Transcript Technology Transfer University of Colorado Denver Rick Silva, Ph.D., M.B.A. -- Director Senior Licensing Managers David Poticha, M.S., J.D. Paul Tabor, M.S., M.B.A. Matt Pink, Ph.D. Anschutz Medical.

Technology Transfer
University of Colorado
Denver
Rick Silva, Ph.D., M.B.A. -- Director
Senior Licensing Managers
David Poticha, M.S., J.D.
Paul Tabor, M.S., M.B.A.
Matt Pink, Ph.D.
Anschutz Medical Campus
https://www.cu.edu/techtransfer/
Tech Transfer- Policy
Possibly the most inspired piece of legislation to
be enacted in America over the past half-century was
the Bayh-Dole act of 1980. Together with amendments
in 1984 and augmentation in 1986, this unlocked all
the inventions and discoveries that had been made in
laboratories throughout the United States with the
help of taxpayers’ money. More than anything, this
single policy measure helped to reverse America’s
precipitous slide into industrial irrelevance.
-The Economist, Dec 2002
Tech Transfer- Raison d'être
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Bayh-Dole signed into law in 1980
Federal research spending was not translating into
benefits for the general public
Established a property right for universities in
inventions made through the use of federal grants
Property rights made technology “ownable” thus
opening the doors for private investment in
technology- critical to the advent of biotech drugs
But not every project, program or piece of
research has commercial potential. Very few
programs do.
INTELLECTUAL property is more than just
a great thought and less than a completed
product.
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WHY IS I.P. IMPORTANT?
 Protects important assets
from theft, exploitation or
abuse, especially early assets
developed at Universities
 Identifies contributions by
the inventor to the field
 Secures monetary
compensation for the
University and the inventor
 Sometimes all a company
has to leverage is it’s IP
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Myths
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All projects create IP
All research has patentable outcomes
All patents are commercially viable
Research results can be owned or leveraged for financial
gain
 The University must own IP from all research done at the U
 Discoveries are patentable and inherently valuable
 Filing IP = commercialization
Realities
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Few projects create IP (less than 10% of all at CU)
Fewer projects have patentable outcomes (less than 10% that
result in an invention disclosure)
Even fewer projects are commercially viable (less than 20% of
patents are licensed)
Research results can be owned or leveraged for financial gain
(less than 1% of all licenses create over $250,000 in royalty
income)
Owning IP in a commerically uninteresting space is like owning
land on the moon.
It is one to two decades from the discovery of a new disease
mechanism to FDA approval of a drug leveraging that knowledge;
20 years for Zostavax, 16 years for Botox, 15 years for Kineret, 20
years and counting for Tarmogens
Filing a patent by itself will most certainly not result in a windfall
or scientific fame.
CU Policy on IP
 “Discoveries in which the University has an interest”
 Assigns ownership of IP from inventors to the
University
 “Substantial Use of University Resources”
 Addresses start-ups, consulting, distribution of
revenues
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Take Home Points
 Not all projects have intellectual property potential
 There is a scientific basis for making these determinations
 TTO is trained to identify all forms of intellectual property
and can work with investigators and sponsors to quickly
determine the possibility of commercializable intellectual
property
 TTO is here as a service to the University at large and the
offices within that deal with documents addressing
intellectual property or research discovery related issues
 TTO has successfully collaborated with the University to
commercialize a number of discoveries
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Chicken Pox
Vaccine
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Conduct market
research.
Conduct a prior art
search.
Is the invention
patentable?
Is the invention
commercially viable?
Yes
No
No
Yes
Do we want to
release rights?
Yes
Follow procedure to release
rights.
Get cost estimate from
patent attorney to file a
provisional application.
Prepare a Patent
Justification and
submit to director
Approved?
Patent administrator
prepares engagement
letter.
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The END
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