Transcript Slide 1

Pizza and Patents: Turning University
Science into Real-World Products
Corporate Entity for Commercialization
 CSURF is the legally appointed corporate entity for
commercialization and/or administration of intellectual
property developed at CSU.
 CSURF provides technology transfer services to all
departments at CSU.
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IP Management & Marketing
IP Licensing & Commercialization
Industry Partnerships/Collaborations
Start-ups
SBIR/STTR Support
Foundation, State & Government Funding Opportunities
Seed Capital Fundraising
Organizational Structure and Contacts
CSURF
CSU Ventures, Inc.
TT Office
MicroRxTM
NeoTREXTM
CenergyTM
CSU Mgmt Corp.
Marketing and
Licensing
Infectious Disease
Business Enterprise
Cancer
Business Enterprise
Clean Energy
Business Enterprise
For-profit Investment
Seed Fund
Todd Headley,
Director
Dian Kammeyer,
Licensing
Jeremy Nelson,
Licensing
Tara Marostica,
Marketing
Cindy Pederson,
IP Management
Joe Guiles,
COO
Rod Tompkins,
Bus. Dev. / Licensing
Lori Phelan
Bus. Manager
Terry Opgenorth,
COO
Stephen Foster,
Bus. Dev. / Licensing
Dave Lori
Bus. Dev. / Licensing
Tim Reeser,
COO
TBD
Bus. Dev. / Licensing
Mark Wdowik,
President/CEO
What is Technology Transfer?
 The process of transferring advances in knowledge from
research laboratories to the commercial sector in order
to develop and market useful products.
“The value of an idea lies in the using of it.”
Thomas Edison
The Bayh-Dole Act & University Technology
Transfer
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Congress was concerned about the failure of federally owned patents – Thus, BayhDole was enacted on December 12, 1980.
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Major provisions of the Act include:
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Non-profits, including universities and small businesses may elect to retain title to innovation
developed under federally funded research programs.
Universities are encouraged to collaborate with commercial concerns to promote the utilization
of inventions arising from federal funding.
Universities are expected to file patents on inventions they elect to own.
Universities are expected to give licensing preference to small business.
The government retains a non-exclusive license to practice the patent throughout the world.
The government retains march-in rights.
The Bayh-Dole Act was especially instrumental in encouraging universities to participate in
technology transfer activities.
The Act is “perhaps the most inspired piece of legislation to be enacted in America over
the past half-century…Innovation’s Golden Goose.”
- The Economist (December 12, 2002 Edition)
Why Participate in Technology Transfer?
 Make an Impact
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Commercialization of your research can positively effect people’s lives.
 Generate New Funding
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A successful invention can prompt the industry licensee to fund additional
research in your lab for years to come.
 Fulfill Requirements
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Sponsored research agreements, foundation and federal grants usually
require disclosure of new inventions to the sponsor or grantee.
CSU requires the disclosure of new inventions made by CSU employees to
CSURF.
 Reward Yourself
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Commercialized inventions may result in royalty payments to you and CSU.
Commercializing your technology could be an exciting new frontier for you.
What Technologies Have Come Out of
University Technology Transfer?
Technology
Inventor
Institution
Polio Vaccine (1955)
Jonas Salk
Univ. of Pittsburgh
Ultrasound (1958)
Ian Donald
Glasgow Univ.
Seat Belt (1963)
James "Crash" Ryan
Univ. of Minnesota
Gatorade (1966)
Robert Cade &
Dana Shires
Univ. of Florida
Tifway, Tifgreen, &
'Tif' grasses (1960’s)
Glen Burton
Univ. of Georgia
Recombinant DNA
Technology (1974)
Stanley Cohen &
Herbert Boyer
Stanford & UCSF
Allegra (1992)
Raymond Woosley
Georgetown
* From University of Virginia Patent Foundation
What is our Technology Transfer Process?
