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Intellectual Property and the Graduate Student
Presentation to
Agricultural and Biosystems EngineeringMarch 28, 2003
Kenneth Kirkland, Ph.D.Executive Director, Iowa State University Research Foundation, Inc.Director, Office of Intellectual Property and Technology Transfer
Phone: (515) 294-4740Email: [email protected]/~isurf
ISURF/OIPTT2
Organization
Iowa State University Research Foundation, Inc. (ISURF)
Office of Intellectual Property and Technology Transfer (OIPTT)
• The Foundation was incorporated in 1938 as the Iowa State College Research Foundation to protect and license intellectual property developed by faculty, staff, and students
• ISURF is a not-for-profit corporation• ISURF owns and manages intellectual property for ISU. Intellectual
property ownership is assigned to ISURF according to university policies by inventors or creators who are employees* of the university.
• OIPTT markets and licenses the intellectual property assigned to ISURF
* Faculty, staff, graduate assistants, postdoctoral fellows, and visiting scholars and scientists
ISURF/OIPTT3
ISURF/OIPTTFacts and Figures
FY02 budget of $3.3M
13 professional staff including 5 FTE for licensing
100 invention disclosures received in FY02
29 patents issued in FY02
30 patent applications filed in FY02. In addition, 34 provisional applications were submitted.
287 license agreements executed in FY02
ISURF has 416 royalty-generating agreements in place
Total licensing income in FY02 was $11.4M
ISURF/OIPTT4
Importance of University Licensing(AUTM Statistics 2000)
Technology transfer plays an important role in the U.S. Economy
• Sales of licensed products $35B
• Investment by licensee companies $5B
• 270,000 jobs supported University activity (142 in U.S.)
• 368 start ups formed
• 3,272 US patents issued
• $1.1B in royalty income (< 4% of research expenditures) Importance of Bayh-Dole
• Universities can take title in IP developed under federal funding
• Can grant exclusive licenses
ISURF/OIPTT5
What Is Intellectual Property (IP)?
Inventions covered by patent protection
Works of authorship protected by copyright (including software)
Proprietary materials such as software, biological materials, materials with potential commercial value, and trademarks
ISURF/OIPTT6
What Is A Patent?
A legal document
Grants inventor the right to exclude others from making, using, selling or importing the described invention (a legal monopoly)
The most common form of patent is the utility patent which provides protection for a term of 20 years from filing
A U.S. patent does not give protection to the invention overseas
ISURF/OIPTT7
Requirements For A Patent
The invention must be new. Other people cannot have used it or known about it before its invention.
The invention must be non-obvious. It cannot be evident to another person skilled in the same field as that of the invention.
The invention must be useful
ISURF/OIPTT8
What Is Copyright?
An exclusive right granted by the federal government to the owner of an original work of authorship to do and to authorize others to reproduce, distribute, perform and/or display the protected work
Term of protection is life plus 70 years for an individual and 95 years from the publication date for an organization (or 120 years from the creation date, whichever is longer)
Copyright protection is used primarily for books, plays, video performances, movies, sculptures, paintings, musical recordings, musical compositions, software and multimedia works
ISURF/OIPTT9
What Is A Trademark?
A trademark includes any word, name, symbol, or design adopted and used by an individual or organization to distinguish its goods from those of others
The term of protection for a trademark is indefinite as long as it remains in regular use
Trademarks can be registered federally and/or in individual states
ISURF/OIPTT10
What Is Know-How?
A body of knowledge outside the public domain that has commercial value, for example, a laboratory technique
Know-how can be licensed out just like other forms of IP, that is, provision for its use may be included in a license agreement
ISURF/OIPTT11
What are Trade Secrets?
When an inventor does not wish to share certain information with the public, that information may be kept as a trade secret
Trade secrets, are a fragile form of IP protection even though they have an unlimited lifetime if not disclosed
The university is seldom, if ever, involved with trade secrets
Classic example is the Coca-Cola recipe
ISURF/OIPTT12
Benefits of Protecting Intellectual Property
Companies have an incentive to invest in the technical and market development required to get a product in the marketplace
Inventors and ISU receive recognition
IP Protection preserves the rights of the inventors and the university to control the technology:• Prevents the inappropriate use of the technology• Ensures the use for the public good• Ensures continued use for research at the university
Income can be generated for all parties – companies, inventors and the university
ISURF/OIPTT13
Sharing of Income
ISURF shares the economic benefit of any IP with those who are recognized inventors; uses some of the income to pay legal, patent and administration costs; and reinvests a portion of the income for further research
Net royalties are divided equally among:• Inventor(s) – inventors agree among themselves at to how their
royalty income is to be apportioned• College – free to use their portion as they choose• ISURF – uses their portion for IP and tech transfer activities
ISURF/OIPTT14
Funding Requirements and Our Obligations
Due to Federal Agency regulations:• The university is obligated to have written agreements with its
faculty and technical staff requiring disclosure and assignment of inventions.
