OTM INTRODUCTION AND IP PRIMER Patrick E. Reed, Director, Office of Technology Management

What is OTM? Bayh-Dole Intellectual Property Technology Transfer AGENDA

The Office of Technology Management is under the Vice Chancellor for Academic Affairs Responsible for managing the university’s intellectual property – Help translate university research into products on the market Doubled the size of the office in February 2013! Open Door Policy ABOUT US

BAYH-DOLE ACT Patent and Trademark Law Amendment Act, adopted in 1980 (codified in 35 USC § )

Federal patent policies inconsistent and ineffective No uniform policy among agencies No statutory authority that gave agencies a right to hold patents or license technology Colleges and universities rarely given exclusive control except through lengthy greater rights determinations Result: inventions not commercialized WHY BAYH- DOLE?

Gives nonprofit organizations and small business firms rights to inventions under government grants, contracts, and cooperative agreements Promotes commercialization and public availability Encourages researchers to disclose inventions Encourages small businesses to participate in government supported research and development efforts Government is granted certain nonexclusive and march-in rights WHAT DOES BAYH-DOLE DO?

Prompt reporting of inventions to funding agency Grant the government their license Report on the utilization of the subject invention Make reasonable efforts to work with small business Insure substantial manufacture within the U.S. INSTITUTIONAL OBLIGATIONS UNDER BAYH- DOLE

INTELLECTUAL PROPERTY The DNA of technology transfer

Patents Trademarks Copyrights Trade Secrets TYPES OF INTELLECTUAL PROPERTY

The legal right to exclude others from making, using, selling, offering to sell, or importing, or offering to import, a patented item A patent does not grant an affirmative right. Patent rights are exclusionary. WHAT IS A PATENT

WHAT CAN BE PATENTED? Any new and useful: Process Machine Manufacture Composition of matter Any new and useful improvement of the above

Utility (aka usefulness)- 35 USC § 101 Novelty- 35 USC § 102 Non-obviousness- 35 USC § 103 Disclosure CONDITIONS OF PATENTABILITY

Word, name, symbol, or device that identifies the source of goods or services Protects against likelihood of confusion Rights are based on use or registration State or federal registrations TRADEMARKS

TRADEMARKS MUST BE DEFENDED

COPYRIGHT Protects the expression of an idea, not the idea itself Protects against copying, not against independent development of an identical work Copyright protection occurs automatically once the original work is fixed in a tangible medium Registration of the copyright is NOT required for protection (but it may be required to sue for infringement).

© 2013 Board of Supervisors of Louisiana State University and Agricultural and Mechanical College through its LSU Health Sciences Center New Orleans ALL RIGHTS RESERVED COPYRIGHT NOTICE

LET’S GET THIS OUT OF THE WAY….

LSU, if conceived or first reduced to practice, in whole or in part, during activities that are: (1) carried on by, or under the direction of, LSU personnel, regardless of when or where conception or reduction to practice occurs; or (2) supported by funds under the control of LSU; or (3) conceived, created, designed, developed, or conducted with the use of LSU facilities, equipment, or supplies. Part II, Chapter VII of the Bylaws and Regulations of LSU WHO OWNS INVENTIONS I CREATE?

An invention or discovery that is wholly conceived and wholly first reduced to practice during activities that satisfy each of the following four conditions: The activities occur during the personal, off-duty time of all involved LSU personnel; and The activities are not supported by funds under the control of LSU; and The activities are not performed with the use of LSU facilities, equipment, or supplies; and The activities are unrelated to any current or past field or area of expertise, responsibility, or employment of any involved LSU personnel. WHAT’S NOT AN “LSU INVENTION?”

SO, UNLESS YOU’RE A BIOCHEMIST AND YOU INVENT A MORE EFFICIENT ROCKING CHAIR ON A SATURDAY IN YOUR GARAGE, IT’S LIKELY AN LSU INVENTION

WHO OWNS COPYRIGHTED WORKS I CREATE? LSU, but…. LSU releases its interest in any copyright to a book, article, lecture, thesis, dissertation, other literary work, work of art, Course Material, or musical composition UNLESS: LSU must contractually deliver such work to a third party LSU publishes the work itself No automatic release for Software or Databases

Defined as, “all LSU Supervisors, Officers, Faculty, Staff, Research Associates, Postdoctoral Fellows, Instructors, Graduate Students, and other employees of LSU, whether part- time or full-time.” Includes: Visiting faculty Adjunct faculty Emeritus faculty LSU undergraduate and professional students employed by LSU when those persons act within the course and scope of their employment with LSU “LSU PERSONNEL”

The sooner the better! As soon as you recognize that you have something that might be useful to others and could be turned into a commercial product or service, you should contact the Office of Technology Management. It’s important to do so before you publicly disclose the invention. WHEN SHOULD I TELL YOU ABOUT MY IDEA?

Written publications: manuscript, book chapter, journal article, proceedings, thesis, white paper Oral presentations Prototypes and samples Sale or public use Meetings and other communications such as or postings on websites WHAT IS A PUBLIC DISCLOSURE?

The more detailed the better! Inventor details Description of the technology History of your development of the technology Sponsorship NOTE: A Technology Disclosure Form does not protect the invention; it is simply a record of your invention. DISCLOSURE FORM

TECHNOLOGY TRANSFER From the bench to the bedside…

HOW IS TECHNOLOGY TRANSFERRED? Research- publications, reports, presentations, dissertations, etc. Students Continuing education and professional development Consulting, service on government panels Licensing

WHAT IS THE TECHNOLOGY REVIEW PROCESS? Review for public disclosure Review sponsorship Perform prior art search Perform market assessment Determine best route to commercialization License

Ensure public benefit from LSU Health Sciences Center research Provide inventor satisfaction and motivation Meet LSU Health Sciences Center’s obligations to sponsors and compliance with Intellectual Property Policy Generate revenue to support research and research infrastructure LICENSING: WHY DO WE DO IT?

Grant of rights to a company allowing them to make, use, and sell the licensed technology – Exclusive vs. nonexclusive – Startup vs. BigCo – Diligence provisions: Performance milestones and financial requirements to insure licensee does not shelve the technology LICENSING

Most licenses will include: Upfront license fee Industry standard royalty rates Minimum annual royalty Sublicense fees Milestone payments A percentage of equity Reimbursement of patent expenses WHAT ARE THE FINANCIAL TERMS?

40% to the inventors – Personal income, not research dollars 15% to the inventors’ departments 10% to the Office of the President 35% to the Chancellor’s Office – To be funneled back into the research enterprise ROYALTY DISTRIBUTION

QUESTIONS? Patrick E. Reed, Director Office of Technology Management 433 Bolivar St., Suite