iowa state university technology protection and licensing
TRANSCRIPT
Iowa State University Technology Protection
and Licensing
Who We Are & What We Do
ISURF non-profit ISURF non-profit (1938)(1938)
protects, owns and protects, owns and manages assetsmanages assets
Iowa State UniversityIowa State UniversityVice Provost for ResearchVice Provost for Research
Iowa State University Research Foundation, Inc.
Board of Directors
ISU’s OIPTT (1990)ISU’s OIPTT (1990)
technology review, technology review, marketing, marketing,
licensing, serviceslicensing, services
Iow a S tate U nivers ityO ffice o f In tellectual P roperty and T echnology T ransfer
andIow a S tate U nivers ity R esearch F oundation , Inc.
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Laws and Guiding Principles • Federal laws, regulations and guidelines
– Federal research funding requires significant reporting, use for public good, preference for licensing to small businesses when appropriate, and sharing income with inventors
– Federal guidelines on research tools state that the technology must be accessible
– Tax laws: ISU and ISURF must remain non-profit
– Antitrust, export control, contract, and intellectual property laws also apply
Laws and Guiding Principles
• ISU’s Mission Statement:– ISU fosters the discovery and dissemination
of new knowledge…to address problems and issues of concern to the State of Iowa in particular, as well as to the national and global community…conducted in an environment of open scientific inquiry and academic freedom.
Laws and Guiding Principles
• Applying ISU’s mission to technology transfer– Facilitate the commercialization of research
for the public good– Promote economic growth– Protect the right and freedom to future
research, publication, and public utilization– Protect students’ right to graduate
• Policies: patent, germplasm, educational materials, conflict of interest & royalty sharing
Conflicting Values - Common Interest
• University Values– Knowledge for knowledge’s sake– Academic freedom/open discourse– Teaching, research, service, economic development– Non-profit laws
• Industry Values– Management of knowledge for profit– Confidentiality/limited public disclosure– Profits, product R&D
• Common Interest– Commercialization of new and useful technologies
What Is Intellectual Property?
• Creations of the mind protected by a field of law conveying property rights
• The laws include– Patent– Copyright– Trademark– Trade secret– Right of publicity
What Is Protected?
• Patents protect novel & useful inventive matter (utility patent)
• Copyrights protect expression of authorship• Trademarks-Service Marks protect
identifying symbols, words, or designs of goods or services
• Trade Secrets protect confidential business information, including proprietary materials
• Rights of Publicity protect an individual's right to benefit from identity
What Is a Patent?
• A grant by the U.S. federal government to new and useful machines, processes/methods, articles of manufacture, compositions of matter, or improvements thereof to exclude others from– Making– Using– Selling (or offering to sell)– Importing
Requirements of a Patent • Three key elements
– Novel (a new idea)
– Non-obvious to someone skilled in the art
– Useful (but not necessarily commercially useful)
• Enablement: it must teach one skilled in the art how to reproduce it
• Formal review process and grant by the U.S. Patent and Trademark Office (PTO)
• Each country must formally grant patents
The Patent Process
• Preparation of patent application– Patent attorney and inventor(s) prepare
• PTO reviews and corresponds to applicant - we answer
• PTO sends a notice of allowance or final rejection
• Average time to issue is 36 months; average cost for U.S patent is $16,000
• Term of patent is now up to 20 years from filing
Benefits and Limitations of Patents
• Benefits– Monopoly: no one can practice claims without
a license– U.S. rule is first to invent, not first to file
• Limitations– Public use, sale, or publication more than 1
year prior to filing bars filing; if less than 1 year prior to filing, U.S. filing permitted, but lose most foreign rights
– Formal process takes 2-4 years– Granted by each country– Expensive
What Is Copyright?
