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Technology Transfer at CU-Boulder

Technology Transfer at CU-Boulder . Ken Porter Director, CU-Boulder TTO ken.porter@colorado.edu www.cu.edu/techtransfer 4001 Discovery Drive, Ste. 390 Quest Building. Knowledge. | Innovation |. Technology. Technology Transfer

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Technology Transfer at CU-Boulder

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  1. Technology Transfer at CU-Boulder Ken Porter Director, CU-Boulder TTO ken.porter@colorado.edu www.cu.edu/techtransfer 4001 Discovery Drive, Ste. 390 Quest Building Knowledge | Innovation | Technology

  2. Technology Transfer Office of the Vice President of Academic Affairs and Research University of Colorado Jack Burns VPAAR External Advisory Board Boulder Office Ken Porter Kate Tallman Adam Brown System Office David Allen Annalissa Philbin Dave Drake Kathe Zaslow Kristin Diamond Health Sciences Center Denver University License Equity Holding, Inc. Jerry Donahue Colorado Springs

  3. Input 2001 - 45, 2002 - 60, 2003 - 41 to YTD55% of CU total Output 2001 - $700k, 2002 - $900k, 2003 - $810k YTD

  4. Disclosures by Department

  5. Invention Timeline: Conception to Patent Protection $10 3 $10 4 $10 5 PTO File US Patent File PCT Provisional Patent PCT National Phase Priority 12 30 Date months months TTO Invention Disclosure Form (IDF) Provisional Patent Marketing and Patenting Licensing CU Observation Hypothesis Prediction Experimentation INVENTION

  6. TechnologyTransfer Participants TTO Process Market, Patent Inventor Industry IDF Align interests Invention $$ License

  7. The Tech Transfer ProcessInvention Disclosurewww.cu.edu/techtransfer/campus/idf.html • Inventors • Confidential and Non-confidential Descriptions • Evidence for Patent • www.uspto.gov/patft/index.html • Novelty, Non-obviousness, Utility • Public Disclosure • Sponsorship (Federal, MTA, SRA)

  8. The Tech Transfer ProcessMarketing • What does it do? • What problem does it solve • Why does it matter to industry and customers • Patentably distinct • What are the alternatives? • How big is the opportunity? • Market size • Market window • Competitors • Identify application • Inventor’s ideas • Industry trends • Identify companies • Inventor contacts • TTO contacts • Online search • Identify individuals • Inventor contacts • Professional societies • Conferences • Industry publications • Cold calls GO / NO GO

  9. The Tech Transfer ProcessPatenting • Background • Inventor 1°, Attorney 2° • Detailed Description • Attorney 1°, Inventor 2° • Examples • Inventor • Claims • Attorney 1°, Inventor 2°

  10. The Tech Transfer ProcessLicensing: Key Features I Definitions II Grant of Rightsexcl/non-exclusivefield of useterritory III Sublicensing IV Government & University RightsBayh-Dole research & publication V Royaltieslicense fee /sales royalties /milestone payments /maintenance fees /equity VI Reports and AuditsColorado Open Records Act VII Performance Guaranteesregulatory/commercial milestones VIII Patent Prosecution, Enforcement & Defenseeither party may direct with oversight licensee pays patent costs IX Indemnificationstate requirements no guarantees X Duration / Terminationterm is usually for the life of the patentuniversity can cancel only for breach

  11. Concluding Remarks • What inventors want from technology transfer: • Responsive TTO • Minimal intrusion into basic research and publication • Sources of funds: research, discretionary and personal • What TTO wants from inventors: • Timely information • Commitment to the process • What corporations want from the University: • Access to top technology at a fair price • Partnership • What TTO wants from corporate licensees: • True commitment to develop and commercialize the IP • Understanding of university values and constraints

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