Tech TransferTech Transferat theat the

University of FloridaUniversity of FloridaPresented by

Bruce Clary

Assistant Director

University of Florida

Office of Technology Licensing

PrioritiesPriorities

Faculty service

Income generation

Economic development

DutiesDuties

Evaluating new technologies Determining patentability Registering copyrights Locating potential licensees Prosecuting patents Negotiating license agreements Educating inventors about the process Assisting with faculty start-ups

How Does It Work at UF?How Does It Work at UF?

Idea

InventionDisclosure

Form

WrittenDisclosure

OralDisclosure

Exert

WaiveOTL Explores Patentability & Marketability

OTL Seeks Licensee

& Makes Patent Decisions

(120 Days)

UF Technology DisclosureUF Technology Disclosure

What needs to be disclosed? All Technologies.UF interest: In the field of expertise or

With use of university resources

Invention Disclosure Form (www.otl.ufl.edu)

When do consulting activities / outside interests need to be disclosed? Better early than late. Protection of technology

Initiate the process / get a ruling early

UF Disclosure ReviewUF Disclosure Review

Disclosures are reviewed monthly in Office of Technology Licensing based on: interested potential licensee(s) US and foreign patent opportunities potential market size, penetration, returns to UF administrative complications enforceability

Office of Technology Licensing options Accept UF’s right to the technology Waive UF’s right to sponsoring agency or inventor Incomplete disclosure requiring further input

Public DisclosurePublic Disclosure

Public disclosure can include:Publications in open literature Poster Sessions & Abstracts Presentations to open forum Can be personal communications without some confidentiality agreement Catalogues and libraries

Primary discriminations are: Good faith attempt to maintain secrecySubstantiality of material disclosed

Typical Distribution of Net Typical Distribution of Net Income From InventionsIncome From Inventions

Net Adjusted Income up to $500,000

Net Adjusted Income over $500,000

40% Individual Creator(s)10% Program(s)7.5% Creator(s) Departments7.5% Creator(s) Colleges35% RGP or UFRF

25% Individual Creator(s)10% Program(s)10% Creator(s) Departments10% Creator(s) Colleges45% RGP or UFRF

Common Problems For Common Problems For Researchers to AvoidResearchers to Avoid

Publicizing your discovery in any way prior to protecting it

Not keeping accurate laboratory notebooks

Never transfer or receive materials from an outside entity without the protection of a Material Transfer Agreement

Never discuss the enabling aspects of your research without the protection of a Confidential Disclosure Agreement

(Both MTAs and CDAs require signature from OTL or DSR)

Researcher MotivationResearcher Motivation

The Bayh-Dole Act of 1980 Allowed Universities to take ownership of

Intellectual Property from Federally funded research.

Obligates the university to proactively protect and market the technology or return it to the Federal funding agency.

Researcher Motivation to Seek IP Protection UF employees are legally bound Attract industrial sponsorship See the fruits of your research commercialized Hit the Royalties Jackpot – less than 1% chance

Types of Intellectual PropertyTypes of Intellectual Property

Patents Copyrights Trade secrets Trademarks

What is a Patent? What is a Patent?

A patent is a vehicle that details the

invention one ‘owns’ and allows

one to exclude others from making,

using, or selling. A patent must:

Be enabling (teach) Show the best mode for one to practice the invention

A patent contains a title, abstract, narrative, etc. and CLAIMS

Patentability is Dependent on:Patentability is Dependent on:

Statutory Class Machines Articles of manufacture Composition of matter Processes Improvements on the above

Newness - (1) Novelty (2) Non-Obvious Usefulness - not easily defined, don’t have to

supply prototype, just good faith justification in confidence of results

US vs. Foreign PatentsUS vs. Foreign Patents

First to file (foreign) vs. first to invent (US)

Foreign patent time frame: File within one year of US patent application

No previous disclosure allowed

Reasons to file foreign Global economy

Company interest in locking out competitors in foreign countries

Who is an InventorWho is an Inventor

First person(s) who conceives and reduces the invention to practice

Inventorship dependent on idea generators (originality)

Co-inventors can work independently, but stream of ideas must lead to invention

Technology Disclosure should list inventors, review by patent counsel

Patent CategoriesPatent Categories

Type Applies To: Life

Utility process 20 yearsmachines from application

compositionsof matter

Design Ornamental 14 years from issue

Design

Plant Asexually 17 years from issueProduciblePlants

Provisional Patent ApplicationProvisional Patent Application

Primarily of use to entrepreneurs, small companies, and universities in a time bind

Allows 1 year protection before patent application

Sets Priority Date without counting against 20 year patent term

Less expensive (maybe), but delays examination by US Patent & Trademark Office

CopyrightsCopyrights

Protects expression of an idea

Must show originality (not trivial) & fixation in a tangible form

Unlike patents, no requirement for exclusion of prior art

Simple filing by UF Office of Technology Licensing to Library of Congress

Term - life of author + 70 years

What is a Trade Secret?What is a Trade Secret?

May consist of any formula, pattern, device, or compilation of information which is used in one’s business, and which gives him/her an opportunity to obtain an advantage over competitors who do not know or use it

May be a formula for a chemical compound, a process for manufacturing, treating or preserving material, a pattern for a machine or other device, or a list of customers

TERM: as long as the trade secret is maintained in secrecy

What is a Trademark?What is a Trademark?

Includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods

In short: a trademark is a brand name

Trademarks / ServicemarksTrademarks / Servicemarks

Covers use of a name to describe a product or service - Gatorade®

Term - for life while in use Filing Requirements - USPTO does a

search for name and use

What are the benefits of What are the benefits of Trademarking?Trademarking?

Constructive notice nationwide of trademark owner’s claim

Evidence of ownership of the trademark

Jurisdiction of federal courts may be invoked

Registration can be used for obtaining registration in foreign countries

Can be filed with U.S. Customs Service to prevent importation of infringing foreign goods

Related WebsitesRelated Websites

www.otl.ufl.edu (tech. transfer info.) www.uspto.gov (patent info. & search) www.copyright.gov (copyright info.) www.generalcounsel.ufl.edu/faq/copyrig

ht.pdf (questions about UF copyrights)

“Any technology sufficiently advanced is indistinguishable from

magic.”

“Any technology sufficiently advanced is indistinguishable from

magic.”

Arthur C. Clarke