The Intellectual Properties Committee at the University of Kentucky

1. The Intellectual Properties Committee at the University of Kentucky Bruce Webb IPC Chair

2. Inventor Questions • Who/What is the IPC? • Why does the IPC exist? • What does the IPC do? • How do we operate? • Is there an IPC approach/philosophy? • What are limitations of the IPC?

3. Who/what is the IPC? • A faculty committee from Colleges producing most IP disclosures at UK • Members identified in consultation with college Deans of Research • Ex Officio: Don Keach, Katherine Adams, Taunya Phillips • Supporting Staff: Mariam Gorjian, Sabrina Darnell, Natasha Jones,

4. Current (voting) IPC Members Czar Grofcheck – Biosystems and Agricultural Eng. Todd Hastings – Electrical Engineering Eric Munson –Pharmaceutical Sciences Brian Rymond - Biology Peter Spielman – Molecular and Cellular Biochemistry Daret St. Clair –Graduate Center for Toxicology Gary Van Zant - Internal Medicine Bruce Walcott – Electrical and Computer Engineering Bruce Webb – Entomology, Chair

5. Why do we have an IPC? The University’s administrative regulations provide for the IPC To protect the University’s interest in IP To serve inventors and facilitate IP development

6. What does the IPC do? Authorize UK Intellectual Properties Development Office (IPDO:DonKeach) to spend funds to protect UK IP Decision based on patentability, commercial potential and UK ownership The IPC provides periodic advice to the University administration in IP matters and a faculty voice in this area

7. How does the IPC operate? • Meet on the 3rd Thursday of month during the academic year • Assessment meeting activities • Assessment meeting and report • Decision to present to IPC or act administratively • IPC Meeting • Inventor presentation/committee Q&A • Deliberation and vote of committee • Post meeting • Letter to inventors informing of committee action

8. Assessment meeting • Inventor discloses technology through Inventor Portal • Meeting scheduled by Mariam Gorjian of the Von Allmen Center and IPC member • Objectives of assessment meeting are to: • Develop an understanding of the technology • Explore commercialization potential and inventor plans to commercialize • Answer inventor questions

9. Post-Assessment meeting • Mariam prepares a ‘lean’ assessment on technology focused on patentability and commercialization potential • Based on ‘lean’ assessment a decision is made either to bring the IP before the committee for a decision or to act administratively

10. Administrative Action Allows committee to act where a clear decision appears evident. Positive recommendation • IP related to IP already being protected by the University • IP protection that is being funded by another party Negative recommendation • IP has been disclosed by inventor and cannot be protected under current law. • IP that does not belong to the University

11. If IP receives committee review • IP Chair contacts inventors to schedule presentations (~1 week before meeting) and provide a ‘presentation template’ • Inventor presentations scheduled at 20 minute intervals • 15 minute inventor presentation and Q&A; 5 minute deliberation and vote • Committee votes to • Protect IP – Motion A • Release IP – Motion B • Come Back – Motion C

12. IPC Decisions • Motion A. Protect. University has ownership and should seekappropriateIP protection (68%) • Motion B. Release. University has ownership but should not protect IP; University does not have ownership; IP cannot be protected (28%) • Motion C. University has ownership but the technology is not sufficiently developed to protect (4%)

13. What is the meaning of appropriate? • It depends • Develop and file a patent • Seek a patentability opinion and then decide whether or not to file • Provisional patent • Immediate filing • Delay filing provisional • File and let provisional expire

14. Important Factors in IPC Decisions • Patentability as perceived by the committee • Potential cost recovery • Commitment of inventors to commercialization • Engagement of potential sponsors • External funds to cover patent costs • Market size and significance of IP • Value to the University and/or faculty

15. The IPC has a dual role • IPC members are sympathetic to inventors and supportive of commercialization of University IP • The IPC also serves the University interests by • Providing technical expertise to University IP decisions • Protecting the University’s IP interests • Serving as stewards of University resources

16. Post meeting • Letter sent to inventors informing of committee decision • Letter contains standard language that protects any future IP by specifically stating that: • Inventor designation has a particular meaning • If released, the release applies only to the disclosed technology • Informs the inventors that they will be contacted by a patent attorney who will assist them with preparing the patent • This normally marks the end of IPC role

17. Limitations of the IPC • Administrative charge is to authorize University expenditures to protect IP • The IPC has no role in commercialization • Faculty volunteers • Administrative engagement • Resources • Von Allmen Center (Mariam Gorjian) • Intellectual Property Development Office

18. Questions? Contact information Bruce Webb bawebb@uky.edu 859-257-7415 IPC Chair Mariam Gorjian 859-218-6557 mariamgorjian@uky.edu Commercialization Specialist