Commercializing Discoveries: Disclosing your Intellectual Property By Ryan N. Fiorini, Ph.D., MBA, MHA Licensing and Commercialization Manager MUSC Foundation.

Slides:

Advertisements

Similar presentations

Overview of the Keys to Successful Commercialization Gerald J. Siuta, Ph.D. President Siuta Consulting, Inc. Tucson, Arizona October 18, 2001.

Advertisements

Invention Disclosures Kenneth Kirkland, Ph.D. Executive Director, Iowa State University Research Foundation, Inc. (ISURF) Director, Office of Intellectual.

Policies and Issues Regarding Intellectual Property Developed at Iowa State University Presentation to Energy Center Grantees/ BECON Users 12/12/03 Kenneth.

INTELLECTUAL PROPERTY

Intellectual Property Rights Margaret Lawlor Business Development Manager Faculty of Medical Sciences 2015 copyright©NewcastleUniversity 2015.

So you’ve invented something? A Guide for UMass Faculty, Researchers and Students.

Intellectual Property March 4, 2015 Don Keach Director, Intellectual Property Development and Technology Transfer Office Copyright University of Kentucky.

Intellectual Property and Technology Transfer Ron Huss, Ph.D., Associate Vice President of Research and Technology Transfer Michael Brignati, Ph.D., J.D.,

The Catholic University of America Office of Technology Transfer Office of Technology Transfer Commercialization of CUA-Developed Technologies February.

Technology Transfer University of Colorado Denver Rick Silva, Ph.D., M.B.A. -- Director Senior Licensing Managers David Poticha, M.S., J.D. Paul Tabor,

Technology Transfer: The NIH Experience Steven M. Ferguson, CLP Deputy Director, Licensing & Entrepreneurship Office of Technology.

What we ask in a ROI What it is? Is it related to another invention? Who contributed to making the invention? Who paid for the research? When invention.

1 Intellectual Property Basics Peggy Wade, Ph.D. Director, Division of Engineering Research, College of Engineering Michigan State University

Intellectual Property – Why it Matters

February 25, 2014 SERIES 4, SESSION 2 OF AAPLS APPLICANTS & ADMINISTRATORS PREAWARD LUNCHEON SERIES Material Transfer and Confidentiality Agreements.

Intellectual Property: Kenneth Kirkland, Ph.D. Executive Director, Iowa State University Research Foundation (ISURF) Director, Office of Intellectual Property.

Intellectual Property and Senior Design Projects.

Iowa State University Research Foundation, Inc. (ISURF) and the Office of Intellectual Property and Technology Transfer (OIPTT) Kenneth Kirkland, Executive.

Technology Transfer at Rice

WIPO Dispute Resolution in International Science & Technology April 25, 2005 Ann M. Hammersla Senior Counsel, Intellectual Property Massachusetts Institute.

The Catholic University of America Office of Technology Transfer Discovery, Patenting and Commercialization of CUA- Developed Technologies January 9, 2003.

A Basic Primer on Intellectual Property Kathryn Atchison, DDS, MPH Vice Provost, Intellectual Property and Industry Relations Associate Vice Chancellor.

Overview OTL Mission Inventor Responsibility Stanford Royalty Sharing Disclosure Form Patent View Inventor Agreements Patent.

Technology Transfer and Assessment of Intellectual Assets Gerald J. Siuta, Ph.D. President Siuta Consulting, Inc. ( Vice President.

KUIC - Copyright 2014 KU Innovation and Collaboration (KUIC) is the commercialization arm of the University of Kansas (all campuses): Intellectual property.

10/19/2011F. B. Bramwell1.  Thanks to conversations with: ◦ HU Office of General Counsel  John Gloster  Dan McCabe ◦ University of Kentucky Intellectual.

Intellectual Property GE 105 Introduction to Engineering Design.

Investing in research, making a difference. Patent Basics for UW Researchers Leah Haman Intellectual Property Associate WARF 1.

