Intellectual Property and the Graduate Student

Presentation to

Agricultural and Biosystems EngineeringMarch 28, 2003

Kenneth Kirkland, Ph.D.Executive Director, Iowa State University Research Foundation, Inc.Director, Office of Intellectual Property and Technology Transfer

Phone: (515) 294-4740Email: kenk@iastate.eduwww.iastate.edu/~isurf

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Organization

Iowa State University Research Foundation, Inc. (ISURF)

Office of Intellectual Property and Technology Transfer (OIPTT)

• The Foundation was incorporated in 1938 as the Iowa State College Research Foundation to protect and license intellectual property developed by faculty, staff, and students

• ISURF is a not-for-profit corporation• ISURF owns and manages intellectual property for ISU. Intellectual

property ownership is assigned to ISURF according to university policies by inventors or creators who are employees* of the university.

• OIPTT markets and licenses the intellectual property assigned to ISURF

* Faculty, staff, graduate assistants, postdoctoral fellows, and visiting scholars and scientists

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ISURF/OIPTTFacts and Figures

FY02 budget of $3.3M

13 professional staff including 5 FTE for licensing

100 invention disclosures received in FY02

29 patents issued in FY02

30 patent applications filed in FY02. In addition, 34 provisional applications were submitted.

287 license agreements executed in FY02

ISURF has 416 royalty-generating agreements in place

Total licensing income in FY02 was $11.4M

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Importance of University Licensing(AUTM Statistics 2000)

Technology transfer plays an important role in the U.S. Economy

• Sales of licensed products $35B

• Investment by licensee companies $5B

• 270,000 jobs supported University activity (142 in U.S.)

• 368 start ups formed

• 3,272 US patents issued

• $1.1B in royalty income (< 4% of research expenditures) Importance of Bayh-Dole

• Universities can take title in IP developed under federal funding

• Can grant exclusive licenses

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What Is Intellectual Property (IP)?

Inventions covered by patent protection

Works of authorship protected by copyright (including software)

Proprietary materials such as software, biological materials, materials with potential commercial value, and trademarks

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What Is A Patent?

A legal document

Grants inventor the right to exclude others from making, using, selling or importing the described invention (a legal monopoly)

The most common form of patent is the utility patent which provides protection for a term of 20 years from filing

A U.S. patent does not give protection to the invention overseas

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Requirements For A Patent

The invention must be new. Other people cannot have used it or known about it before its invention.

The invention must be non-obvious. It cannot be evident to another person skilled in the same field as that of the invention.

The invention must be useful

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What Is Copyright?

An exclusive right granted by the federal government to the owner of an original work of authorship to do and to authorize others to reproduce, distribute, perform and/or display the protected work

Term of protection is life plus 70 years for an individual and 95 years from the publication date for an organization (or 120 years from the creation date, whichever is longer)

Copyright protection is used primarily for books, plays, video performances, movies, sculptures, paintings, musical recordings, musical compositions, software and multimedia works

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What Is A Trademark?

A trademark includes any word, name, symbol, or design adopted and used by an individual or organization to distinguish its goods from those of others

The term of protection for a trademark is indefinite as long as it remains in regular use

Trademarks can be registered federally and/or in individual states

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What Is Know-How?

A body of knowledge outside the public domain that has commercial value, for example, a laboratory technique

Know-how can be licensed out just like other forms of IP, that is, provision for its use may be included in a license agreement

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What are Trade Secrets?

When an inventor does not wish to share certain information with the public, that information may be kept as a trade secret

Trade secrets, are a fragile form of IP protection even though they have an unlimited lifetime if not disclosed

The university is seldom, if ever, involved with trade secrets

Classic example is the Coca-Cola recipe

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Benefits of Protecting Intellectual Property

Companies have an incentive to invest in the technical and market development required to get a product in the marketplace

Inventors and ISU receive recognition

IP Protection preserves the rights of the inventors and the university to control the technology:• Prevents the inappropriate use of the technology• Ensures the use for the public good• Ensures continued use for research at the university

Income can be generated for all parties – companies, inventors and the university

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Sharing of Income

ISURF shares the economic benefit of any IP with those who are recognized inventors; uses some of the income to pay legal, patent and administration costs; and reinvests a portion of the income for further research

Net royalties are divided equally among:• Inventor(s) – inventors agree among themselves at to how their

royalty income is to be apportioned• College – free to use their portion as they choose• ISURF – uses their portion for IP and tech transfer activities

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Funding Requirements and Our Obligations

Due to Federal Agency regulations:• The university is obligated to have written agreements with its

faculty and technical staff requiring disclosure and assignment of inventions.

