Transcript Technology Transfer Commercial Opportunities in Research J. Heidjer Staecker Partner What is Technology Transfer?  The process of transferring scientific findings from one organization to.

Technology Transfer
Commercial Opportunities in Research
J. Heidjer Staecker
Partner
What is Technology Transfer?
 The process of transferring scientific findings from one
organization to another for the purpose of further
development and commercialization.
 The process typically includes:
• Identifying new technologies
• Protecting technologies through patents and copyrights
• Forming development and commercialization strategies such as
marketing and licensing to existing private sector companies or
creating new startup companies based on the technology
Bayh-Dole Act
Prior to law
 Government held title to ~30,000 patents
 Less than 5% were licensed and operating
 All inventions and patents were available on a
non-exclusive basis
 Government rarely relinquished title after a
lengthy, petition process
 The public, as taxpayers, did not benefit from
investment in research and its outcome
Bayh-Dole Act
 P.L. 96-517, Patent and Trademark Act Amendments of 1980
 Established that Universities, not the gov't, own the rights to
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IP developed under federal research funding
Universities required to have written agreements with
faculty/staff for disclosures and assignments
University must disclose to funding agency w/in 2 months of
receiving disclosure
Decision to retain title to ownership must be made w/in 2
years of disclosure
Decision to patent must be made w/in 1 year of decision to
retain title
Preference given to small companies for licenses
Must share royalties with inventors
Limited government march-in rights
Bayh-Dole Objectives
 Promote utilization of federally-funded inventions
 Encourage small business engagement in
federally-funded R&D
 Promote collaborations between universities and
industry
 Promote commercialization in the U.S. of U.S.made federally-funded inventions
 Protect the government’s rights to federally-funded
inventions
Important Things to Remember
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Publication prior to filing creates IP issues
Cannot assign IP
Cannot provide unjust enrichment to a sponsor
Data is not IP unless agreed in contract
Publication rights critical
IP allows research to impact communities
Technology Transfer Process Lifecycle
• Research
• Technology Disclosure
• Commercialization Evaluation
• Protection
• Marketing
• License/Sponsored Research Agreement
TTO – basic functions for faculty
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Disclosure
Assignment
Patent Prosecution
Spin-out/license
Negotiate Transaction
Distribute royalties
Common Agreements
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MTA
CDA/NDA
IIA
Assignment Agreements
Licenses
TTO Activities
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Ownership of IP
IP Protection
Licensing
Compliance
Help with sponsored research
Start up formation
Importance to Research
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Applied Research as a Goal
Funding Sources
Impact on Communities
Notoriety
Build on Past Work
Publications
Freedom to Operate
Commercialization Evaluation - Purpose
 Technologies are evaluated from a commercial
perspective
 This differs from a legal or scientific evaluation
• The scientific and creative side of inventions are
generally top-notch
• Science alone does not create a market
• Similarly just because a technology can be patented does
not mean there is a market need for the innovation
 For successful commercialization efforts, it is
important to match innovation value with market
need
Commercialization Evaluation – Content
 Commercial Application
• Relationship of the invention to a product-commercial
application
• What problem does it solve?
 Technical Technology Summary
 Competitive Landscape and Commercial Benefits
-What are the top competing technologies?
-How does this new invention compare to competing technologies?
• More efficient
• Less expensive
• Better, Stronger, Faster, Cheaper, Greener
Commercialization Evaluation – Content
Continued
 Market Size and Trend
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• Define target industry/industry sectors
• Describe size and current trend of the target industries
Technical Development Direction
• Develop a recommended pathway to development
• Suggest additional applications or features for optimization
• Identify regulatory/commercialization hurdles and provide
advice for ways to overcome them
 Potential Partners Include
• Industry Partners
• Investors/VCs
• Community/Economic Development Groups
Marketing
Packaging The Technology –
The Summary
Packaging The Technology –
The Summary
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Exclusive right to disallow use by others
Provides the holder exclusive right to disallow use
20 years from date of filing
Public domain if public disclosure = not patentable
1 year grace in US
PCT = foreign patents
First to file in US as of March 2013 (AIA)
Packaging The Technology –
Additional information
 Potential partners will want to see additional,
non-confidential information:
• Publications
• Abstracts
• Presentations
• Video
• Data
 When marketing, this information is needed to fill
in the gaps in the marketing summary
 Also keep in mind additional applications
Types of Marketing:
Passive, Semi-Passive, Active
 Passive – Putting out a technology/discovery/
offer and wait for people to find it
• i.e., Websites & publication
 Semi-Passive (or semi-active) – Putting out a
technology/discovery/offer to a specific group of
people
• i.e., Social Media, conference presentations, etc.
 Active – Active engagement of targeted,
potential partners
• Phone calls, introductions, etc.
Resources: How does one find
companies & contacts?
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Research contacts
Peer publications
Knowledge of the field
Social media (i.e., Linked In)
Proprietary Databases (i.e., OneSource, Salesforce,
Hoovers etc.)
 Office of Patents & Licensing
 Internet Research
Pick up the Phone … and dial
 Personal interaction is most important way to
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establish first contact
Phone call is easiest way to do it
Meeting at a conference
Contact through a relation
E-mail and mail is too easily ignored, lost, or
forgotten
Someone wants to talk
 Non-confidential information first
 After NDA, confidential information and discussions
 Inventor availability and involvement very
important
 Remember research requirements
 Be realistic about development
Let’s talk about Cash
 How much money does you need to accomplish
your (and the company’s) research
goal?
 Defined actions
 Have you taken into account the university’s
overhead?
 Do not fudge the costs!
No one is interested
 Does not mean that it is bad science
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• Market timing may be wrong
• Market may be too small
• Path to market may be difficult
Focus on research opportunities around
technology
Think about alternative applications
IP, NDAs, MTAs, and other Nonsense
 Interaction with industry (and others) is based around a series of
legal constructs (concepts), whose goal is to protect the owners
(inventors, university, and industry)
• IP – intellectual property – patents, copyrights, trademarks, trade
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secrets, know how
NDA/CDA – Non-disclosure agreement – keeps secrets
MTA – Material Transfer Agreement – Keeps track of materials
coming in and out of labs
Sponsored Research Agreement – Contract that outlines a specific
line of research that is paid for by one of the parties
Option – Keeps a piece of intellectual property off the open market
for a period of time
License – A contractual transfer of rights between parties
 Some or all of these may come into play
Questions?