Transcript Slide 1

OSPA Symposium II
Patents and Licenses
Michael F. Moore
Manager, Business Dev & Compliance OTC
2/17/09
Knowledge Transfer
• University mission:
– Research and discovery
– Teaching and learning
– Outreach and public service
• Expertise and technologies are transferred
to society in many ways
– Academic publications
– Presentations, posters, web
– Education of students
– Licensing intellectual property for
development into commercial products
Technology Transfer Simplified
• Technologies developed at the U by:
– Faculty
– Students
– Staff
• Are protected by patent and/or copyright
• Then, licensed to an existing company
– Or a new start-up company is formed
• The company sells a product
• Net income obtained from the license
agreement is distributed to the inventors,
department, college and University
• U retains equity in startups which later
may be sold to provide cash proceeds
Why Technology Transfer?
• Faculty and researchers benefit…
– See your work practically benefit
society
– Increased industry contact
– Attracts research sponsors
– Potential financial reward
– Recognition
– Policy
• Students benefit…
– Increased opportunities for
employment
Why Technology Transfer?
• University benefits…
– Recognition and financial reward
– Provides critical financial resources to
support U’s academic mission
– Tech Transfer is now more important as
other funding sources dry up
• The public benefits…
– Creates new businesses and jobs
– Leads to new products and services
that improve the quality of life
Technology Transfer Process
Technology Marketing
Strategy
•Compliance
•Contracts
•Accounting
Invention Evaluation
• Technologies are evaluated based on
– Commercial potential
• Solves a known problem (unmet need)
• Market size
• Market growth rate
– Ability to protect the IP (usually by
patent)
• Technologies must have reasonable
commercial potential and expected return
on investment
• We must understand the funding
mechanism that led to the development of
the invention!!
Protection Decision
• IPCC (Intellectual Property Commitment
Committee) approves filing of all patent
applications
• Business case for protecting and licensing
the technology is presented to IPCC
• IPCC determines if and recommends how
the University will pursue
commercialization of the technology
Marketing (Selling)
Finding the best possible licensee
•
•
•
•
Prepare marketing materials
If necessary, travel to visit the company
Find the right person in the company
Marketing usually has a scientific
component as well as a selling component
Licensing Phase
Striking the best deal for both parties
• A contract granting rights to make, use
and sell products covered by the U’s IP
• Can be exclusive or non-exclusive
• There are usually up front payments
• Most of the time the company picks up
patent costs
• Royalty on product sales
• Minimum annual payments
• Developmental Milestones
• Right to audit, reps, warranties etc.
Commercialization Phase
Making a product based on our IP
• The licensee almost always must invest in
some infrastructure to make a product
based on the IP they have licensed from
us
• There is a compliance function here too
– They must meet developmental
milestones we place in our agreements
• They will need to finance any regulatory
clearance that is required
IP Policy
The University is sole owner of all IP
• Created through the use of University
resources or facilities
• Supported directly or indirectly by funds
administered by the University
– Through SPA
• Developed within the scope of
employment by University employees
• Agreed in writing to be a specially
commissioned work
Revenue Distribution
Division of proceeds (net of expenses)
•
•
•
•
33-1/3% to University (OVPR)
33-1/3% to inventor(s)
8% to inventor’s college or school
25-1/3% to inventor’s department,
division, or center to be spent in support
of the inventor’s research or other directly
related University work
IP Commercialization Success Stories
•
•
•
•
Carbovir compounds to Glaxo SmithKline
PRRS vaccine to Boehringer Ingelheim
Honeycrisp Apples
Image Sensing Systems, Inc.
