IP Overview for Alberta Heart Jayant Kumar Joanna Preston Reg Joseph

TEC Edmonton is a joint venture between A Joint Venture TEC Edmonton is… the technology transfer agent for the University of Alberta and the commercialization service provider for the Greater Edmonton region.

TEC Edmonton is… A technology & business accelerator that optimizes return on Intellectual Property (IP) provides expertise and tailored advice connects with facilities, granting agencies, financing and management resources and transforms advanced technology into licensing opportunities and corporations

Executives-in-Residence IP Experts Market Analysts Grant Specialists Entrepreneur Advocates Communication and Marketers Finance and Legal Advisors TEC Edmonton is a Team of

Intellectual Property (IP) Protection Copyright Trademark Trade secrets Patents

Copyright A tangible expression of an idea (e.g. music, publications, software) Automatically vests in the author, except for “work made for hire” Registration is not required but must be obtained in order to claim damages © Smith and Company, 2009

Copyright (cont’d) Inexpensive Duration: typically life of author + 50 years in most countries (US: life + 70 years) Moral Rights – can be waived, but never assigned/ licensed Fair Dealing

Trademarks Trade names – University of Alberta, Monsanto, Coca-Cola, Roundup Ready, Nike, coined names vs. descriptive names Service mark – logos: Golden Arches, Nike Swoosh Trade dress – packaging: Coca-Cola bottle, Booster Juice cup Need not be registered: ™ vs. ®

Trade Secrets Usually associated with a method or a formulation –(e.g. Coca-Cola formula, KFC spices) Value is in secrecy

Patent A Patent is a right granted by the government to the inventor “to exclude others from making, using or selling the invention.” General categories of inventions: –Product or device: mechanical device –Process: method of refining petroleum –Composition of matter: alloys, drugs –Design: paper clip –Improvement of the above

Patent Criteria Must be novel: cannot be described anywhere in the public domain Must be useful: it must perform a function Must be non-obvious: an inventive step vs. a logical progression

Patent Specifics Must be registered: Provisional Formal/PCT National Prosecution: office action, issuance, maintenance Only valid in the country in which the patent is granted Valid 20 years from filing date

Challenges to Patenting Loss of rights due to public disclosure: scientific publication, newspaper article, etc. (grace period of 1 year in U.S. and Canada) Very expensive ~ US$250,000 worldwide Time consuming: up to 5 years Only 1-3% of patents are commercialized

First Stage - Discovery Report of Invention If you have an invention, contact TEC Edmonton before public disclosure. Examples of public disclosure include: Oral/poster presentation at a conference Abstract or a manuscript publication

Technology Evaluation Prior obligations search Is it a new invention – are there existing patents? Market Analysis Is there a market for this invention? Evaluation Timeline: Within 30 days of receiving the Report of Invention TEC will contact you on the IP evaluation Second Stage - Evaluate

Prior Obligations Pre-existing contractual obligations may impact the ability to protect and commercialize inventions CDA / NDA = Confidential or Nondisclosure Agreement MTA = Material Transfer Agreement CRA = Contract Research Agreement

Material Transfer Agreements Academic transfers: usually simple MTAs required for all transfers Compounds or biological materials from companies: MTAs can contain problematic IP and publications clauses TEC will negotiate terms to ensure rights are protected

Third Stage - Protect Protection Timeline: –Filing for patents: within 60 days (of receiving ROI) –Patent publication: 18 months from filing –Patent awarded: can take up to 5 yrs or more

Fourth Stage – Commercialization Strategy Technology License Market to Companies Negotiate Agreements Company Development Corporate Management Negotiate Agreements

Collaboration between TEC Edmonton and UTI Suggested Model: IP handled in accordance with the IP policies of institutions Scientific Lead Institution takes commercialization lead Lead agent initiates IP protection, marketing, licensing Out of pocket costs to be shared between the institutions Revenue sharing by institutions based on contributions

Commercialization Process Technology Facilities Networks & Connections Financing People & Expertise Company Business Services

TEC Edmonton’s Services Business Development Advice, mentoring Regional connections Business planning Incubation space Corporate management Market analysis Financing preparation Prizes (cash and in-kind)

Company Development STRENGTHS Control More long term revenue Diversification of the economy Sustainability WEAKNESSES Risk Longer term to revenue Time commitment Financing

TEC Screening Process Gate 2 – Primary Evaluation Gate 3 – Due Diligence Gate 1 – Strategic Fit Portfolio Stage 1 First Contact Stage 2 Lead Identification Stage 3 Qualified Lead Stage 4 Portfolio Company Inventions from UofA “Mining” the region for opportunities

Company Development Success Stories Working closely with Dr. Halloran”s spinoff company - TSI, TEC Edmonton’s EIR and market analysts are developing a strategy to capitalize on opportunities - contract research services to pharmaceutical and biotech companies, new diagnostic systems and products, and licensing opportunities for the company’s unique database. Mission Possible - “Shaheel provided frank feedback, mentorship and has constantly challenged us as entrepreneurs to refine our business strategy and product development plan.” Ken Bautista, CEO of Seek Your Own Proof

Partnerships Regional Alliance - Connecting Business Incubators and Service Providers with Entrepreneurs Members: TEC Edmonton, novaNAIT, Northern Alberta Business Incubator (NABI), NINT, Business Link and EEDC through the Advanced Technology Centre. Focus: Facilities, Product Development, Entrepreneur Education and Community Relations

Partner with TEC Edmonton Technology Evaluation Intellectual Property Protection (Patenting) Market Analysis Negotiation of Legal Agreements CDAs and MTAs, license/option agreements and shareholder agreements Licensing technologies or company creation Company development

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