By Tom Ballard, Director of Innovation and Entrepreneurial Initiatives, Pershing Yoakley & Associates, P.C.
One of the first invention disclosures that Maha Krishnamurthy worked on when she arrived at the University of Tennessee Research Foundation (UTRF) in 2011 was the one that produced the licensing agreement earlier this year with Meridian Bioscience, Inc.
“From a lab and engineering perspective, it worked, but it was rudimentary,” she said of the technology produced through the collaboration of UT researchers Shigetoshi Eda and Jayne Wu.
So, for the next three years, UTRF worked with the researchers to identify prospective licensees, get them interested, and meet an ever increasing set of higher and higher expectations from these prospective licensees.
Many people believe licensing is as simple as telling people what you have and negotiating an agreement. The process that produced the agreement with Meridian was lengthy and demanding.
“UTRF executed nine CDAs and had meaningful discussions with each of these companies,” Krishnamurthy said in reference to confidentiality agreements. More insightful, perhaps, is the number of companies contacted.
“UTRF sent 40 marketing abstracts to get the nine,” she said.
One of the challenges for UTRF and the researchers was getting prospective licensees to “see beyond bovine TB,” in reference to results that Eda had produced through a technology maturation project funded by UTRF in 2012.
The journey was long and challenging, but she had nothing but praise for Eda and Wu.
“They truly believed in it and wanted to push it through,” Krishnamurthy said, adding, “At some point it moves beyond research.”
In addition to the collaboration of the two researchers and their work with UTRF, the success story also benefitted from another partner. In this case, it was Ken Woody, President of Innova Memphis, a life science venture fund, who knew Meridian and made that connection.
The introduction proved very valuable, but it was just the beginning of what can be characterized as “more and more data requirements.”
She said Meridian wanted UT to answer a simple, but fundamental question: “Are we at least as good as the current test?” This resulted in a blind study for UT to conduct the test on Meridian samples. Funding for these tests was provided jointly by Meridian and the Office of the Executive Vice President at UT.
The results of that late 2013 work were excellent, so Meridian executives visited earlier this year. Those meetings were positive, but more tests were needed.
Krishnamurthy describes Meridian’s expectations as logical but challenging: “Can you push the boundaries?” More and more tests followed.
“If it is not documented, it’s not done,” she says in describing the rigorous protocols that were required.
As UTRF looks back on the three-year undertaking, Krishnamurthy says we have gained considerable insights that will benefit UTRF in the future.
“What sounded like an obvious need from an academic perspective is not always a first point of entry for industry,” she says in describing the process of identifying potential licensees.
Understanding the needs of the possible licensee and working quickly are also important. “Are you responsive enough” is the way she describes this insight.
So, three years after UTRF started trying to license the technology and a decade after research started at UT, Meridian Bioscience is now working to take the in low cost, point-of-care disease detection device to market. That’s still a few years off.