2011 Industry Sponsored Research Workshop INTELLECTUAL PROPERTY Michael Jaremchuk Associate Director CVIP Phone: FAX:

+ Faculty Orientation UAMS BioVentures September 23, 2015 Christopher A. Fasel Associate Director of Licensing Patent Attorney UAMS BioVentures.

Intellectual Property Rights Margaret Lawlor Business Development Manager Faculty of Medical Sciences 3rd October 2013 copyright©NewcastleUniversity 2013.

MTA Sharing Research Materials in Academia AKA: Everything you could want to know about Materials Transfer Agreements.

Organizing a Technology Licensing Office (TLO) Jon Sandelin Senior Associate Emeritus

Campus-Wide Business Managers Meeting Thursday August 19 th, 2010 Richard Magid, Vice President.

Dr. Marie Talnack, Director, TechnologyTransfer Office and Industry Clinic.

Developing an IP Policy at Smaller Institutions James R. Zanewicz, J.D. Director Office of Technology Development.

Introduction to the Offices of Biotechnology & Business Development John L. Harb Director, Office of Biotechnology __________________________________ October.

03/10/2008 Terese Rakow, PhD. Postdoctoral Career Development Course March 10, 2008.

Patents Business of Biotechnology BIT 120. Definition Patent Government grants which provide inventors with right to exclude others from practicing invention.

NIH Funding Recipient Responsibilities February, 2004 Office of Technology Transfer Office of the Director National Institutes of Health.

Elements of a Workable Intellectual Property Policy OPIC IP Roundtable Noel Courage Bereskin & Parr November 21, 2007.

Office of Technology Commercialization Chuck Rancourt Director.

Intellectual Property Dr Laura Rush Business Development Manager Research Enterprise Services copyright©NewcastleUniversity 2015.

Ignite Technology Transfer NUI Galway Technology Transfer Office Seamus Coyne, Ph.D Neil Ferguson, Ph.D Commercialisation Executives Technology Transfer.

Commercializing Inventions at Baylor Research, Technology Inventions Baylor Licensing Group BCM Technologies, Inc.

1 Columbia University Office of the General Counsel March 2012 Columbia University Office of the General Counsel Patenting Biotech: Strategies and Tips.

Technology Licensing at Stanford University

1 Gary Williams – Director Jeni Clark – Associate Director New Product Development May 16,2012.

Stephanie Roof, CRA Proposal Manager Sponsored Projects Administration BALL STATE UNIVERSITY INTELLECTUAL PROPERTY TECHNOLOGY TRANSFER.

INTELLECTUAL PROPERTY 101 CHASE KASPER, DIRECTOR OFFICE OF TECHNOLOGY DEVELOPMENT

Intellectual Property at USC October 27, 2003 Dr. Michael Muthig.

Review of Research-Related Agreements Between Academic Institutions and Other Entities. Manoja Ratnayake Lecamwasam, PhD Intellectual Property and Innovation.

Technology Transfer Office

Taking Discoveries from Lab to the Market

So you’ve invented something?

Intellectual Property 101

ECE362 Principles of Design

Technology Transfer 101 An Overview of the Process

Protecting and exploiting research results at Newcastle University Geraint Lewis – Business Development Manager, Research and Enterprise Services

Stanford University Office of Technology Licensing (OTL)

Intellectual Property 101

Karen Niemeier Grants 101: Sponsored Projects

Protecting and exploiting research results at Newcastle University Lynda Speed Business Development Manager Research and Enterprise Services

Intellectual Property Rights and Confidentiality

Protection of Intellectual Property Resulting from STCU Projects

Protecting and exploiting research results at Newcastle University Geraint Lewis – Business Development Manager, Research and Enterprise Services

Protecting and exploiting research results at Newcastle University Dr Catrina Mullan Business Development Manager Research and Enterprise Services 0191.

What are the types of intellectual property ?

What are the types of intellectual property?

