Intellectual Property @Purdue ARP, New Faculty Orientation August 22, 2008 Simran Trana Director Office of Technology Commercialization

How does Purdue manage Intellectual Property? Guiding Policies Policy VIII.4.1 Intellectual Property http://www.purdue.edu/policies/pages/teach_res_outreach/viii.4.1.htm Memorandum B-53 Use of Copyrighted Materials for Educational and Research Purposes http://www.purdue.edu/policies/pages/teach_res_outreach/b_53.html University Copyright Office - Donna Ferrullo

Intellectual Property Policy VIII.4.1 PATENTS Inventions - IP protectable under US patent law University owns all rights to all Inventions made in the course of employment by the University, or through the use of University Resources. Trademark/Servicemark University owns all rights related to: an item of Intellectual Property; or a program of education, service, public relations, research or training program of the University. PLANT DESIGN UTILITY

Intellectual Property Policy VIII.4.1 Tangible Research Property - perceptible items produced in the course of research University owns all rights in Tangible Research Property related to: an individual’s employment responsibilities; and/or developed with support from University Resources

Intellectual Property Policy VIII.4.1 Copyrightable Work - original work of authorship, which has been fixed in any tangible medium of expression All rights in Copyrightable Works remain with the creator unless: created pursuant to the terms of a University agreement with an external party; created as a specific, written requirement of employment or as an assigned University duty; specifically commissioned by the University; the creator of the Copyrightable Work made more than incidental use of University Resources; the Copyrightable Work is also patentable and/or is associated with a University Trademark .

Why is it important? Helps transform nascent scientific discoveries to products and services available for the public good Creates jobs Provides additional revenue to the inventor and university through patent licensing fees.

Who is responsible for managing IP at Purdue? Sponsored Program Services Research Office of Technology Commercialization Patents, copyrights, trademarks, TRP Conflict of Interest - OVPR Consulting, start-ups

Conflict of Interest Outside Activities Up to 1 day a week http://www.purdue.edu/Research/vpr/rschadmin/coi/index.shtml Outside Activities Up to 1 day a week Faculty and staff members must obtain prior approval of the President of the University, on President's Form 32a Recommended by Department Head and Dean Shall not enter into Intellectual Property agreements related to outside employment, unless approved by the President of the University. OVPR- Conflict of Interest Manager -Dr. Peter Dunn

OTC Mission The mission of the Office of Technology Commercialization (OTC) is to serve Purdue University through the commercialization of its intellectual property

Goals Public Utilization Economic Development Revenue Faculty Retention Engagement with Industry

What do we do? Advise faculty on IP issues Foster inventor participation in the technology transfer process Educate campus researchers about the technology transfer process through a variety of means including seminars with guest speakers Solicit and analyze invention disclosures from faculty, students, and staff Analyze commercialization feasibility of university intellectual property and subsequent strategies License "tangible research property" for commercial use License patents and copyrights for commercial use Facilitate faculty and technology start-ups

Steps involved www.otc.purdue.edu Not Viable Invention Disclosure Patents Copyright Trademarks Trade secrets Invention Disclosure Invention Assessment IP and Commercialization Plan Management & Funding Start-up Faculty initiated Legal Issues Sponsor related directives Novelty – disc. Market potential Stage of development License to Existing Company www.otc.purdue.edu

Typical license terms Start Up Other Terms License to existing company Non-faculty/Faculty Business Plan Equity Faculty Conflict of Interest License to existing company Commercialization Plan Up-front fee Other Terms Milestone Payments Earned Royalty Minimum Payments Patent Cost reimbursement Caveat emptor

Revenue Participation Under B-10… License 1/3 Trask/PRF 1/3 Inventors % Inventor 1 1/3 Department % Inventor 2 % Inventor 3 1/3 Center/Inst. 2/3 Department

# of Disclosures/Patents

Big Ten Standings 2005 Number US Dollars

Licenses/Revenue

Start-Ups

PU/PRF Resources OTC Simran Trana 4-6725 strana@prf.org Agriculture and Food Science 4-6149 @prf.org Eric Lynch Mechanical/Industrial Engineering 6-3379 eslynch@prf.org Matt McFarland Life Sciences/Pharmacy 6-7541 mjmcfarland@prf.org Hilton Turner Electrical/Computer Engineering 6-7539 haturner@prf.org Shane Fimbel Life Sciences/Molecular Biology 4-5784 smfimbel@prf.org Karen White Software/Chemistry 4-2609 kfwhite@prf.org Business Development Julie Goonewardene 6-7519 jkgoonewardene@prf.org