• Laws that convey ownership in the EXPRESSION of an original work of authorship: writings, software, multimedia, photos, drawings, music
• No formalities are required to obtain copyright protection; once a work of authorship is fixed in a tangible form, it is protected
Rights Under Copyright
• The owner has the right to and authorize others to – Reproduce– Distribute– Create derivatives (modify)– Perform certain types of work– Display certain types of work
Benefits and Limitations Copyrights
• Benefits– No formal process to protect
– Term of protection: author’s life + 70 yrs.
– U.S. protection has international extension
• Limitations– Only expression is protected, not the ideas,
concepts, facts
– Others may create same work if independent
– Several exceptions to author’s rights
From Creation to License
• Disclosure - formal written description of the creation
• Review and evaluation• Patenting decision • Marketing strategy• Licensing strategy• The license• Maintaining the relationship
Review and Evaluation
• Rights to invention– Funding and other agreements– Collaboration internal & external– Proprietary material, techniques, information
used– Public disclosures
• Patentability• Commercial potential
Patenting Decision
• Has it been publicly disclosed?• What other protection is available?
– Tangible research property– Copyright– Trademark
• Would infringement be difficult to detect?
Marketing Strategy
• When do we start?– Waiting for publication– Waiting for data
• What is being made, used or sold?• What is the state of the art?• What other patents are needed to
commercialize?• Who would use, make, & sell & why?• What are the industry’s biases to in-
licensing?
Marketing Steps
• Create marketing content• Create list of potential licensees• Contact potential licensees• Follow-up
Licensing Strategy
• What kind of company do we license (start-up, small or large company)?
• What expertise would the licensee need?• Exclusive vs. non-exclusive • Field of use• Geographic areas
Parameters of a License
• Royalties– License issue royalty– Annual minimum royalty– Earned royalty– Equity
• Development milestones• Reimbursement of patent costs • Diligence provisions
Licensing - Economic Development Success• 544 technologies licensed -10 years• 44 start-up companies since 1995 (56%
are still active)• 40 Iowa-based start ups (50% are still
active)• 857 license agreements for plant
germplasm (Iowa growers planted 184,000 bushels of specialty soybeans in last 10 years)
• ISURF venture fund of $200K for technology enhancement
Accessing ISU Technologies
• Funding faculty research activity– Biotech website: research and biotechnology link at
www.biotech.iastate.edu– Point of Contact: www.iastate.edu/bus
• Research publications often describe existing IP
• Technologies available for licensing and sign-up: www.techtransfer.iastate.edu
• Agreements used in accessing IP: confidentiality, material transfer, testing (prototype, software), option, and license
How to Access Technologies for Licensing
• Marketing and licensing staff 515-294-4740– Mary Kleis, Technology Licensing Manager– Todd Headley, Life Sciences - Biotechnology– Material Sciences - Chemistry– Eddie Boylston, Physical Sciences -
Engineering– Julie Minot, Germplasm
• Web search at: www.techtransfer.iastate.edu
License Process (Preferred)
• Meeting with researchers in lab• Meeting with OIPTT & ISURF to review
interests of parties & process used to arrive at a license
• Discuss various options including valuation of the technology
• Prepare draft agreement • Resolve any remaining conflict language• Sign agreement• Periodic visits to discuss development
Examples of Assistance Provided to Our Licensees
• Work with companies to understand how our technologies fit into their business
• Assisted licensee with assessment of a possible joint venture with an overseas corporation
• Re-negotiate payment schedule and other terms of the agreement due to unexpected business circumstances
• Offer an equity deal to start-ups to reduce their up-front costs
Assisting Our Licensees (continued)
• Assisted in licensees sublicensing activity by reviewing the sublicense document
• Worked with development of a plan to manage large volume of sublicensees through a third party manager
• Refer licensees to internal and external resources for assistance
• Assist licensees in resolving enforcement issues• Provide a $5,000 grant to start-ups to work with patent
attorney• Submit or assist in submitting applications for R&D 100
Awards
Thank you for your interest in Iowa State University