Technology Transfer from A-Z! Presented by Bruce Clary John
Byatt Assistant Directors University of Florida Office of
Technology Licensing
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Bruce Clary Assistant Director University of Florida
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The states largest university, (and one of the nations
largest), enrolls approximately 52,000 students per year. 16
colleges 150 research centers/institutes Since 1985, a member of
the Association of American Universities (AAU) the top 60 public
and private U.S. institutions. The University of Florida
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States largest University 52K Students 16 Colleges 150 Research
Centers/Institutes AAU
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Approximately 5,000 faculty members with distinguished records
in teaching, research and service; More than 60 Eminent Scholar
chairs; Nearly 60 faculty elections to the National Academy of
Sciences, Engineering, or Arts and Science, the Institute of
Medicine or a counterpart in a foreign nation.
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5,000 distinguished faculty 60 Eminent Scholar Chairs Nearly 60
faculty elections to: National Academy of Sciences, Engineering, or
Arts and Science, The Institute of Medicine or a counterpart in a
foreign nation
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What is technology transfer? Wikipedias definition: Technology
transfer is the process of sharing of skills, knowledge,
technologies, methods of manufacturing, samples of manufacturing
and facilities among governments and other institutions to ensure
that scientific and technological developments are accessible to a
wider range of users who can then further develop and exploit the
technology into new products, processes, applications, materials or
services.
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What is technology transfer? Technology transfer is the process
of sharing of skills, knowledge, technologies, methods of
manufacturing, samples of manufacturing and facilities among
governments and other institutions to ensure that scientific and
technological developments are accessible to a wider range of users
who can then further develop and exploit the technology into new
products, processes, applications, materials or services.
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Priorities for Technology Managers/Licensing Officers Faculty
service Open door, proactive faculty service approach Learn how to
tell faculty in a positive way their baby is ugly and your
resources are limited Ability to project patent related expenses
and work under a budget Income generation Number of deals, license
fees/royalties generated, reimbursement of patent expenses all
important.
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Priorities for Technology Managers/Licensing Officers Faculty
service Open door, proactive faculty service approach Learn how to
tell faculty in a positive way their baby is ugly and your
resources are limited Ability to project patent related expenses
and work under a budget Income generation Number of deals, license
fees/royalties generated, reimbursement of patent expenses all
important.
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Evaluating new technologies: How Does It Work at UF? Idea
Invention Disclosure Form Written Disclosure Oral Disclosure Exert
Waive OTL Explores Patentability & Marketability OTL Seeks
Licensee & Makes Patent Decisions (120 Days)
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Evaluating new technologies: How Does It Work at UF? Idea
Invention Disclosure Form Written Disclosure Oral Disclosure Exert
Waive OTL Explores Patentability & Marketability OTL Seeks
Licensee & Makes Patent Decisions (120 Days)
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UF 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 UFs
right to the technology Waive UFs right to sponsoring agency or
inventor Incomplete disclosure requiring further input
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UF 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 UFs
right to the technology Waive UFs right to sponsoring agency or
inventor Incomplete disclosure requiring further input
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Conducting the Oral Disclosure Meeting
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Points UF considers when reviewing a new disclosure for
patentability any Public 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 secrecy
Substantiality of material disclosed
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Points UF considers when reviewing a new disclosure for
patentability any Public Disclosure Public disclosure can include:
Publications in open literaturePoster Sessions &
AbstractsPresentations 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
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Now.once youve done your prior art search and determined you
believe this is patentable..
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Just because you determine you CAN patent doesnt mean you
should!
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Assisting with Faculty Startups Start-ups are often the most
appropriate (only) vehicle to bridge the technology gap
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Assisting with Faculty Startups Start-ups are often the most
appropriate (only) vehicle to bridge the technology gap Science
Products Technology
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Critical Elements - Technology transfer expertise UF Tech
Connect housed in OTL UF Tech Connect program fosters new business
creation at UF Matches researchers with potential management
Assists in business plan creation and market feasibility studies
Provides training for wanna be entrepreneurs Introduces funding
opportunities through VC and angel network introductions Measure
based on jobs & private investment
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Critical Elements Technology transfer expertise UF Tech Connect
housed in OTL UF Tech Connect program fosters new business creation
at UF Matches researchers with potential management Assists in
business plan creation and market feasibility studies Provides
training for wanna be entrepreneurs Introduces funding
opportunities through VC and angel network introductions Measure
based on jobs & private investment
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University of Florida Technology Licensing Team
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Most important things to remember about this presentation
Faculty service is our #1 priority! Without them we wouldnt have
any technology to transfer so have an open door policy, be
responsive and communicate with them regularly! Set expectations to
faculty according to your resources.be aware of other resources on
campus who can help them if you cant Use effective time management.
Find the right balance on how to divide your time up in a days
work: Example: 25% new disclosure review, 50% licensing, 25% other
(marketing, prosecuting patents, negotiating other agreements,
etc.)
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Most important things to remember about this presentation
Faculty service is our #1 priority! Without them we wouldnt have
any technology to transfer so have an open door policy, be
responsive and communicate with them regularly! Set expectations to
faculty according to your resources.be aware of other resources on
campus who can help them if you cant Use effective time management.
Find the right balance on how to divide your time up in a days
work: Example: 25% new disclosure review, 50% licensing, 25% other
(marketing, prosecuting patents, negotiating other agreements,
etc.) Use effective time management. Find the right balance on how
to divide your time up in a days work: Example: 25% new disclosure
review, 50% licensing, 25% other (marketing, prosecuting patents,
negotiating other agreements, etc.)
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And last but definitely not least, UF is also well known for
its Athletics! Victories include 26 national team championships and
more than 200 individual national titles; UF is the first
university in history to win national football and mens basketball
titles in the same year (2006); UF won back-to-back national
championships in mens basketball in 2006-07.
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And last but definitely not least, UF is also well known for
its Athletics! Victories include 26 national team championships and
more than 200 individual national titles; UF is the first
university in history to win national football and mens basketball
titles in the same year (2006); UF won back-to-back national
championships in mens basketball in 2006- 07.
