1

Tech Transfer Office Tech Transfer Office (TTO) Best(TTO) BestPracticesPractices

The 4th Annual Conference on TechnologyThe 4th Annual Conference on TechnologyCommercializationCommercialization

““Technology Transfer (R&D and IP Technology Transfer (R&D and IP Commercialization,Commercialization,

Policies, and Investment)”Policies, and Investment)”Amman Jordan (12 Nov 2008)Amman Jordan (12 Nov 2008)

Michael J. MartinMichael J. MartinPresidentPresident

TechTransfer Associates, IncTechTransfer Associates, Inc..

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Mike MartinMike Martin• BChE, and MBA BChE, and MBA • 15 years Business Development: 15 years Business Development:

DuPont, PPG, Ciba-GeigyDuPont, PPG, Ciba-Geigy• 11 years Michigan State U.: 11 years Michigan State U.:

Increase Small Business Presence Increase Small Business Presence on Campus, Research Consortium, on Campus, Research Consortium, New Start-Ups, IP licensing.New Start-Ups, IP licensing.

• 10 years Virginia Tech: 10 years Virginia Tech: Commercialization of Research Commercialization of Research Results and IP in Research Results and IP in Research ContractsContracts

3

Why Tech Transfer is Why Tech Transfer is important to MENA: the important to MENA: the

“World is Flat”“World is Flat”• Situation similar to USA in ’80’s Situation similar to USA in ’80’s

– Invest in Higher Education and Research Invest in Higher Education and Research Centers: Centers: • Silos of scientific disciplineSilos of scientific discipline• Discovery but no InnovationDiscovery but no Innovation

– ““Brain Drain”: from the Midwest to the CoastsBrain Drain”: from the Midwest to the Coasts– IP more defensive than proactiveIP more defensive than proactive

• Requirements for High Tech Business GrowthRequirements for High Tech Business Growth– Access to Inventions, especially basic Access to Inventions, especially basic

discoveries discoveries – Ease of multi-discipline collaborationEase of multi-discipline collaboration– Robust IP protectionRobust IP protection

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Thomas Friedman: “The Thomas Friedman: “The World is Flat”World is Flat”

• Global competition moving to global collaborationGlobal competition moving to global collaboration• Introspection: Blacksburg, VA; Rapid City SD; Introspection: Blacksburg, VA; Rapid City SD;

Tunis, TunisiaTunis, Tunisia

0

200

400

Millions of People Living < $1/day (Source World Bank, p. 315 "World is Flat)

China 375 212 16

sub-Saharan Africa 227 313 340

1990 2001 2015

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Thomas FriedmanThomas Friedman“The World is Flat”“The World is Flat”

2121stst Century Reform Retail – Bottom UP Century Reform Retail – Bottom UP

(Reduction of Friction)(Reduction of Friction)• ““enable the greatest number of your enable the greatest number of your

people to have the best legal people to have the best legal framework within which to innovate, framework within which to innovate, start companies, and become start companies, and become attractive partners…”attractive partners…”

• It’s not about jobs; e.g. Egypt It’s not about jobs; e.g. Egypt

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Government IP Strategic Management Government IP Strategic Management CapabilitiesCapabilities

• Enabling TT through: Enabling TT through: – Law and Policy Law and Policy – Training: Administrators, Training: Administrators,

TT staff, and SME TT staff, and SME – Patient Risk Capital Patient Risk Capital

(Social and $)(Social and $)

• Licensing from Licensing from Government Labs (NIH Government Labs (NIH v USDA v DOD)v USDA v DOD)

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Government IP Strategic Management: Government IP Strategic Management: EnablementEnablement

US POLICY CHANGED IN 1980US POLICY CHANGED IN 1980

• Policy GoalsPolicy Goals: : Promote economic developmentPromote economic development Enhance U.S. competitiveness through Enhance U.S. competitiveness through

innovationinnovation Benefit public by encouraging Benefit public by encouraging

commercialization of technologies that commercialization of technologies that would otherwise not be developed into would otherwise not be developed into products due to lack of incentivesproducts due to lack of incentives

Expand Defense supplier base. Expand Defense supplier base.

