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

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

2. 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

3. Organizational Structure and Contacts CSURF CSU Ventures, Inc. TT Office Marketing and Licensing MicroRxTM Infectious Disease Business Enterprise NeoTREXTM Cancer Business Enterprise CenergyTM Clean Energy Business Enterprise CSU Mgmt Corp. For-profit Investment Seed Fund Tim Reeser, COO TBD Bus. Dev. / Licensing Todd Headley, Director Dian Kammeyer, Licensing Jeremy Nelson, Licensing Tara Marostica, Marketing Cindy Pederson, IP Management Joe Guiles, COO Rod Tompkins, Bus. Dev. / Licensing Lori Phelan Bus. Manager Terry Opgenorth, COO Stephen Foster, Bus. Dev. / Licensing Dave Lori Bus. Dev. / Licensing Mark Wdowik, President/CEO

4. 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

5. The Bayh-Dole Act & University Technology Transfer • 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)

6. 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.

7. What Technologies Have Come Out of University Technology Transfer? * From University of Virginia Patent Foundation

8. What is our Technology Transfer Process? • Invention Disclosure • Invention & Market Evaluation • IP Protection • Market Analysis • Marketing • Licensing/Commercialization • Royalty Collection

9. 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.

10. 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.

11. 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.

12. 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.

13. 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.

14. 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.

15. 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.

16. Marketing • Perform Detailed Market Analysis • Identify Target Companies • Create Non-confidential Summary with Inventor • Contact Potential Commercial Partners

17. 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.

18. 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

19. 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

20. 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/