Introduction to Technology Transfer and Licensing

1. Introduction to Technology Transfer and Licensing “From Invention to Market 2003” Wright State University Student Union May 7, 2003

2. What is Technology Transfer? Transfer Entity 1 Entity 2 • INTEGRATIVE Process whereby a concept/idea • Is recognized as an INVENTION • Is assessed for its commercial potential • Is appropriately protected • Is marketed • And hopefully… commercialized!

3. Transfer? • The word “Transfer” encompasses many complex steps that involve: • Intellectual Property and Contract law • Strategic Planning/Decision Analysis • Commercial assessment • Public relations and networking • Is an administrative AND researchprocess! INTEGRATIVE….

4. The PROCESS….. IDEA INTEGRATIVE INVENTION? DISCLOSURE COMMERCIALIZABLE? MARKET

5. Integrative effort: ACTORS • Technology transfer integrates capabilities from professionals in heterogeneous areas of expertise Researchers IP lawyer Contract Lawyer TTO RSP Professional network/ Opinion leaders The other “Party” WSU General Counsel

6. TANGIBLE INTANGIBLE An Invention? REDUCTION TO PRACTICE • IDEA INVENTION = CONCEPT • INVENTION = Integration∫of elementary inventive contributions (technologies)

7. Tech “n” Techno 1 (Patented same instit) Tech 2 (Not patentable) Techno 3 (Patentable but not patented) An Invention? • Integration∫of elementary technological contributions SECRET SECRET MUST BE KEPT SECRET!!!

8. Invention & Inventors • COMPLEXITY of INVENTION => - need to identify the different pieces - need to identify who has done what from conception to reduction to practice -> legally considered as “INVENTORS” => LABORATORY NOTEBOOKS • HaveLEGAL value – evidence in Court. • SUPPORT invention disclosure • Laboratory notebooks must be keptconfidential

9. The first key-event….. …..DICLOSURE • FORMALIZATION of the Invention invention disclosure • Invention becomes officially known • Invention officially comes to existence • THEREFORE….. BECOMES a CANDIDATE for IP Protection

10. Invention Disclosure….. • Description of the invention MUST show that it is: NEW, NON-OBVIOUS, USEFUL • MUST show the Competitive advantage over comparable inventions in the field • MUST indicate the sources that lead to this invention: the elementary technological contributions • MUST indicate WHO actively contributed to the invention = INVENTORS

11. After disclosure? • Invention assessed for… commercial interest eligibility for IP protection TTO DECISION TTO does not want the invention -> back to Inventor TTO wants the invention -> IP Protection strategy IF commercialization

12. Commercializable? invention • Each technological contribution makes the market uniqueness of the invention Techno “n” Techno 1 € marketed product Techno 2 Known, public Techno 3 (secret-market ??) Commercial Assessment –Value?

13. TTO decision…… • Represents the UNIVERSITY’s best interest • Partnership? Spin-off? Secret? OR….. • Depends on scientific maturity • Depends on strength of IP protection • Depends on Commercial value • Depends on Market conditions …….Strategic decision Maturity

14. Partnership….. negotiation • Broad range of possible terms and conditions for partnering an invention • Bring the invention to maturity • Though research collaborations with other governmental entities • Through partnerships with industry without entering a license agreement • License the invention to an industrial partner

15. Entrepreneurship…… • Only when a technology has reached maturity • patent position • Commercial appeal (competitiveness, addresses a market need or may create a market need) • Technology platform possible? • Scientific leadership • Ability to reconcile cultural differences academia/industry….. ROI, ROI, ROI • Ability to attract top business talents • Depends on market conditions…..

16. Benefits of T2? • Mission of the WSU as a public University To drive the economic development Local –> State -> Nation supported by WSU credibility and goodwill • T2 =instrumentof this drive • improve educational momentum • job creation through entrepreneurship

17. WSU Policy & Procedures for IP Principle…. Significant resources Researcher ROYALTIES University Certain IP rights

18. TTO’s roles • An OPERATOR ofWSU’s economic contribution • IMPLEMENTOR of the benefits of Technology Transfer • INTERFACE Research / Market…. • RECONCILE academic / corporate cultures • RECONCILE free information sharing/managed information

19. Integrative process…. TEAM UP! • TTO is NOT another bureaucratic layer! • TTO represents the University’s interests • Thereforeall employees interests • CONTACT TTO • At will! • NOT at the LAST MINUTE! • EACH time anyAGREEMENT is needed! • EACH time any meeting with an outside business party is needed!

20. A few tips….. • Contacted by an outside business organization? direct to the Technology Transfer Office at#2651 • Need to file a sponsored research application? • will you need to disclose proprietary information? • Any doubt? • Talk to tech transfer about negotiating an NDA • Need to send out or receive biological material? • Contact Tech Transferabout negotiating an MTA….

21. TTO to HELP you…. • to DISCLOSEand PROTECTan invention… • Tomanage your information… • To (e)valuate your technology… • Toassess marketability… • To identify potential commercial partners… • To negotiate partering Agreements that represent best your / WSU’s interests… • Tostartan invention-related business…

22. Wright State University Technology Transfer Office • Operates within the office of Research and Sponsored Programs directed by Dr. William Sellers. • Associate Director: Dr. Isabelle Gorrillot 201 University Hall Tel.: 937-775-2651