Presentation transcript:

Commercializing Discoveries: Disclosing your Intellectual Property By Ryan N. Fiorini, Ph.D., MBA, MHA Licensing and Commercialization Manager MUSC Foundation for Research Development

Goal of Presentation How do I Commercialize my Technology? What does the Foundation for Research Development (FRD) do? Where can I get more information? Why is it important to learn about technology transfer? MUSC Foundation for Research Development 909 Haborview Tower

Who Works at FRD? Chip Hood, J.D. Executive Director Lisa Benson Patent Administrator Karen Hallenbeck, J.D. Legal Council Ryan Fiorini, Ph.D., MBA Technology and Marketing Manager

What does FRD do? Manage Technology Transfer for MUSC BenchBedsideIndustry

What does FRD do? Manage Technology Transfer for MUSC

Where is the Information? FRD Website –Forms –Policies –Procedures –Links

Evaluation Patent Licensee Release ROI Retain Technology Transfer Inventor Foundation for Research Development Outside MUSC Licensee

Invention Protection: Step 1 Document that you are the first one to come up with this idea A.Write the idea down in your notebook B.Gather data to support your idea A.Protocols and Experiments B.Data and Analysis C.Keep accurate records A.If in doubt, write it down Date and Witness Eureka! You have an idea At any time: Call us! We’ll help do an early assessment of the commercial potential of your invention

Why Date and Witness? NASDAQ: MEND

Evaluation Patent Licensee Release ROI Retain Technology Transfer Inventor Foundation for Research Development Outside MUSC Licensee

The disclosure What to Report? Anything that is new (or improved) and may be useful: e.g. new use of known compounds new chemical structures devices reagents cell lines software diagnostic markers copyright etc. When in doubt, CALL US!

You CAN’T Patent Genes, Peptide, RNA, Long Protein, Novel Bacteria found on ground Can’t patent a natural occurring product

You CAN Patent Can patent its use or method to extract Product by Process Biomarker, Probe, Gene Modulator, Novel Therapeutic, Probiotic

Why should I file an invention disclosure? High Publicity of Your Research Further Progress of Your Science –Sponsored Research Licensing of Technology –Royalties

Make it Big Nature Reviews Molecular Cell Biology 5, (March 2004) taxol

Evaluation Patent Licensee Release ROI Retain Technology Transfer Inventor Foundation for Research Development Outside MUSC Licensee

Evaluation What are we looking for? What is the commercial potential? Likelihood of obtaining Intellectual Property = What is a company looking for?

Evaluation What is the commercial potential? –Is it better, cheaper, quicker? –How much development needed before commercialization? –What is the Market size? –Potential for making a profit? –Is a company interested already?

Case Studies and Issues **Further information available on website and at all departmental seminars

Most Common Mistakes Public Disclosure Prior to Protection Signing Rights –MTA Inadvertent COI Sponsored Research Source: Council on Governmental Relations

The Disclosure When to Report? Before public disclosure! Including: –Publication of the paper –Poster in hallway –Student presentation –Departmental seminar –Discussion with colleague from other institution –Material Transfer Agreement (MTA) –Grants If you think it might be a disclosure, calll us! Confidentiality Agreement or

Cohen-Boyer Recombinant DNA –Stanford, UCSF Paper – November 1973 Applied for Patent 1974 Patent Issued December 2, 1980

The Outcome Still widely successful –Total loss of foreign rights Patent Expired in 1997 –Licensing Revenue $255 million –From $35 billion in worldwide sales Point: Send in your disclosures

Blockbuster Drugs from Patent Epogen (Amgen) Procrit (Amgen) Humulin (Lilly) Novolin (Noro-Nordisk) In vitro HIV (Abbott) Recombinate (Genetic Institute-Baxter) Proleukin (Chiron) Intron A (Schering)

MTA Signatory Authority Loss of Rights Future Inventions Definition of Material Conflicts with Existing IP MUSC Example

Consider the Following… Post Doc develops 3 new novel targets in a pathway Pathway not patentable Info kept from IP office Unauthorized signed by Post-doc 4 years later targets and novel therapeutics sent to IP office ALL PATENT RIGHTS LOST

Conclusion Importance of technology transfer Role of Intellectual Property Be aware of public disclosure Call FRD with any questions New Website

Contact Information W. Chip Hood, J.D Ryan Fiorini, Ph.D. MBA ? ? ? ? ? ? Questions