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Baylor Licensing Group

Houston, Texas

Baylor Licensing Group
Baylor Licensing Group
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BLG News Winter 2000

What is BLG?
The Baylor Licensing Group (BLG)'s primary function is to evaluate and determine the commercial potential of the technology developed by the faculty, students and staff at Baylor College of Medicine and to license that technology to an industry partner. We plan to publish BLG News on a periodic basis to provide useful news and information on the technology transfer process at Baylor.

Where is BLG? Who Works There?
Our offices are located in Suite 600D in the Jewish Building on the main campus. We share office space with the Office of Research and Center for Comparative Medicine. Our seven-member team includes: Lynne Schaefer is the Director of BLG. She has been with BCM Technologies, Inc., Baylor's venture development subsidiary, since 1983 and BLG since 1988. Lynne holds a B.S. degree in Marine Biology from Roger Williams College in Rhode Island and an M.B.A. from the University of Houston. Stewart Davis is the Assistant Director of BLG. He joined BLG in 1993. Prior to this position, he worked as a research technician in Dr. Jim Lupski's lab in the Department of Molecular and Human Genetics at Baylor. Stewart received a B.S. in Zoology from Louisiana Tech University and an M.B.A. in Accounting from the University of Houston. Larry Hope joined BLG in 1999 as the Technology Licensing Manager. Previously, he held market research and business development positions at several Houston-area biotechnology companies, including LifeCell Corporation and Aronex Pharmaceuticals Inc. Larry holds a B.S. in Microbiology from Texas A&M University and an M.B.A. in Finance & Entrepreneurship from Rice University. Terese Rakow, Ph.D. also joined BLG in 1999 as a Licensing Associate. She has five years of postdoctoral training in neuroscience at the Scripps Research Institute and The University of California, San Diego. Other research experience includes molecular and cellular biology, as well as cancer biology. In addition, she has a working knowledge of the epidemiology and diagnostics of infectious viral diseases. Terese received a Ph.D. in Zoology and Genetics from Iowa State University. Michael Dilling, Ph.D. joined BLG in January 2000 as a Licensing Associate. Michael previously worked at St. Jude Children's Research Hospital as an Associate Investigator, where he studied signal transduction pathways in rhabdomyosarcoma, a pediatric skeletal muscle tumor. He also has extensive experience working with retroviral vectors. Michael received an M.B.A. in Finance from the University of Memphis, and a Ph.D. in Genetics from Texas A&M University. Jeanette Buerstinghaus joined BLG in October 2000 as the Intellectual Property Coordinator. She previously worked with the Office of Technology Management at the University of Pittsburgh as a patent and licensing administrator. She received her B.A. degree in Legal Studies and Paralegal Certification from the University of Pittsburgh. Denise Lewis joined BLG in 1999 as the Administrative Coordinator. She has extensive experience working in the medical field, and has been with Baylor since 1995.

Frequently Asked Questions (FAQs)

All activity in BLG is initiated with the Disclosure Form. This recently updated form is available from our website. Examples of information required include contributors to the idea, percent contribution, department(s) of contributors, funding history, public disclosure history, signatures, and 1-2 page summary of the idea. Draft manuscripts, grant applications and background articles are also helpful when available.

1. I think I have something valuable. When should I disclose to BLG?
Too early is better than too late. BLG prefers to have a chance to review the supporting documents prior to any public disclosure of the idea. This gives us a chance to conduct background and patentability reviews if necessary. Supporting documents included with disclosures have ranged from drawings on the backs of napkins to preprints of papers. If in doubt, call BLG and your questions will be addressed.

2. What type of ideas should I disclose?
A wide range of ideas are disclosed to and licensed by BLG. Examples include cell lines, antibodies, mouse models, medical devices, diagnostics, compounds, new uses of existing compounds, screening techniques, gene products, gene mutations, software and educational materials.

3. I have collaborators at other institutions. What do I do?
Please note the collaborators and their institutions on the Disclosure Form. BLG will work with our counterparts at other institutions to determine how best to proceed with a joint disclosure. Also make your collaborators aware that you are submitting a Disclosure Form with their names on it.

4. Who owns the invention / idea?
As a condition of employment at Baylor College of Medicine, you agree to follow the Baylor Patent Policy. Inventions and discoveries made while you are employed at Baylor are the property of Baylor. The College has a generous sharing arrangement that is quite favorable to the inventor. BLG will be happy to discuss the specifics further and review some examples with you.

5. After I turn in the Disclosure Form, what happens?
Invention disclosures vary dramatically and each is handled somewhat differently. After BLG receives your disclosure, it is entered into our database and assigned a Project Manager. The Project Manager will review the disclosure and contact you to schedule a meeting. During this meeting, the technology will be discussed in further detail and initial questions addressed. Decisions regarding patenting, market research, marketing, and licensing will be addressed during the following months.

6. Does Baylor patent all patentable inventions?
Not all patentable ideas are necessarily patented. The value in a patent is the extent to which someone, in this case a licensee, is willing to pay for use of the patent. There are many reasons why a particular idea, which may be patentable, may not be a commercially viable patent. Some of these reasons can best be determined by patent attorneys and members of the industry, whom BLG may contact during its evaluation of the disclosure.

7. Is a patent necessary for commercial success?
Not Always. BLG frequently licenses research tools and other technologies that are not and will not be patented. Examples include antibodies, vectors, cell lines and mouse models. Commercial entities often license such items in order to save the time and expense of creating it themselves, particularly if they are well-characterized.

8. What is a Material Transfer Agreement?
Material Transfer Agreements (MTAs) are handled by the Office of Research. MTAs should be used whenever you are transferring or receiving research materials (such as cell lines, mice, vectors) to/from your colleagues at other academic or research institutions. For further information, call the Office of Research at 713-798-5184.

BLG Activity Flowchart
The flowchart below shows the general path taken by a disclosure submitted to BLG. The overall goal in this process is to execute a license agreement with an appropriate industry partner. Several decisions must be made prior to reaching this goal including: (i) is the idea commercially viable?; (ii) is the idea patentable?; (iii) can the idea be commercialized without patent protection?; (iv) which commercial entities are the most likely marketing targets?; and (v) can this idea be applied to more than one field, and how does this change the marketing effort? Please note that there are conditions under which Baylor returns its rights in a disclosed idea to the inventors. These usually relate to commercial viability of the idea and/or inability to locate a licensee.

Who Do I Call?

If you have a question about ideas you feel might have commercial value, or if a company has expressed interest in licensing your research findings, call BLG at 713-798-OTA1, or visit our website at research.bcm.tmc.edu/OTA/.

If you have a question on start-up companies, call BCM Technologies at 713-795-0105 or visit their website at www.bcm.tmc.edu/bcmt/.

If you have a question on material transfer agreements, sponsored research agreements or confidential disclosure agreements, call the Office of Research at 713-798-5184 or visit their website at http://intranet.bcm.tmc.edu/index.cfm?tmp=research/oor/index.