Ruben Flores-Saaib, director of commercialization for UC-San Diego's Office of Innovation and Commercialization
Ruben Flores-Saaib, director of commercialization for UC-San Diego’s Office of Innovation and Commercialization (courtesy photo)

Located in the heart of biotech country, UC-San Diego generates more patents than any other UC campus. Recently the university overhauled its technology transfer office. Paul Roben joined as assistant vice chancellor for innovation in 2015, and Ruben Flores-Saaib followed soon after as director of commercialization. Flores-Saaib previously ran a worldwide network of technology scouts for Merck Millipore, the drug company’s bioscience division, putting him touch with tech transfer offices around the world. The Recorder recently asked him about plans for the university’s Office of Innovation and Commercialization.

Q. Does UC-San Diego really generate the most patents of any UC campus?

A. That is correct. We have the broadest scope of research areas. Only UCLA is similar to us in size and scope. Berkeley, it’s limited in its size. San Francisco is a medical school only. San Francisco doesn’t have engineering, social sciences. It doesn’t have the Scripps Institute of Oceanography, the Rady School of Management. Berkeley is a fantastic campus and maybe per capita they do more, I don’t know. But in total numbers we’re the No. 1. The most invention disclosures, the most patents granted to the office, the No. 1 or No. 1 in deals every year as of recently and No. 1 or No. 2 in number of startups. We had 20 last year.

Q. What are you and Paul doing differently with the office?

A. The changes are both operational and strategic. We are interacting not only with Connect, with Biocom, with the San Diego Regional Economic Development Corp. as we were before, but we’re building programs with outside organizations that have the same interests that we do.

Q. There’s a feeling among some San Diego startups that they get overshadowed by Silicon Valley.

A. Very much so.

Q. What are you doing to raise their profiles?

A. We’ve had a strategic partnership with Osage [University] Partners. Osage is a venture fund that has a similar partnership with many other academic institutions. Whenever we have a startup, the deal is they have an opportunity to do a full-on investment through a Series B round on behalf of the university. What this means is there’s at least one venture fund that is looking at all of our startups. Besides that, we are starting to develop a program with San Diego Venture Group, which just opened an office in Silicon Valley. So we’re going to go to Silicon Valley and apply for that money and bring attention to our startups. We are doing a startup conference on campus on Feb. 22. It’s called Ignite. We’re going to bring as many investors on campus as we can to see the type of investments that we have.

And finally, I’m working on putting together a coalition, what I’m calling the San Diego Innovation Council: Salk Institute, Scripps, La Jolla Institute of Allergy and Immunology, Sanford Burnham, even San Diego State University. We brought spawar—the Navy—ourselves, [and others]. At the core we all do technology commercialization and licensing. And through this platform we want to promote the region.

Q. Any notable startups that have started with UC-San Diego research?

A. I can name a couple that just got acquired in the last three months. Navidea is a company that is commercializing a contrast agent to use in certain MRI processes. They’re in the process of being acquired by Cardinal Health. Another is Raptor Pharmaceuticals in the Bay Area. Raptor sells a product that is for the treatment of cystinosis, a kidney artery condition. They got acquired by Horizon Pharmaceuticals. We have a company called Emotient that got acquired by Apple last year. The technology allows a camera, when it looks at an audience, to tell you whether most of the audience is bored, they’re engaged, they’re happy, they’re sad.

Q. Apple is famously in a dispute with the University of Wisconsin over some chip technology.

A. That’s right.

Q. You’ve told me your office doesn’t try to wring every dollar out of a licensing transaction that it can, which I’m surprised to hear you say.

A. Well, there are monies up front and there are monies in the back end. What causes a lot of friction are the asks up front. Companies don’t like when I say, “You’ve got to give me $1 million just to have the right to use this technology, in addition to the money you’re going to owe me when you sell the technology.”

I’m going to say to a partner, “Do you want to pay a certain money up front, or do you want to pay lower up front and then on the back end increase the royalties for milestones paid to the university? What works for you? What’s your financial strategy? What’s the strategy to go to market? How can we help you? Tell us about your plans.” And then we create a series of contingencies or different potential scenarios that satisfy the business plans.

Q. Where do the licensing revenues go?

A. They’re providing that money not only to the university, but to the inventors of the technology. The investigators—grad students, post-docs and faculty or staff members—get 35 percent of any revenue, and that is just an absolutely fantastic offering that doesn’t exist in private industry. In private industry, you may get a pat on the back, a $1,000 check, but you’re not going to get royalties. Another similar percentage goes to the department that supports the inventors, and the rest goes to the chancellor.

Q. How do you choose firms for patent prosecution?

A. There are two things that you look for in an IP firm. First and above all is technical competence. The attorney that is doing your patents has to have, preferably, proven experience in the field. The bigger the firm is, the most likely they are to have someone experienced in your field. On the other hand, bigger firms have bigger overhead, and they’re more expensive. So you have to strike a balance.

Q. Who are your go-to firms?

A. I couldn’t tell you there’s a go-to firm. We work with Foley & Lardner, Sheppard Mullin. We work with Knobbe Martens, Mintz Levin. We work with some of the most well-known firms. We do not work with Dentons or Wilson Sonsini—those firms are more interested in representing the startups who are partnering with us.

