OFFICE OF OFFICE OF INTELLECTUAL PROPERTY MANAGEMENTINTELLECTUAL PROPERTY MANAGEMENT

OKLAHOMA STATE UNIVERSITYOKLAHOMA STATE UNIVERSITY

Dr. Steven C. PriceDr. Steven C. PriceAssociate Associate Vice President for Research and Vice President for Research and Technology DevelopmentTechnology Development

New Product Development Center (NPDC) Center for Innovation and Economic

Development (CIED) Cowboy Technologies Office of Intellectual Property Management

(OIPM) Technology and Business Development Group Research Park, Incubator, Accelerator RIATA Center for Entrepreneurship “For Profit Company” International Technology Transfer Center (ITTC)

To To fosterfoster the creation of innovative the creation of innovative

technologies and to technologies and to managemanage those those

technologies and other intellectual technologies and other intellectual

property for the benefit of the property for the benefit of the

University and the public.University and the public.

Interface between faculty and the commercial Interface between faculty and the commercial sectorsector

Work with patent counsel to assess Work with patent counsel to assess patentability/licensabilitypatentability/licensability

Evaluate markets for commercialization of Evaluate markets for commercialization of inventionsinventions

Identify potential licenseesIdentify potential licensees Negotiate terms of licensesNegotiate terms of licenses

Assist with negotiating problematic sponsored Assist with negotiating problematic sponsored research agreementsresearch agreements

Help faculty start companiesHelp faculty start companies

Royalties: (after recovery of costs) 50% to inventor 30% to OIPM 20% to college or division

OIPM handles contracts totaling $4-5 million/year (@50)

They all have in common “special” non-typical intellectual property terms

Prototype development, feasibility demonstration, “fleshing out” patent claims, etc.

Approximately $200,000 per year for 8 projects

Since program inception in 2005, TBDP has funded $855,450 and generated: 22 disclosures Jobs for 53 students 5 licenses 11 start-up companies/interest in start

up 19 patents/applications $2,062,879 leveraged funding $5,120,891 pending

SensorCorr, LLC Markets corrosion sensors.

Indus Technology Web-edge sensor that measures edge position of thin-flexible materials more accurately than existing technologies.

NanoGenix Improved electrode cellular interfaces on bionic implants.

CleanHands, LLC Combines Radio Frequency Identification (RFID) with a traditional soap dispenser to provide employers with the ability to track hand washing compliance.

HALSA, Inc. HALSA has developed the Securite Stability Frame that assists in improving the balance and stability of users, including the elderly and rehabilitation patients, to replace constant aid from facility workers.

Novel Water Softening A reusable chemical sponge technology that removes magnesium and calcium ions that cause hard water, without depositing salt into the groundwater.

Secure Analytics, Inc. Secure Analytics has created a patented algorithmic solution that shuffles data within a confidential data set, yet allows it to maintain the same statistical properties.

Xplosafe Real-time onsite detection kit for improvised explosive compounds such as TATP, HMTD and Chlorate based explosives.

OIPM and the TBDP have supported projects moving in to this program;

To date six projects have graduated from CIE

The CIE program connects up with another program called the pre-TBDP—helps very early projects get ready for TBDP funding.

For profit business Provide

oversight/accounting/management Vehicle from which additional funding

can be obtained For example SBIR/STTR

Harvesting technologies from around the world, including the U.S.

OSU does marketing and licensing Share proceeds “50-50” Signed agreement with inventors from

the Republic of Georgia in area of holography

Intellectual Property

An aggregate of rights resulting from the creative

efforts of the mind

Usually used for data, technical know how, which

is protected by patents, plant variety certificates, trade secrets, copyrights,

and trademarks

What is a Patent?A legal right that permits the

owner to exclude others from making, using, and

selling an invention. Exclusionary Right lasts for 20 years from the date the patent application is filed

In return an inventor must disclose the invention to the

public

TESTS OF PATENTABILITY

• New, novel, innovative• Demonstrably different from prior art• New use• Improvement

• Useful• Non-obvious to person with ordinary skill in the art

• Surprising• Unexpected

Steps for obtaining a Patent

• Prepare Invention Disclosure Report

• Patent Application is prepared by an attorney

• Patent application is sent to US Patent and Trademark Office for “filing.” Patent is now “pending.”

• Patent prosecuted, “allowed,” issued-grant made to the inventor, published.

Patent Disclosure The Invention disclosure asks for:

:Good descriptive titleSimple descriptionDate it was madeRecent literature including talks given and thesis preparedNames of inventorsFunding sourcesSignatures

Publishing & Seminars• In the US a person has one year

from the time of public disclosure of an invention to file a patent application

• However, this “grace period” is not recognized outside the US, and in most foreign countries one cannot obtain a foreign patent if public enablement occurs before filing a US patent

Therefore, we recommend that the patent process begin before you publish your paper or give a talk