Technology Transfer at Rice

New Faculty Orientation

Science & Engineering

Luba Pacala

Manager, Business Development & Licensing

Agenda

• Intro to Office of Technology Transfer (OTT)• IP Policy & Bayh-Dole Act• OTT Activities

– Invention Reporting– Licensing Process– Materials Transfer Agreements– Confidentiality Agreements

• OTT Contacts• Questions?

Tech Transfer Objectives

OTT established in 1998 to:

Provide Service to the Faculty Promote Economic Development Become a Self-Sustaining Entity

by• Facilitating the development and commercialization

of technology• Protecting traditional academic freedom and values• Generating licensing revenues• Attracting industrial support of research and

promoting industry/university interaction

OTT Responsibilities

• Invention Processing/Reporting• Intellectual Property (IP) Protection• Marketing & Licensing of Technology• IP Provisions in Sponsored Research Agreements• Materials Transfer Agreements• Confidentiality Agreements • Revenue Sharing• Option Agreements• Inter-institutional Agreements

IP Policy

Rice University Research Policy No. 333Patents and Software

• All patentable inventions conceived or first reduced to practice in the conduct of University research by faculty, postdoctoral researchers, staff and/or students of Rice shall belong to Rice.

• All potentially patentable inventions conceived or first reduced to practice by University researchers in the course of their University responsibilities must be disclosed in a timely manner to the University.

Bayh-Dole Act

Enacted in 1980

Objectives• Encourage US economic development• Improve US industry competitiveness

Result• Allows universities, non-profits, and small

businesses to take title to and license inventions coming from federally-funded research

Obligations under Bayh-Dole

• Inventions must be reported to funding agency (done by OTT)

• Grant of non-exclusive, non-transferable, irrevocable, paid-up license to government

• Promote commercialization of technology (usually through licensing)

• Give preference to US industry and small business

• Share royalties with inventor(s)• Remaining income used for education and

research

Royalty Sharing Policy

Inventor(s) 37.5%

Graduate Education 18.5% Department or Center/Institute 14% University 30%

Distributions made after patenting/marketing costs are recovered

Invention Reporting

Guidelines

• Complete invention disclosure form. A completed form facilitates the processing of the disclosure within OTT.

http://ott.rice.edu/community/submit_innovation.cfm

• Be sure all inventors sign the disclosure

• Send completed form to techtran@rice.edu (not to an individual in OTT)

• Timing is important; please give OTT sufficient time to address your disclosure before you disclose publicly

– Once you put an invention into the public domain via publication, presentation, etc., you lose foreign patent rights AND put a 12 month bar date on filing of US patent application)

– If you have any questions on what constitutes a public disclosure, contact OTT

Licensing Process

Invention Disclosure Submitted

Technology Transfer Office

Evaluates Technology

Patent Committee Presentation (by Inventor)

Protects Technology (Outside Patent Counsel)

Markets Technology

Negotiates License Agreement

Manage License

To Patent or Not to Patent?

Considerations

• Intellectual Property Position– Prior art– Enablement– Narrow vs. Broad Patent Claims

• Market– Size, Time to Market, Minor Improvement vs.

Disruptive Technology

• Commercial Need• Inventor• Obligations to Sponsors• Potential Licensees

Material Transfer Agreements

• A Material Transfer Agreement (MTA) must accompany all transfer of materials outside the university

• Issues– Export control (esp. with carbon nanotubes)– Liability/Indemnification– Disclaimer of warranties– Ownership of materials & related IP– Other contractual obligations

• MTAs accompanying incoming materials must also be reviewed and approved by OTT

• Signature authority on MTAs rests with the Director of OTT

• If you need an MTA drafted or reviewed, please contact OTT

• Uniform Biological Materials Transfer Agreement / Simple Letter Agreement available for transfer of biological materials to other universities

Export Control

• Federal government controls export of certain goods and technologies considered strategic to US security and economic interests

• Export Administration Regulations (EAR), implemented by Dept. of Commerce, apply to transfer of physical items and information (technology) and provision of certain services to persons and entities outside the US (exports) and to the disclosure of specific information and provision of certain services to foreign nationals inside the US (deemed exports)

• Violations may result in criminal penalties and civil sanctions• Rice is committed to full compliance with all export control

regulations• OTT takes such regulations into account when developing all

MTAs and NDAs, and has specific tools which are used to ensure compliance

• All researchers should consult with OTT to assist in transfer of materials or information outside the University

Confidentiality Agreements

• One-way and two-way confidentiality agreements (CAs) available

• CAs limit disclosure and use of Rice’s confidential information and preserve patentability of information to be disclosed to third parties

• All Confidential Information must be in writing and marked as confidential; confidential information first disclosed orally must be put in writing and so marked within 10 days of disclosure

• All CAs, whether drafted by Rice or coming from another institution, must be reviewed and approved by OTT

• Signature authority on CAs rests with the Director of OTT

OTT Organization

Nila Bhakuni, Directorbhakuni@rice.edu ext. 6231

Luba Pacala, Mgr. Bus. Dev. & Licensing (Chemistry & Nano)lpacala@rice.edu ext. 5590

Brian Phillips, Licensing Associate (Biological Sciences)brian.j.phillips@rice.edu ext. 6278

Dan Miller, Licensing Associate (Engineering & Comp. Science)Dan.miller@rice.edu ext. 5580

Joyce Galiette, Financial Managerjgaliette@rice.edu ext. 6201

Lydia Tkachenko, Patent Managerltkachenko@rice.edu ext. 6125

Marie Perez, Administrative Assistantmarie.perez@rice.edu ext. 6188

Resources

OTT Website

http://ott.rice.edu

Rice Policies http://professor.rice.edu/professor/Policies.asp

Uniform Biological Materials Transfer Agreement

http://www.autm.net/aboutTT/aboutTT_umbta.cfm