Transcript Document

Iowa State University
Technology Protection
and Licensing
Who We Are & What We Do
Iowa State University
Vice Provost for Research
ISU’s OIPTT (1990)
technology review,
marketing,
licensing, services
Iowa State University
Research Foundation, Inc.
Board of Directors
ISURF non-profit
(1938)
protects, owns and
manages assets
Iowa State University
Office of Intellectual Property and Technology Transfer
and
Iowa State University Research Foundation, Inc.
Director/Executive Director
Associate Director
Technology
Licensing
Manager
3
Licensing
Associates
Receptionist
License
&
Agreement
Assistant
Germplasm
Licensing
Associate
Accountant
IP Portfolio
Manager
Trademark
Licensing
Associate
Disclosure
&
Database
Manager
Secretary
Secretary
Patent
Administration
Assistant
Laws and Guiding Principles
• Federal laws, regulations and guidelines
– Federal research funding requires significant
reporting, use for public good, preference for
licensing to small businesses when
appropriate, and sharing income with
inventors
– Federal guidelines on research tools state
that the technology must be accessible
– Tax laws: ISU and ISURF must remain nonprofit
– Antitrust, export control, contract, and
intellectual property laws also apply
Laws and Guiding Principles
• ISU’s Mission Statement:
– ISU fosters the discovery and dissemination
of new knowledge…to address problems and
issues of concern to the State of Iowa in
particular, as well as to the national and
global community…conducted in an
environment of open scientific inquiry and
academic freedom.
Laws and Guiding Principles
• Applying ISU’s mission to technology
transfer
– Facilitate the commercialization of research
for the public good
– Promote economic growth
– Protect the right and freedom to future
research, publication, and public utilization
– Protect students’ right to graduate
• Policies: patent, germplasm,
educational materials, conflict of
interest & royalty sharing
Conflicting Values - Common
Interest
• University Values
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Knowledge for knowledge’s sake
Academic freedom/open discourse
Teaching, research, service, economic development
Non-profit laws
• Industry Values
– Management of knowledge for profit
– Confidentiality/limited public disclosure
– Profits, product R&D
• Common Interest
– Commercialization of new and useful technologies
What Is Intellectual Property?
• Creations of the mind protected by a
field of law conveying property rights
• The laws include
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Patent
Copyright
Trademark
Trade secret
Right of publicity
What Is Protected?
• Patents protect novel & useful inventive
matter (utility patent)
• Copyrights protect expression of authorship
• Trademarks-Service Marks protect
identifying symbols, words, or designs of
goods or services
• Trade Secrets protect confidential business
information, including proprietary materials
• Rights of Publicity protect an individual's
right to benefit from identity
What Is a Patent?
• A grant by the U.S. federal government to
new and useful machines,
processes/methods, articles of
manufacture, compositions of matter, or
improvements thereof to exclude others
from
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Making
Using
Selling (or offering to sell)
Importing
Requirements of a Patent
• Three key elements
– Novel (a new idea)
– Non-obvious to someone skilled in the art
– Useful (but not necessarily commercially
useful)
• Enablement: it must teach one skilled in
the art how to reproduce it
• Formal review process and grant by the
U.S. Patent and Trademark Office
(PTO)
• Each country must formally grant
patents
The Patent Process
• Preparation of patent application
– Patent attorney and inventor(s) prepare
• PTO reviews and corresponds to
applicant - we answer
• PTO sends a notice of allowance or final
rejection
• Average time to issue is 36 months;
average cost for U.S patent is $16,000
• Term of patent is now up to 20 years from
filing
Benefits and Limitations of
Patents
• Benefits
– Monopoly: no one can practice claims without
a license
– U.S. rule is first to invent, not first to file
• Limitations
– Public use, sale, or publication more than 1
year prior to filing bars filing; if less than 1 year
prior to filing, U.S. filing permitted, but lose
most foreign rights
– Formal process takes 2-4 years
– Granted by each country
– Expensive
What Is Copyright?
