1 / 14

Understanding Technology Transfer

Understanding Technology Transfer. Katharine Ku March 2, 2006. Bayh-Dole Law. Title to the university, then gov’t Share royalties with inventors Royalty free license to the gov’t Preference for small business Substantial manufacture in the US. Patents. Term 20 years from filing

honorato-matthews
Download Presentation

Understanding Technology Transfer

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Understanding Technology Transfer Katharine Ku March 2, 2006

  2. Bayh-Dole Law • Title to the university, then gov’t • Share royalties with inventors • Royalty free license to the gov’t • Preference for small business • Substantial manufacture in the US

  3. Patents • Term • 20 years from filing • What is patentable? • New • Useful • Nonobvious • Process, Composition of Matter, Machine, Article of Manufacture

  4. Patent Policy • At Stanford • Patentable inventions made by faculty, staff or students...in the course of their University responsibilities or with more than incidental use of University resources...shall be assigned to the University. • At other universities

  5. Royalty Sharing Policy • Gross Royalties • Minus 15% administrative fee • Minus expenses • Equals Net Royalties • 1/3 to Inventor(s) • 1/3 to Department • 1/3 to School

  6. It Starts with an Invention • Conception or reduction to practice • Inventor(s) • Sponsorship • Disclose to OTL (early!) • Public disclosure • notebooks • Evaluation • Can it be licensed?

  7. Finding a Licensee • Licensing Strategy • Is it worth cost of Filing? • Patentability • Don’t always need to file • Finding a licensee (not easy!) • Marketing • Feedback • COI • ALL OF THIS TAKE A LONG TIME!

  8. Licensing • Exclusive v. nonexclusive • Term of the exclusivity/agreement • Field of use • Financial terms • Upfront • Annual payments • Earned royalties • Diligence/Milestones • Non-financial issues • Liability • Holy clause

  9. A word about MTA’S • Outgoing Materials • Short version • UBMTA • Long version • When to use • Incoming Materials • Why it takes so long

  10. Inventorship Issues • Inventors/Creators • Faculty v. faculty • Faculty v. students/postdocs • Research scientists • Importance of notebooks • First to invent

  11. Start-ups and Conflicts of Interest • Management/prohibition • Stanford Process/Concerns • Separation of activities • Students • Pipelining

  12. Notable Stanford Inventions 1970 – OTL Established 1971- FM Sound Synthesis ($22.9M) 1974 – Recombinant DNA ($255M) 1981 – Phycobiliproteins ($38.9M), Fiber Optic Amplifier ($26.5M), MINOS ($3.2M) 1982 – Amplification of Genes ($18.5M) 1984 – Functional Antibodies ($61M) 1986 – CHEF Electrophoresis ($2M) 1990-1992 – DSL ($17.9M) 1996 – Improved Hypertext Searching (GoogleTM) 2006 – the next big thing ???

  13. Sobering Statistics • 3/6000 is a BIG WINNER • 16 cases generated $5M or more • 53 cases generated $1M or more in cumulative royalties • The University cannot and does not count on royalties for university operating expenses

  14. For more information….. Come Visit! http://otl.stanford.edu

More Related