ITEM 126-1006-R0305

 

JOINT VENTURE SUBMISSION FORM

 

1.  Nature of the Intellectual Property covered under this joint venture, including sources of funding for this research.

 

Glutamate is the predominant excitory transmitter in the central nervous system, and its cellular uptake is mediated by five excitatory amino acid transporters that have distinct distribution patterns in mammalian brain.  During research on the mechanism and molecular pharmacology of glutamate transport, certain structural determinants involved in controlling substrate selectivity and pore access were elucidated.  As part of this research, compounds which would selectively control these major neuronal excitatory amino acid transporters in the brain were discovered. Also, an efficient method for synthesizing these compounds was developed.  These discoveries were made with the support of an NIH grant.  UM completed Bayh-Dole compliance so that title to the invention(s) could be retained by UM.  On October 21, 2004 a provisional patent was filed by UM to protect the invention and a full application will be submitted by this summer.

 

2.     a.     Names of the University employees involved:

Michael Kavanaugh, Ph.D.

Sean Esslinger, M.D.

John Gerdes, Ph.D.

David Poulsen, Ph.D.

Richard Bridges, Ph.D.

 

b.     Name of business involved:

Transynaptic Technologies

 

3.     The University and employees are seeking approval to establish licensing and other contractual relationships between the University and a company in which the employees have significant financial interests.

 

4.     a.     Relationships between the University and the business entity:

 

The University will negotiate with the business a worldwide exclusive license to the business for patent(s) covering these technologies.  As part of this license the University will receive fees, royalties, and reimbursement of patent expenses.  Also, the University may negotiate agreements with the business to rent laboratory space and certain scientific equipment, under terms and conditions that are consistent with University policy and State law.

 

b.     Duration of the agreements:

 

Licenses for the patent rights will be for the life of the patent(s) - 20 years after filing.

Agreements for use of University facilities are expected not to exceed one year.

 

c.     Conditions under which the agreements may be terminated:

 

Failure of the business to comply with provisions in the licensing or other agreements.

 

5.     How the University and the State of Montana will benefit from these agreements:

 

The University may receive significant royalties from commercial exploitation of these Intellectual Properties.  The market for drugs to treating schizophrenia alone exceeds one billion dollars per year.  A new company will be created in Montana with new jobs and contributions to the tax base.

 

6.     Summarize the possible financial terms of the agreement:

 

UM is seeking approval before entering in to negotiations on a licensing agreement with the business.  If the proposed relationships are approved, it is anticipated that the negotiated license will include fees, royalties, and reimbursement for relevant University patent expenses.  If successful products are developed under these licenses, income to the University could exceed $100,000 per year.

 

a.     The University’s contributions:

 

UM managed the grant, provided facilities and equipment, and certain personnel for the research project.  Patent advice, filings, Bayh-Dole compliance and other contributions were made by the University’s Technology Transfer Office.  The University may lease facilities, on a short-term basis to help the company get started.

 

b.     Employees’ contributions:

 

The UM employees wrote the grant application that funded the research, carried out the research, conceived and reduced to practice the ideas, which resulted in the patent applications.

 

c.      Time line for anticipated revenues:

 

Drugs like these take 10 or more years to get to market, so the potential $100,000 + per year revenues to UM would not occur until then.  However, if the business granted any sublicenses under this agreement, sublicense fees would be shared with the University at the time they were received by the business.

 

d.      Sharing of revenues and expenses between the University and the business:

 

As part of the terms f the license agreement, the business will reimburse the University for patent expenses; the University is not expected to incur any other direct expenses in these arrangements.  Sharing of fees and royalties will be negotiated with the business as part of the license agreement and will be consistent with the standards established for license agreements on products like these.

 

e.      Nature of each party’s equity interest in the project.

 

As part owners in the company, certain University employees will own equity in the business.  The University does not intend to acquire equity in the company.