• Laws that convey ownership in the
EXPRESSION of an original work of
authorship: writings, software, multimedia,
photos, drawings, music
• No formalities are required to obtain
copyright protection; once a work of
authorship is fixed in a tangible form, it is
protected
Rights Under Copyright
• The owner has the right to and authorize
others to
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Reproduce
Distribute
Create derivatives (modify)
Perform certain types of work
Display certain types of work
Benefits and Limitations
Copyrights
• Benefits
– No formal process to protect
– Term of protection: author’s life + 70 yrs.
– U.S. protection has international extension
• Limitations
– Only expression is protected, not the ideas,
concepts, facts
– Others may create same work if independent
– Several exceptions to author’s rights
From Creation to License
• Disclosure - formal written description of the
creation
• Review and evaluation
• Patenting decision
• Marketing strategy
• Licensing strategy
• The license
• Maintaining the relationship
Review and Evaluation
• Rights to invention
– Funding and other agreements
– Collaboration internal & external
– Proprietary material, techniques, information
used
– Public disclosures
• Patentability
• Commercial potential
Patenting Decision
• Has it been publicly disclosed?
• What other protection is available?
– Tangible research property
– Copyright
– Trademark
• Would infringement be difficult to detect?
Marketing Strategy
• When do we start?
– Waiting for publication
– Waiting for data
• What is being made, used or sold?
• What is the state of the art?
• What other patents are needed to
commercialize?
• Who would use, make, & sell & why?
• What are the industry’s biases to inlicensing?
Marketing Steps
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Create marketing content
Create list of potential licensees
Contact potential licensees
Follow-up
Licensing Strategy
• What kind of company do we license (start-up,
small or large company)?
• What expertise would the licensee need?
• Exclusive vs. non-exclusive
• Field of use
• Geographic areas
Parameters of a License
• Royalties
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License issue royalty
Annual minimum royalty
Earned royalty
Equity
• Development milestones
• Reimbursement of patent costs
• Diligence provisions
Licensing - Economic
Development Success
• 544 technologies licensed -10 years
• 44 start-up companies since 1995 (56%
are still active)
• 40 Iowa-based start ups (50% are still
active)
• 857 license agreements for plant
germplasm (Iowa growers planted
184,000 bushels of specialty soybeans
in last 10 years)
• ISURF venture fund of $200K for
technology enhancement
Accessing ISU Technologies
• Funding faculty research activity
– Biotech website: research and biotechnology link at
www.biotech.iastate.edu
– Point of Contact: www.iastate.edu/bus
• Research publications often describe existing
IP
• Technologies available for licensing and signup: www.techtransfer.iastate.edu
• Agreements used in accessing IP:
confidentiality, material transfer, testing
(prototype, software), option, and license
How to Access Technologies for
Licensing
• Marketing and licensing staff 515-2944740
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Mary Kleis, Technology Licensing Manager
Todd Headley, Life Sciences - Biotechnology
Material Sciences - Chemistry
Eddie Boylston, Physical Sciences Engineering
– Julie Minot, Germplasm
• Web search at:
www.techtransfer.iastate.edu
License Process (Preferred)
• Meeting with researchers in lab
• Meeting with OIPTT & ISURF to review
interests of parties & process used to arrive at
a license
• Discuss various options including valuation of
the technology
• Prepare draft agreement
• Resolve any remaining conflict language
• Sign agreement
• Periodic visits to discuss development
Examples of Assistance Provided
to Our Licensees
• Work with companies to understand how our
technologies fit into their business
• Assisted licensee with assessment of a
possible joint venture with an overseas
corporation
• Re-negotiate payment schedule and other
terms of the agreement due to unexpected
business circumstances
• Offer an equity deal to start-ups to reduce
their up-front costs
Assisting Our Licensees
(continued)
• Assisted in licensees sublicensing activity by reviewing
the sublicense document
• Worked with development of a plan to manage large
volume of sublicensees through a third party manager
• Refer licensees to internal and external resources for
assistance
• Assist licensees in resolving enforcement issues
• Provide a $5,000 grant to start-ups to work with patent
attorney
• Submit or assist in submitting applications for R&D 100
Awards
Thank you for your interest in
Iowa State University