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Laws Enacted to Achieve Laws Enacted to Achieve Policy GoalsPolicy Goals

Bayh-Dole Act of 1980Bayh-Dole Act of 1980

Stevenson-Wydler Technology Innovation Act of Stevenson-Wydler Technology Innovation Act of 19801980

Federal Technology Transfer Act of 1986 (FTTA)Federal Technology Transfer Act of 1986 (FTTA)

Executive Order 12591 “Facilitating Access to Executive Order 12591 “Facilitating Access to Science and Technology”, April 10, 1987 Science and Technology”, April 10, 1987

The National Competitiveness Technology The National Competitiveness Technology Transfer Act of 1989 Transfer Act of 1989

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Success of Bayh DoleSuccess of Bayh Dole

• National ResultsNational Results– $40 billion in economic activity that $40 billion in economic activity that

supported more than 270,000 jobs supported more than 270,000 jobs with 5,724 spinouts since 1980with 5,724 spinouts since 1980

– 628 Start-ups and 4,932 licenses in 628 Start-ups and 4,932 licenses in 20062006

• U of Cal System U of Cal System (9 universities ’91-’00)(9 universities ’91-’00)– 4450 disclosures, 1055 “at risk” 4450 disclosures, 1055 “at risk”

patent appspatent apps– 31%(330) “at risk” patents licensed31%(330) “at risk” patents licensed– 13% (140) positive return, 0.28% (3) 13% (140) positive return, 0.28% (3)

earned > $1 millionearned > $1 million• Stanford University (’70 – ’01)Stanford University (’70 – ’01)

– 4,300 disclosures; 30% licensed4,300 disclosures; 30% licensed– 50% licensees < $10,000 income50% licensees < $10,000 income– 30 (0.69%) > $100,000; only one 30 (0.69%) > $100,000; only one

blockbusterblockbuster

% Licenses in FY 2005

63%

37%

Exclusive Non-Exclusive

% Licensees in FY 05

31%13%

50%

Start-Ups Small Co. Large Co.

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Assistance from the US Government to Assistance from the US Government to

protect IPprotect IP

• http://www.stopfakes.gov/http://www.stopfakes.gov/: : – 15 Country 15 Country IP-Toolkits to aid American innovators and IP-Toolkits to aid American innovators and

entrepreneurs protect their intellectual property. entrepreneurs protect their intellectual property. – The The

National Intellectual Property Rights Coordination CenterNational Intellectual Property Rights Coordination Center; ; The The U.S. International Trade CommissionU.S. International Trade Commission ; The USITC ; The USITC Trade Remedy Assistance OfficeTrade Remedy Assistance Office ; The ; The Office of the United States Trade RepresentativeOffice of the United States Trade Representative (USTR); (USTR); The The U.S. Commercial ServiceU.S. Commercial Service ; The ; The Office of Intellectual Property RightsOffice of Intellectual Property Rights

• The International IPR Advisory Program provides:The International IPR Advisory Program provides:– Help American businesses understand how to develop an Help American businesses understand how to develop an

intellectual property protection strategy for a foreign intellectual property protection strategy for a foreign market; market;

– Help to U.S. companies facing IPR disputes abroad pursue Help to U.S. companies facing IPR disputes abroad pursue resolution to their problems; and resolution to their problems; and

– To request a free consultation with a volunteer attorney or To request a free consultation with a volunteer attorney or obtain additional information regarding this program, visit obtain additional information regarding this program, visit the ABA Section of International Law web site: the ABA Section of International Law web site: www.abanet.org/intlaw/intlproj/iprprogram.htmlwww.abanet.org/intlaw/intlproj/iprprogram.html

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Government IP Strategic Government IP Strategic Management: EnablementManagement: Enablement

• TrainingTraining– Customized curricula for University Customized curricula for University

administrators, TT staff and SMEadministrators, TT staff and SME– Standard outline: What is IP, How to protect Standard outline: What is IP, How to protect

it, Why and How to be successful at TTit, Why and How to be successful at TT

• Patient Risk CapitalPatient Risk Capital– Social: Venues for Innovation Technologists to Social: Venues for Innovation Technologists to

meet plus Permission to fail plus Be Presentmeet plus Permission to fail plus Be Present– $: Valley of Death and Seed Venture Capital $: Valley of Death and Seed Venture Capital

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What are the Barriers to Effective TT What are the Barriers to Effective TT RelationshipRelationship

• Ownership of IPOwnership of IP• Early funding: Early funding:

Valley of DeathValley of Death• Early Stage Early Stage

TechnologiesTechnologies• Focus on the deal, Focus on the deal,

not the relationshipnot the relationship• Patient Risk CapitalPatient Risk Capital• Lack of Committed Lack of Committed

