Transcript Management of Intellectual Property at Iowa State

Intellectual Property:
Why you should care and
how it’s managed at ISU
Kenneth Kirkland, Ph.D.
Executive Director, Iowa State University Research Foundation (ISURF)
Director, Office of Intellectual Property and Technology Transfer (OIPTT)
Nita Lovejoy
Associate Director, ISURF and OIPTT
Benefits of
Protecting Intellectual Property
• Incentives:
– Necessary for companies to invest in technical and
market development to get a product to market
– Recognition for inventor/author and university:
attract more research dollars
– Placement of graduate students in rewarding jobs
– Income for company, inventor/author and
university
– Stewardship of technology and funding source
obligations…
Benefits of
Protecting Intellectual Property
• IP protection preserves the rights of the
inventors and the university to control the
technology:
– Prevent inappropriate use of the technology
– Ensure use for public good
– Ensure continued use for research
Benefits of
Protecting Intellectual Property
• Formation of relationships between company
and inventor/author/university:
– Research support
– Consulting arrangements and other opportunities
for collaboration
Funding Requirements
and Our Obligations
• Federal Agencies (37 CFR Part 401):
– The university is obligated to have written
agreements with its faculty and technical staff
requiring disclosure and assignment of inventions
– The university has an obligation to disclose each
new invention to the federal funding agency
within two months of receiving the invention
disclosure
– Decision on whether or not to retain title to the
invention must be made within two years of
invention disclosure to the agency
Funding Requirements
and Our Obligations
• Federal Agencies (37 CFR Part 401) con’t:
– Upon election of title, the university must file a
patent application within one year (or earlier if
there is a patent bar date)
– The university must submit periodic reports to the
agency regarding the utilization of the invention as
requested by the funding agency
– The universities must share with the inventors a
portion of the royalties received from licensing
their invention
Note: Federal agencies have the authority to audit grantees and
contractors for compliance with these regulations.
Funding Requirements
and Our Obligations
• Federal Agencies (37 CFR Part 401) con’t:
– Copyright obligations under Federally funded
projects vary among the Federal agencies.
Funding Requirements
and Our Obligations
• Corporations:
– Generally, the company funding the research has an
option to acquire a royalty-bearing license to the
resulting IP
– Under the terms of the funding agreement, periodic
progress reports will typically be required
– Prompt disclosure of IP to ISURF is necessary to
enter into license negotiations with the company in
a timely manner and to protect the intellectual
property
Disclosures Received by ISURF
160
140
120
100
80
60
40
20
0
FY93
FY94
FY95
FY96
FY97
FY98
FY99
FY00
FY01
FY02
Biological Sciences Chem/Related Engr Consumer Products Phys Sci/Related Engr Seed/Germplasm
Procedures for IP Protection
• Commitment to assignment of IP to ISURF is
made on the gold sheet
• Policies identify use of significant resources as
triggering University ownership of IP
• Potential IP is identified by the inventor/
author through a written disclosure to OIPTT.
The disclosure form can be downloaded from
the web site.
(www.iastate.edu/~isurf)
Procedures for IP Protection
• OIPTT/ISURF evaluate the IP disclosure for its
inventorship and ownership rights, IP
protection and commercial potential.
Inventors/authors are included in this process.
• If the decision is made to file a patent, the
inventor is asked by OIPTT/ISURF to provide
all pertinent information for review. A patent
law firm is then identified to handle the
application.
Procedures for IP Protection
• The inventor is asked to work with the patent
law firm to prepare the best patent
application possible.
• A patent application is filed and the inventor
is free to make a presentation or publish an
article about it.
Procedures for IP Protection
• The inventor will be asked to assist with
responses to office actions from the patent
office.
• Copies of the issued patent are provided to
the inventor, Dean and Department Chair or
Center Director.
Procedures for Licensing
of Intellectual Property
• OIPTT conducts a preliminary market analysis
for licensable technology.
• OIPTT marketing efforts might include
targeted mailings and in-depth industry and
technology analysis.
Procedures for Licensing
of Intellectual Property
• The inventor plays a key role in assisting the
OIPTT Licensing Associate in writing a
marketing brief and frequently provides
advice on targeting the IP to specific
companies.
• Marketing briefs are also placed on the
ISURF/OIPTT web site.
Procedures for Licensing
of Intellectual Property
• Contact between the company and inventor
may be arranged, once a confidentiality
agreement with the Company has been signed.
• There are two basic forms of license, exclusive
and non-exclusive.
• The license gives specific rights for the licensee
to use our IP.
• ISU IP license negotiations are carried out by
OIPTT.
Procedures for Licensing
of Intellectual Property
• Guidance for License Negotiations:
– IP policies
– Conflict of interest policy
– University Mission
• Protect right and freedom to future research, publication and
public utilization
• Protect student’s rights to graduate
– Contract/Government codes and regulations
Technology Transfer Productivity:
AUTM Survey compared to ISURF Non-Germplasm
$2M/1.3M per disclosure
84,150/1207
Disclosures
$174 B/1.607B
Research
33%/48%
27,918/585 Patent
Applications
Assessment
27%/31%
57%/67%
15,947/390 Issued Patents
19%/32%
products
Commercialization
Strategy
23,044/371 Agreements
10%/12%
3%/4%
platforms
AUTM Licensing Surveys: FY91-FY99
ISURF: FY92 - FY2001
Copyright 2001, Trustees of University of Pennsylvania
2,375/43 Start-Ups