Talking Technology Transfer Christopher D. McKinney Director Office of Technology Transfer and Enterprise Development Lecturer Department of Electrical Engineering and Computer Science September, 2003 It’s all here… Technology transfer Spin-offs and start-ups Business incubation Pre-seed and seed funding

Bringing the three functions together multiplies the opportunities for Vanderbilt Technology TransferEnterprise Development Business Incubation

OTTED serves Vanderbilt in many ways Technology services  Identification  Protection  Marketing  Licensing  Management Technology services  Identification  Protection  Marketing  Licensing  Management Enterprise development Enterprise development Bio-business incubation Bio-business incubation Education and in-reach Education and in-reach Compliance (federal, non-federal) Compliance (federal, non-federal) Materials transfer agreements Materials transfer agreements Clinical trials agreement services Clinical trials agreement services Sponsored R&D agreement services Sponsored R&D agreement services

Relationships matter… Association of University Technology Managers Licensing Executives Society Tennessee Technology Transfer Leadership Forum

Principal Forms of IP Patent Patent Copyright Copyright Trademark/Service Mark Trademark/Service Mark Trade Secret Trade Secret

Why IP? IP is a form of property which is intangible yet often quite valuable IP is a form of property which is intangible yet often quite valuable The “value capture” comes through leveraging IP in partnerships, joint ventures, research collaborations, licenses, and the like The “value capture” comes through leveraging IP in partnerships, joint ventures, research collaborations, licenses, and the like

Trusopt ® Trusopt® (dorzolamide hydrochloride ophthalmic solution) is the first carbonic anhydrase inhibitor formulated for topical ophthalmic use. Trusopt® ophthalmic solution 2% is available in 5ml, 10ml and 3x5ml bottles. For more information, contact Merck & Co., Inc., P.O. Box 4, West Point, PA Telephone (800)

(Utility) Patent What? - process - machine - product - composition of matter (includes software) What? - process - machine - product - composition of matter (includes software) Patentability - novel - useful - non-obvious Patentability - novel - useful - non-obvious Exclusive right – not an affirmative one! Exclusive right – not an affirmative one! Term - 20 years from filing Challenges – must file within one year of public use, offer for sale, sale, or publication; enters public domain after expiration of patent Variations - plant patent (asexual reproduction) - design patent (ornamental - 14 years)

READ 180 ®

Copyright Original works of expression fixed in a tangible form, including literary, musical, pictorial, graphic, sculptural, and audiovisual works (includes software) Original works of expression fixed in a tangible form, including literary, musical, pictorial, graphic, sculptural, and audiovisual works (includes software) Right to reproduce, make derivative works, publicly distribute, perform, and display work Right to reproduce, make derivative works, publicly distribute, perform, and display work Registration – not necessary but useful Term – life of author + 70 years or if “work for hire,” shorter of 95 years from publication or 100 years from creation But… only protects expression, not ideas; does not limit independent creation Variation - mask works

Sentricon ®

Trademark/Service Mark Any mark (e.g., word, group of words, logo) that identifies the source of goods or services from those of another when used in commerce Any mark (e.g., word, group of words, logo) that identifies the source of goods or services from those of another when used in commerce Owner can prevent others from using confusingly similar marks Owner can prevent others from using confusingly similar marks Common law rights – federal and state registrations available If registered on a federal basis, term can be extended forever “Use it or lose it” Avoid your mark becoming generic!

Gatorade ®

Trade Secret Data, formulas, patterns, compilations, programs, devices, methods, lists of actual or potential customers/suppliers that derive economic value from not being generally known or readily ascertainable Data, formulas, patterns, compilations, programs, devices, methods, lists of actual or potential customers/suppliers that derive economic value from not being generally known or readily ascertainable Enforcement based on proper safeguarding Cannot be used to protect matter that can be readily observed or reverse engineered Can be a valuable form of protection if relationships are managed effectively

REACT 350 ®

High Points Patent  inventions Patent  inventions Copyright  expressions Copyright  expressions Trademark/service mark  good will Trademark/service mark  good will Trade secret  secrets Trade secret  secrets

Bio-business in the Gulch Cumberland Emerging Technologies (CET) INCUBATION IS A GROWING ACTIVITY

Vanderbilt University is a driver of the Cool Springs Life Sciences Center

Contact information Christopher D. McKinney Office of Technology Transfer and Enterprise Development Vanderbilt University th Avenue South, Suite 105 Nashville, Tennessee / (phone) 615/ (fax)