ChampionsChampions• Insufficient Insufficient

Understanding of Understanding of University/Business University/Business NeedsNeeds

Friends and Family Federal and State Grants (SBIR and STTR) Corporate Funding Self Funding Angel Investors Venture Capital

The ValleyThe ValleyOfOf

DeathDeathA

vaila

bili

ty o

f C

apit

al

Availa

bili

ty o

f C

apit

al

BasicBasicResearchResearch

Development &Scale-up

CommercialOperation

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Government IP Strategic Government IP Strategic Management: ActionManagement: Action

• Mixed record at US Mixed record at US Government labs:Government labs:– NIH v. USDA v DODNIH v. USDA v DOD– Taxpayer has already Taxpayer has already

paid, should not pay paid, should not pay againagain

– Not important part of Not important part of the mission: pre-license the mission: pre-license proposal, public notice proposal, public notice of bid, focus on non-of bid, focus on non-exclusive licenses, exclusive licenses, paperwork and paperwork and executive reviewexecutive review

• What is Philippine What is Philippine Policy/PracticePolicy/Practice

New Invention New Invention DisclosuresDisclosures

~400/year~400/year

Newly issued US Newly issued US patentspatents

~100/year~100/year

Invention licensesInvention licenses ~250/year~250/year

RoyaltiesRoyalties ~$90M/year~$90M/year

NIH TT Performance

US Patents US Patents IssuedIssued

3535

Total LicensesTotal Licenses 327327

License License RevenueRevenue

$3.6 M/Year$3.6 M/Year

USDA TT Performance

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University IP Strategic University IP Strategic Management: EnablementManagement: Enablement

• Enabling TT through: policy, Enabling TT through: policy, structure and executive support; structure and executive support; Training of Faculty; and Patient Risk Training of Faculty; and Patient Risk Capital (Social and $)Capital (Social and $)

• Tech Transfer Operations: Tech Transfer Operations: Organization and SupportOrganization and Support

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University IP Policy/PracticeUniversity IP Policy/Practice

COI/COC

PatentCopyright

Law

Bayh-DoleLaw

InternalRevenue

Code

Codeof

Virginia

SCHEVGuidelines

University Tech Transfer Policy/Practice

Research ContractNegotiations

Ownership of Intellectual

Property

Commercialization of

IntellectualProperty

University Culture

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Intellectual Property Policy at Virginia TechIntellectual Property Policy at Virginia Tech

• Policy 13000: Policy on Intellectual Policy 13000: Policy on Intellectual PropertiesProperties• Ownership: Scholarship vs. Research ResultsOwnership: Scholarship vs. Research Results• Obligation to DiscloseObligation to Disclose• Distribution of Income = 50/40/10, unless Distribution of Income = 50/40/10, unless

Assigned Task Assigned Task • Right of AppealRight of Appeal• Ownership is transferred to VTIP which has Ownership is transferred to VTIP which has

total responsibility and authoritytotal responsibility and authority

• Intellectual Property CommitteeIntellectual Property Committee• Determines OwnershipDetermines Ownership• Evaluates Technical Merit and Potential Evaluates Technical Merit and Potential

ApplicationsApplications• Recommends PolicyRecommends Policy

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Setting up systems for effective Setting up systems for effective management of IPmanagement of IP

• Obligation to Obligation to DiscloseDisclose

• EnablementEnablement• EmbodimentEmbodiment• First Record of First Record of

InventionInvention• Inventive Inventive

ContributionContribution• AssignmentAssignment• Share of ProceedsShare of Proceeds

VIRGINIA TECHVIRGINIA TECHINTELLECTUAL PROPERTY INTELLECTUAL PROPERTY DISCLOSUREDISCLOSURE    NOTE: Intellectual property disclosures NOTE: Intellectual property disclosures are treated as confidential information. are treated as confidential information. Except for individuals engaged in the Except for individuals engaged in the evaluation and approval process, the evaluation and approval process, the information will not be divulged to others information will not be divulged to others without the permission of the without the permission of the originator(s), except as required by law.originator(s), except as required by law.  1. TITLE OF WORK: 1. TITLE OF WORK:     2. TYPE OF WORK: Invention ___ 2. TYPE OF WORK: Invention ___ Software ___ Book ____ Article ___ Software ___ Book ____ Article ___ Video ______ Film ______ Other ____ Video ______ Film ______ Other ____ (Describe)(Describe)    3. LIST OF ORIGINATORS (authors, 3. LIST OF ORIGINATORS (authors, inventors, creators or other contributors) inventors, creators or other contributors) of the work.of the work.  