 Invention Disclosure
 Invention & Market Evaluation
 IP Protection
 Market Analysis
 Marketing
 Licensing/Commercialization
 Royalty Collection
Invention Disclosure
 What has to be disclosed?
 Generally, all CSU faculty members, staff, employees and
student employees are required to submit a disclosure to
CSURF on any intellectual property which was conceived,
created or reduced to practice utilizing university
resources.
 Exception: Text Books.
 See Section J of CSU’s Faculty Staff Manual
• Royalty distribution to Inventor(s) is 35% of net royalties
received by CSURF.
Invention Disclosure
 When should I disclose my technology?
 As soon as the invention can be completely described.
 Before any “public disclosure”
• Written publications;
• Oral presentations, collegial meetings;
• Public use, sale or offer for sale.
 Timely disclosure protects your U.S. and foreign patent
rights.
 One year “grace period” after public disclosure in the US.
What is public disclosure?
 For our purposes, public disclosure occurs when
previously undisclosed (i.e., secret) information is made
available to individuals not in the employ of CSU.
 It is not necessary that the public actually receives the
information.
 Dissertations in library, poster sessions on campus.
The Invention Disclosure Form
 Invention Disclosure Form begins the technology transfer
process.
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List of Inventors,
Description of invention,
Identify sponsors,
Associated Material Transfer Agreements.
 Provides basis for evaluating
 Patentability,
 Commercial utility.
Evaluation - Patent
 Preliminary prior art search to determine patentability.
 Keyword
 Domestic and foreign patents
• Current or expired
 Other publications
 Research collaborations
 Your own publications
 Other:
 Meaningful patent position – will a patent support products
that provide a commercial advantage in the
marketplace?
 Identify a commercial partner to support costs of U.S. Utility
or foreign filings.
U.S. patent law
 Patents are only granted by the Federal Government
 State measures are preempted.
 The United States utilizes a “first-to-invent” system
 Most other countries are “first-to-file.”
 Length of protection
 20 years from filing date for Utility and Plant patents
• Eligible for a term extension for Patent Office delays.
• Pharmaceutical patents are often extended for delays
related to regulatory approval processes.
Evaluation - Market
 Initial Market Assessment
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Work with Inventors to determine potential products/applications.
 Identify Potential Markets
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Size
Competing technologies
 Advantages and Disadvantages compared to current products.
 Identify potential Licensees/Commercial partners.
 Marketing Group will provide inventors with a report containing
prior art search results and marketing information.
Marketing
 Perform Detailed Market Analysis
 Identify Target Companies
 Create Non-confidential Summary with Inventor
 Contact Potential Commercial Partners
Commercialization
 Negotiate and sign agreement with startup or established
company.
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License/Option/Assignment Agreement
Exclusive
Non-exclusive
FOU either exclusive/non-exclusive
 Monitor agreement
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IP Protection
Payments
Reporting requirements
Due Diligence/commercialization efforts
 Licensee examples:
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Boeing, CH2M Hill, Pfizer, AML, Solix, AVA Solar.
School of Biomedical Engineering
 Therapeutics and Prostheses
 Artificial joints and limbs
 Engineered tissues and organs
 Grafts
 Biomaterials
 Novel Materials
 Modifications to existing Materials
 New Synthesis
 Diagnostics and Research Tools
 Biosensors
 Molecular Biology Tools
Invention Disclosure Statistics
FY
2006
FY
2007
FY
2008
FY
2009
Total
5
8
12
14
67
Technology Transfer Process
 Invention Disclosure
 We need a disclosure form from you!
 Evaluate Patent & Market Potential
 Patent Protection
 Market Analysis & Marketing
 Licensing/Commercialization
 Royalty/Payment Collection
Questions?
 More information from several web sources
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http://www.csurf.org/tto/
http://csuventures.org/
http://www.microrx.org/
http://www.neotrex.org/
http://energy.colostate.edu/