinai. C-TIE was founded in 2012 with the following goals in mind: •

Increase innovative activity at Mount Sinai by promoting the convergence of basic science, clinical science, engineering, and computer science.

Attract the most innovative and entrepreneurial students to Mount Sinai by capitalizing on strong student interest in translational science.

Provide core training relevant to job placement in a wide-range of fields including academia, industry, and government.

Act as a technology development hub inside Mount Sinai while providing a link to external partnerships with industry, foundations, and government.

Establish Mount Sinai as a leader in innovation policy and research in order to shape the economic, legal, scientific, and public policy issues affecting biomedical innovation worldwide.

For more information on C-TIE, please contact Geoffrey Smith, Professor, Department of Health Evidence and Policy, Director of C-TIE at or visit

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Team Senior Management


Teri Willey - Vice President Robert Hellauer - Director, Finance & Operations Sybil Lombillo, PhD, JD - Director, IP & Asset Development Ivan Galanin - Director, Commercial Development & Industry Engagement

Michael Phillipps, JD - Contracts Manager Lingling Liu, PhD - Contracts Associate

Business Development Felipe Araujo, PhD, MBA - Director, Blue Mountain Technologies Shai Gilad, MA, MBA - Business Development Director Idoia Gamez, PhD, MBA - Business Development Director Jeanne Farrell, PhD - Business Development Director Stephen Atkinson - Business Development Consultant William Chiang, PhD - Business Development Consultant Alan Belicha, PhD - Business Analyst

Administration Margaret Tucker - Executive Assistant to VP and Senior Management

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Industry Engagement Louise Lammers, PhD - Coordinator of Industry-Sponsored Research, Sr. Program Manager C-TIE

Patent Administration Aaron Dubberly, JD - Patent Specialist Denise Walcott - Patent Manager Suzette Thompson - Patent Secretary

Marketing & Communications Neil McNulty - Marketing Associate

Finance and Operations Kachun (KC) Lee - Assistant Director Edrica Franics - Senior Manager Deidre David - Operations Manageer Danielle Forcum - Finance and Operations Assistant

Principles Guiding Principles •

Attract/accept into the portfolio opportunities with the strongest potential to make a significant positive impact and where using commercial channels is the most reasonable means to do so.

Take the course that supports commercialization of the technology and work creatively to add value through the use of patent, proof of concept and internal and external resources.

Work effectively with Mount Sinai inventors and innovators to support their aspirations, manage conflicts, comply with Mount Sinai regulations and encourage synergy with the mission of the Mount Sinai.

Engage with industry and investors early to understand their requirements and find the best partner (research collaborator, licensee or start-up senior management and investors) to take the idea forward.

Negotiate fair and reasonable terms that reflect the contribution of the assets and expertise being transferred.

Negotiate and sign many good deals.

Look after the deals once they are signed to encourage commercialization and optimize returns.

Ensure that technologies developed as a result of our efforts are accessible globally and have a positive impact

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Looking to 2013 Engage with us as we embark on a new year. We will be continuing to strengthen our team and processes with special attention to increasing our capacity to form partnerships with industry and investors and turn around the term sheets and contracts critical to these relationships. 2013 will mark a formal plan to address the coming revenue gap from expiring patents, activation of our seed-funding program and revisiting our IP policy to align with the innovation agenda. We will continue to respond to your suggestions including staffing to be more responsive and will be changing the name and image of the Office of Technology and Business Development to be commensurate with the partnering organization it is striving to be. Together with you, we look forward to promoting an innovative culture at Mount Sinai in 2013 through educational seminars, enhanced communications to help the best partners find us and effective resources.

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Office of Technology & Business Development* 770 Lexington Avenue, 14th Floor New York, NY 10065 212-659-9680 *to be renamed in 2013

Image Copyright: Sebastian Kaulitzki, 2013 Used under license from

2012 In Review  

OTBD 2012 In Review

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