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How do you measure How do you measure success of University success of University

Tech Transfer?Tech Transfer?•Depends on your goalDepends on your goal

– Service (Happy Faculty) Service (Happy Faculty) – Economic Development (Start-ups) Economic Development (Start-ups) – Focused Investment (Return On Focused Investment (Return On

Investment)Investment)– Hybrid (Some or all of the above)Hybrid (Some or all of the above)

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How organize TLOHow organize TLO• Organization: Inside vs. External Organization: Inside vs. External

– Inside: Inside: • Normally report to Chief Research OfficerNormally report to Chief Research Officer• Funding is University budget with potential for sustainabilityFunding is University budget with potential for sustainability

– Outside: Foundation or Not for Profit BusinessOutside: Foundation or Not for Profit Business• Increase flexibility for hiring, services, and equity Increase flexibility for hiring, services, and equity

participationparticipation• Funding is foundation based with potential for sustainabilityFunding is foundation based with potential for sustainability

– Cluster multiple universities: Virginia (ALCOVE) and Cluster multiple universities: Virginia (ALCOVE) and FloridaFlorida

– For profit companies supply services till demand For profit companies supply services till demand justifies investment: BTG, ARCH, TechTransfer Assoc.justifies investment: BTG, ARCH, TechTransfer Assoc.

• Budget: Patient Risk Capital Budget: Patient Risk Capital

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What are the functions of What are the functions of a TLO?a TLO?

•Research Agreements, MTA, CDA•Encourage and Evaluate Disclosures•IP Resource for University•Economic Development

•Manage Patent Applications•Market Disclosures•Negotiate Licenses

•Manage Licenses•Maintain Patents

Inactivate Inactivate

Administration Faculty Industry

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Tech Transfer Professional: Balance Tech Transfer Professional: Balance of Skillsof Skills

• Social – Bridge two cultures and translate benefits/needsSocial – Bridge two cultures and translate benefits/needs

• Business – Work in both not for profit accounting and Business – Work in both not for profit accounting and investment capital, product development analysisinvestment capital, product development analysis

• Science – Understand the basic underpinnings and look Science – Understand the basic underpinnings and look beyond the initial application of discoverybeyond the initial application of discovery

• Law – Understand the basics of intellectual property law Law – Understand the basics of intellectual property law and be able to read and negotiate license agreementsand be able to read and negotiate license agreements

Dealmaker(Market/Business/Product

Developer + Sales+ Negotiator)

Technician(Patent Agent +

Scientist + Engineer)

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University IP Strategic University IP Strategic Management: EnablementManagement: Enablement

• Training of FacultyTraining of Faculty– Demonstrate how it supports outreach and Demonstrate how it supports outreach and

research missionresearch mission– Standard curriculum: What is IP, How to Standard curriculum: What is IP, How to

protect it, Why and How to be successful at TTprotect it, Why and How to be successful at TT

• Patient Risk Capital (Social and $)Patient Risk Capital (Social and $)– Set up recognition events where faculty and Set up recognition events where faculty and

entrepreneurs can meetentrepreneurs can meet– Limited gap funding ( $ 1 – 5k for prototype Limited gap funding ( $ 1 – 5k for prototype

only)only)

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Invention

PatentingPatent Atty

DisclosureEvaluation

Marketing

Licensing

Protect if Publication is Imm

inent

TECH TRANSFER: COMPLEX SYSTEM

Products

BusinessSpin offs

Research Investment

Inventor/Additional Develop

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Small and Medium Size Small and Medium Size Businesses (SME)Businesses (SME)

• Enabling TT through policy and Enabling TT through policy and executive support; Business executive support; Business Development Training; and Patient Development Training; and Patient Risk Capital (Social and $)Risk Capital (Social and $)

• How to source and develop How to source and develop innovationinnovation

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Why SME should be interested in IPWhy SME should be interested in IP• Competitive AdvantageCompetitive Advantage

– Double ROI if University Double ROI if University Relationship (INC, ’93)Relationship (INC, ’93)

– Geography: University in 29/30 Geography: University in 29/30 High Tech Areas (Milliken)High Tech Areas (Milliken)

