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Pizza and Patents: Turning University Science into Real-World Products
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Corporate Entity for Commercialization
CSURF is the legally appointed corporate entity for commercialization and/or administration of intellectual property developed at CSU.
CSURF provides technology transfer services to all departments at CSU.
IP Management & Marketing IP Licensing & Commercialization Industry Partnerships/Collaborations Start-ups SBIR/STTR Support Foundation, State & Government Funding Opportunities Seed Capital Fundraising
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Organizational Structure and Contacts
CSURF
CSU Ventures, Inc.
TT OfficeMarketing and Licensing
MicroRxTM
Infectious DiseaseBusiness Enterprise
NeoTREXTM
CancerBusiness Enterprise
CenergyTM
Clean EnergyBusiness Enterprise
CSU Mgmt Corp.For-profit InvestmentSeed Fund
Todd Headley, DirectorDian Kammeyer, LicensingJeremy Nelson, LicensingTara Marostica, MarketingCindy Pederson, IP Management
Joe Guiles, COORod Tompkins, Bus. Dev. / LicensingLori PhelanBus. Manager
Terry Opgenorth, COOStephen Foster, Bus. Dev. / LicensingDave LoriBus. Dev. / Licensing
Tim Reeser,COOTBD Bus. Dev. / Licensing
Mark Wdowik, President/CEO
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What is Technology Transfer?
The process of transferring advances in knowledge from research laboratories to the commercial sector in order to develop and market useful products.
“The value of an idea lies in the using of it.”
Thomas Edison
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Congress was concerned about the failure of federally owned patents – Thus, Bayh-Dole was enacted on December 12, 1980.
Major provisions of the Act include: Non-profits, including universities and small businesses may elect to retain title to
innovation developed under federally funded research programs. Universities are encouraged to collaborate with commercial concerns to promote the
utilization of inventions arising from federal funding. Universities are expected to file patents on inventions they elect to own. Universities are expected to give licensing preference to small business. The government retains a non-exclusive license to practice the patent throughout the world. The government retains march-in rights. The Bayh-Dole Act was especially instrumental in encouraging universities to participate in
technology transfer activities.
The Act is “perhaps the most inspired piece of legislation to be enacted in America over the past half-century…Innovation’s Golden Goose.”
- The Economist (December 12, 2002 Edition)
The Bayh-Dole Act & University Technology Transfer
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Why Participate in Technology Transfer?
Make an Impact Commercialization of your research can positively effect people’s lives.
Generate New Funding A successful invention can prompt the industry licensee to fund additional
research in your lab for years to come.
Fulfill Requirements Sponsored research agreements, foundation and federal grants usually
require disclosure of new inventions to the sponsor or grantee. CSU requires the disclosure of new inventions made by CSU employees to
CSURF.
Reward Yourself Commercialized inventions may result in royalty payments to you and
CSU. Commercializing your technology could be an exciting new frontier for
you.
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What Technologies Have Come Out of University Technology Transfer? Technology Inventor Institution
Polio Vaccine (1955)
Jonas Salk Univ. of Pittsburgh
Ultrasound (1958) Ian Donald Glasgow Univ.
Seat Belt (1963) James "Crash" Ryan Univ. of Minnesota
Gatorade (1966) Robert Cade &Dana Shires
Univ. of Florida
Tifway, Tifgreen, & 'Tif' grasses
(1960’s)
Glen Burton Univ. of Georgia
Recombinant DNA Technology (1974)
Stanley Cohen & Herbert Boyer
Stanford & UCSF
Allegra (1992) Raymond Woosley Georgetown* From University of Virginia Patent Foundation
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What is our Technology Transfer Process?
Invention Disclosure
Invention & Market Evaluation
IP Protection
Market Analysis
Marketing
Licensing/Commercialization
Royalty Collection
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Invention Disclosure
What has to be disclosed?
Generally, all CSU faculty members, staff, employees and student employees are required to submit a disclosure to CSURF on any intellectual property which was conceived, created or reduced to practice utilizing university resources.
Exception: Text Books.
See Section J of CSU’s Faculty Staff Manual• Royalty distribution to Inventor(s) is 35% of net royalties
received by CSURF.
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Invention Disclosure
When should I disclose my technology? As soon as the invention can be completely described. Before any “public disclosure”
• Written publications;• Oral presentations, collegial meetings;• Public use, sale or offer for sale.
Timely disclosure protects your U.S. and foreign patent rights. One year “grace period” after public disclosure in the
US.
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What is public disclosure?
For our purposes, public disclosure occurs when previously undisclosed (i.e., secret) information is made available to individuals not in the employ of CSU. It is not necessary that the public actually receives the
information. Dissertations in library, poster sessions on campus.
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The Invention Disclosure Form
Invention Disclosure Form begins the technology transfer process. List of Inventors, Description of invention, Identify sponsors, Associated Material Transfer Agreements.
Provides basis for evaluating Patentability, Commercial utility.
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Evaluation - Patent
Preliminary prior art search to determine patentability. Keyword Domestic and foreign patents
• Current or expired Other publications Research collaborations Your own publications
Other: Meaningful patent position – will a patent support
products that provide a commercial advantage in the marketplace?
Identify a commercial partner to support costs of U.S. Utility or foreign filings.
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U.S. patent law
Patents are only granted by the Federal Government State measures are preempted.
The United States utilizes a “first-to-invent” system Most other countries are “first-to-file.”
Length of protection 20 years from filing date for Utility and Plant patents
• Eligible for a term extension for Patent Office delays.• Pharmaceutical patents are often extended for delays
related to regulatory approval processes.
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Evaluation - Market
Initial Market Assessment Work with Inventors to determine potential products/applications.
Identify Potential Markets Size Competing technologies
Advantages and Disadvantages compared to current products.
Identify potential Licensees/Commercial partners.
Marketing Group will provide inventors with a report containing prior art search results and marketing information.
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Marketing
Perform Detailed Market Analysis
Identify Target Companies
Create Non-confidential Summary with Inventor
Contact Potential Commercial Partners
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Commercialization
Negotiate and sign agreement with startup or established company. License/Option/Assignment Agreement Exclusive Non-exclusive FOU either exclusive/non-exclusive
Monitor agreement IP Protection Payments Reporting requirements Due Diligence/commercialization efforts
Licensee examples: Boeing, CH2M Hill, Pfizer, AML, Solix, AVA Solar.
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School of Biomedical Engineering
Therapeutics and Prostheses Artificial joints and limbs Engineered tissues and organs Grafts
Biomaterials Novel Materials Modifications to existing Materials New Synthesis
Diagnostics and Research Tools Biosensors Molecular Biology Tools
Invention Disclosure Statistics
FY 2006
FY 2007
FY 2008
FY 2009
Total
5 8 12 14 67
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Technology Transfer Process
Invention Disclosure We need a disclosure form from you!
Evaluate Patent & Market Potential
Patent Protection
Market Analysis & Marketing
Licensing/Commercialization
Royalty/Payment Collection
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Questions?
More information from several web sources http://www.csurf.org/tto/ http://csuventures.org/ http://www.microrx.org/ http://www.neotrex.org/ http://energy.colostate.edu/