Intellectual Property: Kenneth Kirkland, Ph.D. Executive Director, Iowa State University Research Foundation (ISURF) Director, Office of Intellectual Property and Technology Transfer (OIPTT) Nita Lovejoy Associate Director, ISURF and OIPTT Why you should care and how it’s managed at ISU

Incentives: –Necessary for companies to invest in technical and market development to get a product to market –Recognition for inventor/author and university: attract more research dollars –Placement of graduate students in rewarding jobs –Income for company, inventor/author and university –Stewardship of technology and funding source obligations… Benefits of Protecting Intellectual Property

IP protection preserves the rights of the inventors and the university to control the technology: –Prevent inappropriate use of the technology –Ensure use for public good –Ensure continued use for research Benefits of Protecting Intellectual Property

Formation of relationships between company and inventor/author/university: –Research support –Consulting arrangements and other opportunities for collaboration Benefits of Protecting Intellectual Property

Federal Agencies (37 CFR Part 401): –The university is obligated to have written agreements with its faculty and technical staff requiring disclosure and assignment of inventions –The university has an obligation to disclose each new invention to the federal funding agency within two months of receiving the invention disclosure –Decision on whether or not to retain title to the invention must be made within two years of invention disclosure to the agency Funding Requirements and Our Obligations

Federal Agencies (37 CFR Part 401) con’t: –Upon election of title, the university must file a patent application within one year (or earlier if there is a patent bar date) –The university must submit periodic reports to the agency regarding the utilization of the invention as requested by the funding agency –The universities must share with the inventors a portion of the royalties received from licensing their invention Note: Federal agencies have the authority to audit grantees and contractors for compliance with these regulations. Funding Requirements and Our Obligations

Federal Agencies (37 CFR Part 401) con’t : –Copyright obligations under Federally funded projects vary among the Federal agencies. Funding Requirements and Our Obligations

Corporations : –Generally, the company funding the research has an option to acquire a royalty-bearing license to the resulting IP –Under the terms of the funding agreement, periodic progress reports will typically be required –Prompt disclosure of IP to ISURF is necessary to enter into license negotiations with the company in a timely manner and to protect the intellectual property Funding Requirements and Our Obligations

Disclosures Received by ISURF

Commitment to assignment of IP to ISURF is made on the gold sheet Policies identify use of significant resources as triggering University ownership of IP Potential IP is identified by the inventor/ author through a written disclosure to OIPTT. The disclosure form can be downloaded from the web site. ( Procedures for IP Protection

OIPTT/ISURF evaluate the IP disclosure for its inventorship and ownership rights, IP protection and commercial potential. Inventors/authors are included in this process. If the decision is made to file a patent, the inventor is asked by OIPTT/ISURF to provide all pertinent information for review. A patent law firm is then identified to handle the application. Procedures for IP Protection

The inventor is asked to work with the patent law firm to prepare the best patent application possible. A patent application is filed and the inventor is free to make a presentation or publish an article about it. Procedures for IP Protection

The inventor will be asked to assist with responses to office actions from the patent office. Copies of the issued patent are provided to the inventor, Dean and Department Chair or Center Director. Procedures for IP Protection

OIPTT conducts a preliminary market analysis for licensable technology. OIPTT marketing efforts might include targeted mailings and in-depth industry and technology analysis. Procedures for Licensing of Intellectual Property

The inventor plays a key role in assisting the OIPTT Licensing Associate in writing a marketing brief and frequently provides advice on targeting the IP to specific companies. Marketing briefs are also placed on the ISURF/OIPTT web site. Procedures for Licensing of Intellectual Property

Contact between the company and inventor may be arranged, once a confidentiality agreement with the Company has been signed. There are two basic forms of license, exclusive and non-exclusive. The license gives specific rights for the licensee to use our IP. ISU IP license negotiations are carried out by OIPTT. Procedures for Licensing of Intellectual Property

Guidance for License Negotiations: –IP policies –Conflict of interest policy –University Mission Protect right and freedom to future research, publication and public utilization Protect student’s rights to graduate –Contract/Government codes and regulations Procedures for Licensing of Intellectual Property

Technology Transfer Productivity: AUTM Survey compared to ISURF Non-Germplasm $174 B/1.607B Research 84,150/1207 Disclosures 27,918/585 Patent Applications Assessment 15,947/390 Issued Patents 23,044/371 Agreements Commercialization Strategy 2,375/43 Start-Ups $2M/1.3M per disclosure 33%/48% 57%/67% 19%/32% 27%/31% 10%/12% 3%/4% products platforms AUTM Licensing Surveys: FY91-FY99 ISURF: FY92 - FY2001 Copyright 2001, Trustees of University of Pennsylvania