• Leverage DevelopmentLeverage Development– Subsidized development costSubsidized development cost– Access to sophisticated facilities Access to sophisticated facilities

even with IRS Regulationseven with IRS Regulations

• Windows on the FutureWindows on the Future– Technology Road MapTechnology Road Map– Future EmployeesFuture Employees

$0$5

$10$15$20$25$30

Phar

ma

Com

pute

rA

uto

Softw

are

Sem

icon

Che

mic

al

Industry R&D (billions of dollars)

19972000

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IP management strategy IP management strategy for SMEfor SME

• How does IP enhance the growth How does IP enhance the growth strategy of the SMEstrategy of the SME

• Valuation and Investment issues Valuation and Investment issues based on IPbased on IP

• Monetization of non-tangible Monetization of non-tangible assets of IPassets of IP

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Ideal IP Strategy for SMEIdeal IP Strategy for SME

Practices of companies achieving the “Visionary” status Practices of companies achieving the “Visionary” status ( best practices for industry)( best practices for industry)

• Align IP strategy with corporate strategy and obtain Align IP strategy with corporate strategy and obtain management buy-inmanagement buy-in

• Conduct competitive assessmentsConduct competitive assessments• Patent strategically by identifying and exploiting trends in their Patent strategically by identifying and exploiting trends in their

industry to create new rules in the gameindustry to create new rules in the game• Manage their IP across multiple functions and have a proactive Manage their IP across multiple functions and have a proactive

licensing organization. licensing organization. [1][1]–

[1][1] Davis Julia, KMPG, Intellectual Asset Management: A View Across Many Companies, LES Winter Meeting, February 14, Davis Julia, KMPG, Intellectual Asset Management: A View Across Many Companies, LES Winter Meeting, February 14, 20032003

IP Value HierarchyIP Value HierarchyVisionary (Drive growth)Visionary (Drive growth)

Integrated (Manage for growth)Integrated (Manage for growth)Profit Center (Manage for profitability)Profit Center (Manage for profitability)

Cost Control (Control costs, improve productivity)Cost Control (Control costs, improve productivity)Defensive (Build portfolio, protect markets and Defensive (Build portfolio, protect markets and

technology)technology)

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Setting up systems for effective Setting up systems for effective management of IP in an SMEmanagement of IP in an SME

• Appropriate Protection: Trade Secret, Appropriate Protection: Trade Secret, Patent, Copyright, Know How, Patent, Copyright, Know How, TrademarkTrademark

• Timing: Status of PublicationsTiming: Status of Publications• If Patent:If Patent:

– Select Appropriate CounselSelect Appropriate Counsel– Set up Set up Docket Management SystemDocket Management System– Facilitate Inventor/attorney meetingFacilitate Inventor/attorney meeting – Upon issuance, set up maintenance fee Upon issuance, set up maintenance fee

payment payment

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Triage of IP: Evaluation then Triage of IP: Evaluation then Valuation of Intellectual PropertyValuation of Intellectual Property

• Commercialization Commercialization DecisionDecision– Technical MeritTechnical Merit– Commercial Commercial

OpportunityOpportunity– ProtectableProtectable

• Licensing Licensing NegotiationsNegotiations– Cost ApproachCost Approach– Market ApproachMarket Approach– Income ApproachIncome Approach– Relief from RoyaltyRelief from Royalty

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Determination of Determination of Monetization StrategyMonetization Strategy

• Based on Triage of Portfolio and Based on Triage of Portfolio and Strategy of Firm:Strategy of Firm:– Define “Core” and “Non-Core” IPDefine “Core” and “Non-Core” IP– Determine best utilization of IP portfolio Determine best utilization of IP portfolio

= Product Commercialization, = Product Commercialization, Licensing, AssertionLicensing, Assertion

• Confirm that sufficient patient assets Confirm that sufficient patient assets are available to implement strategy. are available to implement strategy.

