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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 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 • 11:25 Marketing of Technologies • 11:40 Question and Answer Session • 11:55 Wrap-up and Adjourn
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
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
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
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
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…..
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
Technology Evaluation Criteria • Corporate involvement (sponsored research) • Likelihood that patent claims will issue • Encumbrances (number of assignees) • Time-to-market
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
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?
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
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.