Pizza and Patents: Turning University Science into Real-World Products

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

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

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

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

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.

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

What is our Technology Transfer Process?

Invention Disclosure

Invention & Market Evaluation

IP Protection

Market Analysis

Marketing

Licensing/Commercialization

Royalty Collection

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.

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.

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.

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.

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.

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.

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.

Marketing

Perform Detailed Market Analysis

Identify Target Companies

Create Non-confidential Summary with Inventor

Contact Potential Commercial Partners

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.

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

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

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/