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Out comes of a successful Out comes of a successful business licensing operationbusiness licensing operation

• Licensing revenues, Licensing revenues, – Total Licensing revenues, Net Licensing revenues, or Cost Total Licensing revenues, Net Licensing revenues, or Cost

avoidanceavoidance– $ income/patent: IBM ~$30k/patent; DuPont ~$25k/p; Intel ~ $ income/patent: IBM ~$30k/patent; DuPont ~$25k/p; Intel ~

$25k/p, and GE ~1.5k/p $25k/p, and GE ~1.5k/p – licensing revenue received as a percentage of R&D dollars: licensing revenue received as a percentage of R&D dollars:

DuPont = ~31%; IBM = ~23%; GE = ~4.5%; Intel = ~4%DuPont = ~31%; IBM = ~23%; GE = ~4.5%; Intel = ~4%• Purchase OrdersPurchase Orders• Winning Design Competitions and Design FreedomWinning Design Competitions and Design Freedom• Public Relations OpportunitiesPublic Relations Opportunities• Equity PotentialEquity Potential• Purchase DiscountsPurchase Discounts• Business Unit SynergiesBusiness Unit Synergies• Potential to Break Negotiation DeadlocksPotential to Break Negotiation Deadlocks(Source: Don Merino, Success Factors in High Tech licensing, LES Annual (Source: Don Merino, Success Factors in High Tech licensing, LES Annual

Meeting, Sept, 24 2003) Meeting, Sept, 24 2003)

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• Development of License Goals & ObjectivesDevelopment of License Goals & Objectives– Platform TechnologyPlatform Technology

• Heavy Investment Heavy Investment — Exclusivity / Focus on Leaders— Exclusivity / Focus on Leaders• Light InvestmentLight Investment — Probably Non-Exclusive / Cover — Probably Non-Exclusive / Cover

AllAll

– Incremental TechnologyIncremental Technology• Heavy InvestmentHeavy Investment

– Dominated Dominated — Exclusive to Leader OR to Wanna-Be’s— Exclusive to Leader OR to Wanna-Be’s– FragmentedFragmented — Non-Exclusive to any or all [tough sell]— Non-Exclusive to any or all [tough sell]

• Light InvestmentLight Investment– DominatedDominated — Exclusive to Leader or to Wanna-Be’s— Exclusive to Leader or to Wanna-Be’s– FragmentedFragmented — Non-Exclusive to all OR— Non-Exclusive to all OR

— Field of Use to grant Mini-Exclusives— Field of Use to grant Mini-Exclusives

• Valuation Analysis to Determine Starting Valuation Analysis to Determine Starting PointPoint

Implementation of Implementation of Licensing StrategyLicensing Strategy

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• Develop single page, non-confidential Develop single page, non-confidential description with: problem solved, benefits of description with: problem solved, benefits of solution, potential applications, and status. solution, potential applications, and status.

• Conduct market research and identify Conduct market research and identify opportunitiesopportunities

• Identify Contacts: Primary source is Identify Contacts: Primary source is InventorInventor

• Use Web effectivelyUse Web effectively

Implementation of Licensing Implementation of Licensing StrategyStrategy

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Lessons Learned by TLO in Dealing Lessons Learned by TLO in Dealing with Facultywith Faculty

• Work with only 10-20% of the faculty – Work with only 10-20% of the faculty – identify the stars and determine their identify the stars and determine their interest in commercialization. interest in commercialization.

• Ask questions: not an expert in anything Ask questions: not an expert in anything but IP and business developmentbut IP and business development

• Offer assistance to complete disclosuresOffer assistance to complete disclosures• Review negotiations and valuations but Review negotiations and valuations but

explain there can only be one person at explain there can only be one person at the tablethe table

• Nothing breeds success like success – Nothing breeds success like success – “Porsche in Parking Lot”“Porsche in Parking Lot”

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Lessons Learned by TTO in Lessons Learned by TTO in EvaluationEvaluation

• Policy must be clear about Ownership: Policy must be clear about Ownership: Scholarship vs. Supported Research Scholarship vs. Supported Research ResultsResults

• TTO must Create Desire to DiscloseTTO must Create Desire to Disclose• Initial review should be fast and based Initial review should be fast and based

on interview with inventor.on interview with inventor.• Information reduces risk and raises Information reduces risk and raises

valuevalue• Be the source of market feedbackBe the source of market feedback• Do not ignore paperworkDo not ignore paperwork

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Lessons Learned by TTO in Patent Lessons Learned by TTO in Patent ManagementManagement

• Has there been a prior art (patents and Has there been a prior art (patents and literature) search completed?literature) search completed?