Located in the heart of biotech country, UC-San Diego generates more patents than any other UC campus. Recently the university overhauled its technology transfer office. Paul Roben joined as assistant vice chancellor for innovation in 2015, and Ruben Flores-Saaib followed soon after as director of commercialization. Flores-Saaib previously ran a worldwide network of technology scouts for Merck Millipore, the drug company’s bioscience division, putting him touch with tech transfer offices around the world. The Recorder recently asked him about plans for the university’s Office of Innovation and Commercialization.

Q. Does UC-San Diego really generate the most patents of any UC campus?

A. That is correct. We have the broadest scope of research areas. Only UCLA is similar to us in size and scope. Berkeley, it’s limited in its size. San Francisco is a medical school only. San Francisco doesn’t have engineering, social sciences. It doesn’t have the Scripps Institute of Oceanography, the Rady School of Management. Berkeley is a fantastic campus and maybe per capita they do more, I don’t know. But in total numbers we’re the No. 1. The most invention disclosures, the most patents granted to the office, the No. 1 or No. 1 in deals every year as of recently and No. 1 or No. 2 in number of startups. We had 20 last year.

Q. What are you and Paul doing differently with the office?

A. The changes are both operational and strategic. We are interacting not only with Connect, with Biocom, with the San Diego Regional Economic Development Corp. as we were before, but we’re building programs with outside organizations that have the same interests that we do.

Q. There’s a feeling among some San Diego startups that they get overshadowed by Silicon Valley.

A. Very much so.

Q. What are you doing to raise their profiles?

A. We’ve had a strategic partnership with Osage [University] Partners. Osage is a venture fund that has a similar partnership with many other academic institutions. Whenever we have a startup, the deal is they have an opportunity to do a full-on investment through a Series B round on behalf of the university. What this means is there’s at least one venture fund that is looking at all of our startups. Besides that, we are starting to develop a program with San Diego Venture Group, which just opened an office in Silicon Valley. So we’re going to go to Silicon Valley and apply for that money and bring attention to our startups. We are doing a startup conference on campus on Feb. 22. It’s called Ignite. We’re going to bring as many investors on campus as we can to see the type of investments that we have.

And finally, I’m working on putting together a coalition, what I’m calling the San Diego Innovation Council: Salk Institute, Scripps, La Jolla Institute of Allergy and Immunology, Sanford Burnham, even San Diego State University. We brought spawar—the Navy—ourselves, [and others]. At the core we all do technology commercialization and licensing. And through this platform we want to promote the region.

Q. Any notable startups that have started with UC-San Diego research?

A. I can name a couple that just got acquired in the last three months. Navidea is a company that is commercializing a contrast agent to use in certain MRI processes. They’re in the process of being acquired by Cardinal Health . Another is Raptor Pharmaceuticals in the Bay Area. Raptor sells a product that is for the treatment of cystinosis, a kidney artery condition. They got acquired by Horizon Pharmaceuticals. We have a company called Emotient that got acquired by Apple last year. The technology allows a camera, when it looks at an audience, to tell you whether most of the audience is bored, they’re engaged, they’re happy, they’re sad.

Q. Apple is famously in a dispute with the University of Wisconsin over some chip technology.

A. That’s right.

Q. You’ve told me your office doesn’t try to wring every dollar out of a licensing transaction that it can, which I’m surprised to hear you say.

A. Well, there are monies up front and there are monies in the back end. What causes a lot of friction are the asks up front. Companies don’t like when I say, “You’ve got to give me $1 million just to have the right to use this technology, in addition to the money you’re going to owe me when you sell the technology.”

I’m going to say to a partner, “Do you want to pay a certain money up front, or do you want to pay lower up front and then on the back end increase the royalties for milestones paid to the university? What works for you? What’s your financial strategy? What’s the strategy to go to market? How can we help you? Tell us about your plans.” And then we create a series of contingencies or different potential scenarios that satisfy the business plans.

Q. Where do the licensing revenues go?

A. They’re providing that money not only to the university, but to the inventors of the technology. The investigators—grad students, post-docs and faculty or staff members—get 35 percent of any revenue, and that is just an absolutely fantastic offering that doesn’t exist in private industry. In private industry, you may get a pat on the back, a $1,000 check, but you’re not going to get royalties. Another similar percentage goes to the department that supports the inventors, and the rest goes to the chancellor.

Q. How do you choose firms for patent prosecution?

A. There are two things that you look for in an IP firm. First and above all is technical competence. The attorney that is doing your patents has to have, preferably, proven experience in the field. The bigger the firm is, the most likely they are to have someone experienced in your field. On the other hand, bigger firms have bigger overhead, and they’re more expensive. So you have to strike a balance.

Q. Who are your go-to firms?

A. I couldn’t tell you there’s a go-to firm. We work with Foley & Lardner , Sheppard Mullin . We work with Knobbe Martens , Mintz Levin . We work with some of the most well-known firms. We do not work with Dentons or Wilson Sonsini —those firms are more interested in representing the startups who are partnering with us.