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Discovery, Patenting and Commercialization of CUA-Developed Technologies

Discovery, Patenting and Commercialization of CUA-Developed Technologies. January 9, 2003. Agenda. 10:00 Welcome and Introductions 10:05 University Policies 10:25 CUA Tech Transfer Policies 10:35 Documenting the Invention 11:00 U.S. Patent and Trademark Office

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Discovery, Patenting and Commercialization of CUA-Developed Technologies

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  1. Discovery, Patenting and Commercialization of CUA-Developed Technologies January 9, 2003

  2. Agenda • 10:00 Welcome and Introductions • 10:05 University Policies • 10:25 CUA Tech Transfer Policies • 10:35 Documenting the Invention • 11:00 U.S. Patent and Trademark Office • 11:25 Marketing of Technologies • 11:40 Question and Answer Session • 11:55 Wrap-up and Adjourn

  3. Speakers • Ralph Albano • Director, Office of Technology Transfer • Kathryn Bender • Associate General Counsel • Steven Prewitt • Patent Attorney, Jagtiani + Guttag • Karlena Schwing, patent agent at J+G, CUA Mech.Eng & Law • Anita Gross • Administrative Appeals Judge, U.S. Patent and Trademark Office

  4. Mission and Goals of Office of Technology Transfer • The Office of Technology Transfer (OTT) at the Catholic University of America assists the CUA faculty, staff and students with the management and commercialization of their intellectual property. • Protect the university • Serve the faculty and staff • Facilitate research • Improve the human condition

  5. OTT Operational Objectives • Increase the number of invention disclosures submitted by university community, adding to the university’s intellectual property portfolio • Continue to manage the relationships with companies that have licensed university technologies • Find commercial partners and initiate license revenues for new technologies

  6. Technology Transfer –Value to the University • Revenue stream from licensing • Increased research funding and collaborations • Increased visibility of university and researchers • Stimulating research and an entrepreneurial environment among faculty

  7. Technology Transfer Procedures at CUA

  8. Invention Disclosure and OTT Procedures • Inventor submits Invention Disclosure Form • OTT works with OSP to ensure proper sponsor reporting • OTT meets with inventors and makes initial patentability decision • Inventor assigns rights to university • OTT files Provisional Patent application • OTT meets with inventors to begin marketing effort…..

  9. Invention Disclosure and OTT Procedures (cont.) • OTT produces “Commercialization Plan” • Approximately six months after filing the provisional patent, OTT convenes Patent Committee to report on the progress of the marketing effort, and to evaluate assignment and patenting options. • Releases invention back to inventor, or… • Accept assignment, and file full patent application

  10. Technology Evaluation Criteria • Corporate involvement (sponsored research) • Likelihood that patent claims will issue • Encumbrances (number of assignees) • Time-to-market

  11. Marketing of Technologies

  12. Realistic Expectations • Statistics form “leading” university tech transfer program • 400 technologies disclosed • 120 technologies get market evaluations • 40 technologies licensed, of those • 20 technologies net positive royalties • 1 technology brings in over $1 million in revenue

  13. Marketing Starts with the Inventor • Importance of peer-reviewed publications • Publishing vs. Patenting • Inventors make the best technical sales people • Research sponsors • Contacts in the field (former students?) • Spin-off or start-up?

  14. Marketing of University Technologies • Methods to make industry aware of technology will also increase visibility with potential funders of additional research • White papers • Glossy brochures • Targeted mailings • Trade magazine articles • Industry and technical conferences/trades shows • Industry contacts • Open House/Industry Days

  15. Questions and Answers

  16. Further Information Ralph Albano Director, Office of Technology Transfer x6444 Currently in 114 McMahon, moving soon to 3rd Floor Caldwell Our web site is http://ott.cua.edu and we will soon have today’s charts and all necessary forms available online. We already have a a great deal of general information available.

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