• Has a patent application or copyright been filed? Has a patent application or copyright been filed? • What is the application status?What is the application status?• If not filed: If not filed:

– What is the assessment of the: Novelty (Prior Art), What is the assessment of the: Novelty (Prior Art), Obviousness, Useful (Utility)Obviousness, Useful (Utility)

– If the invention is still confidential, is there a If the invention is still confidential, is there a published procedure for maintaining a trade published procedure for maintaining a trade secret?secret?

• What is the scope of the claims in the Patent or What is the scope of the claims in the Patent or the Patent Application – Broad or Narrow the Patent Application – Broad or Narrow

• Types of Claims: Material of Composition, Types of Claims: Material of Composition, Method to Make, etc. Method to Make, etc.

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Lessons Learned by TTO in Lessons Learned by TTO in PatentabilityPatentability

• Is there freedom to operate? Are other patents required to Is there freedom to operate? Are other patents required to utilize the invention?utilize the invention?

• Does the copyrighted material utilize any Open Source Does the copyrighted material utilize any Open Source code?code?

• Would patent infringement be detectable and enforceable?Would patent infringement be detectable and enforceable?• Would patent claims protect a developer’s investment in Would patent claims protect a developer’s investment in

developing and marketing a product or service?developing and marketing a product or service?• Are International patents necessary to derive value Are International patents necessary to derive value

sufficient for investment to commercialize the invention?sufficient for investment to commercialize the invention?• Ownership. Ownership.

– Has an assignment been completed by all identified inventors, Has an assignment been completed by all identified inventors, including third parties?including third parties?

– Are there any prior claims to the invention or the copyrighted Are there any prior claims to the invention or the copyrighted work?work?

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Lessons Learned by TTO in Lessons Learned by TTO in NegotiationNegotiation

• Prepare your position/Understand Prepare your position/Understand theirstheirs

• Request an offerRequest an offer• Listen Actively… and carefullyListen Actively… and carefully• Probe their rationale and yoursProbe their rationale and yours• Create options/make counter offersCreate options/make counter offers• Confirm agreement and benefits to Confirm agreement and benefits to

each sideeach side• Close firmly, amicably, and define Close firmly, amicably, and define

the next step.the next step.

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Lessons Learned by TLO in Lessons Learned by TLO in Start-upsStart-ups

• University/EmployeeUniversity/Employee– Conflict of InterestConflict of Interest policiespolicies– Who negotiatesWho negotiates

• Role of TTO - FacilitatorRole of TTO - Facilitator• Proceeds of LicenseProceeds of License

– Who holds equityWho holds equity– How are proceeds distributedHow are proceeds distributed

• WHY DO MOST START-UPS FAIL?WHY DO MOST START-UPS FAIL?– Poor planning.Poor planning.– Lack of management ability.Lack of management ability.– Insufficient capital.Insufficient capital.– Misreading the market.Misreading the market.– Emotional rather than logical decisions.Emotional rather than logical decisions.– Ego and greed.Ego and greed.

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Example: Example: Direct Marketing with Direct Marketing with

Start-up Start-up • Initial Marketing Initial Marketing

VTIP/Atlas VTIP/Atlas – Product = Beta TestedProduct = Beta Tested– Price = $32,000 to $16,000 Price = $32,000 to $16,000

to $5,000to $5,000– Promotion = Promotion = Newsletters, Newsletters,

Trade Shows, TestimonialsTrade Shows, Testimonials

– Position = Another Position = Another advancement from VTadvancement from VT

– Protected Niche = Loyal to Protected Niche = Loyal to Librarian SolutionsLibrarian Solutions

• Now OCLC/AtlasNow OCLC/Atlas

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ConclusionsConclusions• Tech Transfer is Tech Transfer is

– Complex, Non-Linear ProcessComplex, Non-Linear Process– Career with unique skill requirementsCareer with unique skill requirements– Long term investment for societal good Long term investment for societal good

(advance knowledge, new jobs, new (advance knowledge, new jobs, new products, and new businesses)products, and new businesses)

• Start-up operations require:Start-up operations require:– Agreement on success, goals and source of Agreement on success, goals and source of

capitalcapital– Sufficient supply of disclosures and demand Sufficient supply of disclosures and demand

for licensing new technologyfor licensing new technology– Administration, Faculty, Governmental and Administration, Faculty, Governmental and

Business Champion(s)Business Champion(s)

42

Invention

PatentingPatent Atty

DisclosureEvaluation

Marketing

Licensing

Protect if Publication is Imm

inent

Questions ????

Products

BusinessSpin offs

Research Investment