Technology Transfer Commercial Opportunities in Research J. Heidjer Staecker Partner What is Technology Transfer? The process of transferring scientific findings from one organization to.
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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
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
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
Disclosure
Assignment
Patent Prosecution
Spin-out/license
Negotiate Transaction
Distribute royalties
Common Agreements
MTA
CDA/NDA
IIA
Assignment Agreements
Licenses
TTO Activities
Ownership of IP
IP Protection
Licensing
Compliance
Help with sponsored research
Start up formation
Importance to Research
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
• 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
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?
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
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
• 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
•
•
•
•
•
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?