• The university has an obligation to disclose each new invention to the federal funding agency within two months of receiving the invention disclosure.

THEREFORE, inventors should make a prompt disclosure of all IP to ISURF to fulfill our obligations to the funding sources, and to ensure that the IP is properly protected before a public disclosure occurs.

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Public Disclosure Concerns

A public disclosure can be in the form of:• a publication (includes on-line information),• oral presentation,• poster display,• samples, and/or prototypes,• a sell or an offer to sell the technology, or• if the technology is used commercially.

In order to be a public disclosure, the information must be considered “enabling”. If someone skilled in the art can read your description of the technology and reproduce the invention, then the description is termed enabling.

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Things to Remember Before Public Disclosure

File an invention disclosure through ISURF before any public disclosure. Try to give at least one month’s lead time if possible to allow ISURF to review the disclosure and, if appropriate, file a patent application.

A Confidentiality Agreement and/or a Material Transfer Agreement can be sent out by ISURF to prevent a public disclosure.

Do not provide “enabling” information to anyone not covered by a Confidentiality Agreement.

When in doubt, mark all information “Confidential” – especially when submitting proposals!

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What Happens if a Public Disclosure Occurs?

If your invention is publicly disclosed anywhere in the world even one day before you file a patent application, you lose the right to obtain a valid patent in most countries of the world, even though you might be able to obtain a U.S. patent.

If a public disclosure occurs, then you have one year from the public disclosure date to file a patent application in the U.S. Patent and Trademark Office.

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U.S. Patent and Trademark Office

Example of Patent

U.S. PTO website:• http://www.uspto.gov/

• Good for literature searches – easy patent search capabilities• Review competing technologies• Search for possible collaborators• See what other researchers are pursuing

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Procedure for Intellectual Property Protection

Potential IP is identified by the inventor(s) through a written disclosure form to ISURF. The disclosure form can be downloaded from the website:

www.iastate.edu/~isurf

OIPTT / ISURF evaluates the IP disclosure for its inventorship and ownership rights, IP protection and commercial potential. The inventors are included in this process.

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Procedure for Intellectual Property Protection

If the decision is made to file a patent, the inventor(s) is asked to provide all pertinent information and data. A patent law firm is then identified to handle the application.

The inventor(s) is asked to work with the patent attorney to prepare the best patent application possible.

The inventor(s) will be asked to assist with responses to office actions from the patent office, until the issuance of a patent.

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Licensing of Intellectual Property

During the ongoing patent prosecution, a licensing associate from OIPTT conducts a preliminary market analysis for the technology.

The inventor(s) plays a key role in assisting the licensing associate in writing a marketing description and provides advice on targeting the IP to specific companies.

OIPTT will begin marketing efforts, which might include targeted emails and an in-depth industry survey. The marketing descriptions are also placed on the ISURF/OIPTT website: www.iastate.edu/~isurf

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Licensing of Intellectual Property

Contact between the company and inventor may be arranged, once a Confidentiality Agreement is signed.

If the company is interested in developing the technology, an option or license agreement may be negotiated, which may or may not include further research funding into the university.

The license, either exclusive or non-exclusive, gives specific rights for the licensee company to make, use and sell the invention.

A license may extend a few years or for the life of the patent.

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Licensing of Intellectual Property

Since ISURF’s mission is to get the technology used, licenses always contain “due diligence” provisions. If the company has not commercialized the technology within a certain period of time, or fails to pay royalties due, then ISURF may terminate the license or convert an exclusive license to a non-exclusive.

No two licensing agreements are alike.

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Marketing and Licensing Summary

During FY02, OIPTT made over 1500 contacts with companies concerning technologies available for licensing

ISURF returned $2.7M to ISU from its operations in FY02. These monies were comprised of grants, royalty sharing to academic units and research income from licenses. The university’s allocation to support ISURF/OIPTT’s operations was $188K.

Since 1990, we have licensed to 37 Iowa-based startup companies

Second among U.S. Universities in number of licenses executed in FY01

Number one among land grant universities in licenses and options executed per $10M research expenditures in FY01 and second in the nation.

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Selected Contacts at ISURF/OIPTT

Executive Director – Ken Kirkland, Ph.D. Invention Disclosures – Lynne Mumm

• lmumm@iastate.edu 294-4742

Licensing Associates:• Cheryl Kamman - Material Sciences & Chemistry

kamman@iastate.edu 294-7707

• Eddie Boylston - Engineering latinusb@iastate.edu 294-3621

• Todd Headley - Life Sciences theadley@iastate.edu 294-4470

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Questions?