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Baylor Licensing Group

Houston, Texas

Baylor Licensing Group
Baylor Licensing Group
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BLG News Spring 2003

Do You Have an Interesting Mouse Model?

The Baylor Licensing Group (BLG), Baylor's licensing group, receives and reviews invention disclosures, coordinates patent prosecution (if necessary) and markets inventions with the goal of licensing them to for-profit companies. We would like to take this opportunity to discuss Mouse Models and how we license them, as they are a large part of the research endeavors here at Baylor. The end goal for our office's efforts is a license agreement that enables others to utilize technology developed at Baylor.

1- When should I disclose my Mouse Models?
Mouse Models can be disclosed at any time, preferably prior to publication, but after you are confident of the phenotype. Some models do not gain the attention of researchers in industry until there have been publications verifying the phenotype and demonstrating their use. In general, we've observed that it takes a year or more after the first publication before we get requests for models from industry researchers.

2- What if someone from industry sends me a request for one of my Mouse Models?
If you get a request from an industry source, please forward the contact to our office and fill out an Invention Disclosure form if you haven't already. We will negotiate and execute a license for the model with the company after which the models can be shipped to them. Shipping occurs through the normal process via the Center for Comparative Medicine.

3- What if I want to send my Mouse Model to JAX, or it is already at JAX?
Sending models to JAX is fine. Just let us know either by giving us a call or noting this on the Invention Disclosure. We will enter into a license with JAX that provides for JAX to notify our office if a for-profit company requests the model from JAX. For this service, Baylor will pay JAX a small portion of the license fees. We will execute a license with the company and then give JAX permission to ship the model to that company. We can also enter into similar arrangements with other entities such as the MMHCC. This "permission" step is not required for transfers of mice from JAX to academic researchers.

4- Is a patent on a Mouse Model necessary for commercial success? Absolutely not. In fact, the large majority of our Mouse Models are not patented, and we often license other non-patented technologies. Licensing is a way for the company to save significant time and money needed to create a model of interest. Not to mention, Baylor Mouse Models typically have been verified through published research by Baylor researchers and others in the academic research community. Industry researchers can be confident that the models will be useful for their particular interests, and they can avoid having to recreate the mouse.

5- How are the Mouse Models licensed?
In most cases, the models are licensed non-exclusively. Since the models are a tool used in the research process, most companies accept the fact that their competitors can use the same models for research and development. The license allows the company to propagate and cross breed the mouse models either in house or at a service provider, but not to transfer them to sources outside the company.

6- What fees do the companies pay for Mouse Model licenses?
Typically, we charge an upfront fee, due upon license signing or shortly thereafter, and an annual maintenance fee, due on each anniversary of the license execution date. The upfront fee ranges from $10,000 to $35,000, and the annual maintenance fee is roughly half the upfront fee, $5,000 to $15,000. The annual maintenance fee is paid throughout the life of the license, or until the company no longer needs the models and terminates the license.

7- How is the revenue from licensing distributed?
Income from licensing is distributed according to the Baylor Policy on Patents and Other Intellectual Property1.

Income from license: 100%
BLG Fee: 15%
Patent costs, if any: Rare in the case of Mouse Models
NET INCOME:
Contributors: 50% Distributed as per the percentages listed on the disclosure form
Department: 25% One or more departments represented by the Contributors
BCM General Fund: 25%

8- What if my Mouse Model was generated using Cre-lox?
If the technology, including Mouse Models, cell lines, etc., was developed through the use of Cre-lox technology, we must coordinate with Dupont in the licensing process. Dupont has a patent on Cre-lox and controls the use and distribution of anything made with or utilizing it. This can slow the progress of the license because a third party is involved, but we strive to make the process as smooth as possible. Many companies are familiar with this, as they are required to have a Cre-lox license in order to utilize Cre-lox technology. This should not discourage you from disclosing your Mouse Model to our office.

9- What if my Mouse Model was obtained from Lexicon Genetics?
A Mouse Model purchased from Lexicon belongs to Lexicon as provided in the purchase contract signed by you, Baylor and Lexicon. These mice should not be disclosed to our office. In addition, these mice should not be transferred to other academics unless arranged with Lexicon. Contact the Office of Research at 713-798-6970.

10- Can you list examples of successful Mouse Model licenses?

TRAMP prostate cancer model Dr. Norman Greenberg
a-7 nAchR knockout Drs. Art Beaudet and Jim Patrick
CD11a knockout Dr. Christie Ballantyne
IgA knockout Dr. Gregory Harriman

1The BLG website has a link to the Baylor Policy on Patents and Other Intellectual Property.