• Others that fall into the public good realm
– Retractable seatbelt
– The “Black Box” on airplanes
– Taconite process
Facts and Figures
University of Minnesota Technology Transfer
FY 2007
• 193 disclosures
• 51 new US patent applications
• 44 US patents issued
• 77 new licenses and options
• 4 start-up companies
• $63.5 million gross revenues*
* >$55M from a single technology (Ziagen™ AIDS drug)
Types of Intellectual Property
• Copyright
– Protects idea fixed in tangible medium of expression
(Expression, not idea, is protected)
– Must be original and have at least minimal creativity
• Can copyright original selections and
arrangement of facts
– Copyright vests automatically with the author(s)
– There may be multiple contributors
• Joint work
• Derivative work
• Compilation
– Faculty publications are copyright works
Types of Intellectual Property
• Trademarks
• Names, titles, short phrases, symbols,
logos
• Used in commerce to identify source
of goods/services
• Obtain protection through use but
perfect it nationwide through filing
with the USPTO via a trademark
application
Types of Intellectual Property
• Trade Secrets
– Information not publicly known, kept
reasonably secret
– Produces economic benefit and
business advantage to the owner
• Not classically used at the U
– Unpublished info/data is a “trade
secret”, but only until it is published
• Example, the formula for Coca-Cola
Types of Intellectual Property
• Mask Works
– Protects design of circuits on chips
• Plant Variety Protection Act –
Certificate
– Protects sexually reproducing plants
(seeds)
Types of Intellectual Property
• Patents
– Protects processes, machines, articles of
manufacture, inventions
– Must be non-obvious and novel
– Patented product must be useful
– Inventors are individuals(s) who made substantial
contributions to the invention
• Ownership may be separate from inventorship
– Must file for protection before disclosure ( 1 year US
grace period)
– Priority matters
• U.S.: who created it first
• International: first to file
• Record-keeping is vital
PATENT
• Legal document
• Granted and enforceable in individual
countries (e.g., U.S., Canada and France)
• Gives you the right to prevent others from
making, using, selling, importing or
offering the claimed invention for sale
• Patent term
– Used to be 17 years from issuance
– Now 20 years from date of filing
• Patent types (utility, design and plant)
THEORY OF PATENTING
• What is an inventor to
do?
• Keep it secret → No
value to public (no
patent rights)
• Full disclosure → Value
to public (patent rights)
• To encourage early and
full disclosure of
inventions, countries
offer inventors exclusive
rights in the invention for
a set period of time.
PATENTABILITY MAIN REQUIREMENTS
NOVEL
NONOBVIOUS
(INVENTIVE STEP)
USEFUL
PARTS OF A (U.S.) PATENT
1.
2.
3.
4.
TITLE
DESCRIPTION
• INTRODUCTION
• BACKGROUND TO INVENTION
• SUMMARY OF THE INVENTION
• DETAILED FEATURES OF THE INVENTION
– HOW TO MAKE INVENTION
– HOW TO USE INVENTION
– WORKING EXAMPLES (SPECIES)
CLAIMS
-DEFINES “METES AND BOUNDS” OF
INVENTION
ABSTRACT
Exemplary Patentable Inventions
• New composition of matter (e.g.,
compound, formulation or device)
• New method (process) of making known
composition of matter
• New method of using known composition
of matter
Examples of commercially successful patents
3M Corporation, U.S. Patent
6,572,945, issued June 3, 2003,
“Removable adhesive tape laminate
and separable fastener”
Regents of the University
of Minnesota
U.S. Plant Variety patent
PP 16,478, issued Feb. 10,
2004, “Frontenac gris”
Aerobie Corporation, U.S. Patent 6,682,449, issued
January 27, 2004
“Flying Toy and Method of Making Same”
Foreign Patent Filing Timeline
Typically a US Typically a US
Provisional
Utility and PCT
Application
Application
Patent
Application
Publishes
Typically file
Foreign national
Stage applications
PRIORITY
SUBSTANTIVE
FIRST PUBLICATION
APPLICATION
APPLICATION FILED OF SUBSTANTIVE
FILED
0
12 MONTHS
18 MONTHS FROM
EARLIEST PRIORITY
CLAIMED
BEGIN THE
NATIONAL
STAGE
30 MONTHS
FROM PRIORITY
APPLICATION
Patent “priority” is available for the basic invention
and minor developments
Foreign Patents
• Rest of the world is “first to
file” and in U.S., “first to
invent”
• File US first then file (Patent
Cooperative Treaty-PCT)
foreign patent apps in a year
• PCT - Only need to initially
file one patent application
with the PCT and claim all
relevant territories, Like
Europe.
• Prosecution standards are a
bit more rigid
CONCLUSION
• Intellectual Property is important to the U
– Patents
– Copyright’s
– Trademarks
– Plant Variety patents
– Know How
• OTC deals mostly with patents
– Value can be derived from all types of IP though
• Other types of IP are important, just not as prevalent
• OTC has significant experience in the management of
IP at the U including licensing it to companies for the
development of products to help society and to bring a
value based return to the U which we re-invest back
into the University
THANKS FOR YOUR ATTENTION
Mike Moore
[email protected]
References
• Office for Technology Commercialization
www.research.umn.edu/techcomm
• United States Patent and Tradmark Office
www.uspto.gov
• U of M Available Technologies
www.research.umn.edu/techcomm/technologies
• Google Patents
www.google.com/patents
• PatentScope – Search Foreign Patents
www.wipo.int/pctdb/en/search-adv.jsp