• The university has an obligation to disclose each new invention to the federal funding agency within two months of receiving the invention disclosure.
THEREFORE, inventors should make a prompt disclosure of all IP to ISURF to fulfill our obligations to the funding sources, and to ensure that the IP is properly protected before a public disclosure occurs.
ISURF/OIPTT15
Public Disclosure Concerns
A public disclosure can be in the form of:• a publication (includes on-line information),• oral presentation,• poster display,• samples, and/or prototypes,• a sell or an offer to sell the technology, or• if the technology is used commercially.
In order to be a public disclosure, the information must be considered “enabling”. If someone skilled in the art can read your description of the technology and reproduce the invention, then the description is termed enabling.
ISURF/OIPTT16
Things to Remember Before Public Disclosure
File an invention disclosure through ISURF before any public disclosure. Try to give at least one month’s lead time if possible to allow ISURF to review the disclosure and, if appropriate, file a patent application.
A Confidentiality Agreement and/or a Material Transfer Agreement can be sent out by ISURF to prevent a public disclosure.
Do not provide “enabling” information to anyone not covered by a Confidentiality Agreement.
When in doubt, mark all information “Confidential” – especially when submitting proposals!
ISURF/OIPTT17
What Happens if a Public Disclosure Occurs?
If your invention is publicly disclosed anywhere in the world even one day before you file a patent application, you lose the right to obtain a valid patent in most countries of the world, even though you might be able to obtain a U.S. patent.
If a public disclosure occurs, then you have one year from the public disclosure date to file a patent application in the U.S. Patent and Trademark Office.
ISURF/OIPTT18
U.S. Patent and Trademark Office
Example of Patent
U.S. PTO website:• http://www.uspto.gov/
• Good for literature searches – easy patent search capabilities• Review competing technologies• Search for possible collaborators• See what other researchers are pursuing
ISURF/OIPTT19
Procedure for Intellectual Property Protection
Potential IP is identified by the inventor(s) through a written disclosure form to ISURF. The disclosure form can be downloaded from the website:
www.iastate.edu/~isurf
OIPTT / ISURF evaluates the IP disclosure for its inventorship and ownership rights, IP protection and commercial potential. The inventors are included in this process.
ISURF/OIPTT20
Procedure for Intellectual Property Protection
If the decision is made to file a patent, the inventor(s) is asked to provide all pertinent information and data. A patent law firm is then identified to handle the application.
The inventor(s) is asked to work with the patent attorney to prepare the best patent application possible.
The inventor(s) will be asked to assist with responses to office actions from the patent office, until the issuance of a patent.
ISURF/OIPTT21
Licensing of Intellectual Property
During the ongoing patent prosecution, a licensing associate from OIPTT conducts a preliminary market analysis for the technology.
The inventor(s) plays a key role in assisting the licensing associate in writing a marketing description and provides advice on targeting the IP to specific companies.
OIPTT will begin marketing efforts, which might include targeted emails and an in-depth industry survey. The marketing descriptions are also placed on the ISURF/OIPTT website: www.iastate.edu/~isurf
ISURF/OIPTT22
Licensing of Intellectual Property
Contact between the company and inventor may be arranged, once a Confidentiality Agreement is signed.
If the company is interested in developing the technology, an option or license agreement may be negotiated, which may or may not include further research funding into the university.
The license, either exclusive or non-exclusive, gives specific rights for the licensee company to make, use and sell the invention.
A license may extend a few years or for the life of the patent.
ISURF/OIPTT23
Licensing of Intellectual Property
Since ISURF’s mission is to get the technology used, licenses always contain “due diligence” provisions. If the company has not commercialized the technology within a certain period of time, or fails to pay royalties due, then ISURF may terminate the license or convert an exclusive license to a non-exclusive.
No two licensing agreements are alike.
ISURF/OIPTT24
Marketing and Licensing Summary
During FY02, OIPTT made over 1500 contacts with companies concerning technologies available for licensing
ISURF returned $2.7M to ISU from its operations in FY02. These monies were comprised of grants, royalty sharing to academic units and research income from licenses. The university’s allocation to support ISURF/OIPTT’s operations was $188K.
Since 1990, we have licensed to 37 Iowa-based startup companies
Second among U.S. Universities in number of licenses executed in FY01
Number one among land grant universities in licenses and options executed per $10M research expenditures in FY01 and second in the nation.
ISURF/OIPTT25
Selected Contacts at ISURF/OIPTT
Executive Director – Ken Kirkland, Ph.D. Invention Disclosures – Lynne Mumm
• [email protected] 294-4742
Licensing Associates:• Cheryl Kamman - Material Sciences & Chemistry
[email protected] 294-7707
• Eddie Boylston - Engineering [email protected] 294-3621
• Todd Headley - Life Sciences [email protected] 294-4470
ISURF/OIPTT26
Questions?