Iowa State University Technology Protection and Licensing

Who We Are & What We Do ISURF non-profit (1938) protects, owns and manages assets Iowa State University Vice Provost for Research Iowa State University Research Foundation, Inc. Board of Directors ISU’s OIPTT (1990) technology review, marketing, licensing, services

Laws and Guiding Principles Federal laws, regulations and guidelines – Federal research funding requires significant reporting, use for public good, preference for licensing to small businesses when appropriate, and sharing income with inventors – Federal guidelines on research tools state that the technology must be accessible – Tax laws: ISU and ISURF must remain non- profit – Antitrust, export control, contract, and intellectual property laws also apply

Laws and Guiding Principles ISU’s Mission Statement: – ISU fosters the discovery and dissemination of new knowledge…to address problems and issues of concern to the State of Iowa in particular, as well as to the national and global community…conducted in an environment of open scientific inquiry and academic freedom.

Laws and Guiding Principles Applying ISU’s mission to technology transfer – Facilitate the commercialization of research for the public good – Promote economic growth – Protect the right and freedom to future research, publication, and public utilization – Protect students’ right to graduate Policies: patent, germplasm, educational materials, conflict of interest & royalty sharing

Conflicting Values - Common Interest University Values – Knowledge for knowledge’s sake – Academic freedom/open discourse – Teaching, research, service, economic development – Non-profit laws Industry Values – Management of knowledge for profit – Confidentiality/limited public disclosure – Profits, product R&D Common Interest – Commercialization of new and useful technologies

What Is Intellectual Property? Creations of the mind protected by a field of law conveying property rights The laws include – Patent – Copyright – Trademark – Trade secret – Right of publicity

What Is Protected? Patents protect novel & useful inventive matter (utility patent) Copyrights protect expression of authorship Trademarks-Service Marks protect identifying symbols, words, or designs of goods or services Trade Secrets protect confidential business information, including proprietary materials Rights of Publicity protect an individual's right to benefit from identity

What Is a Patent? A grant by the U.S. federal government to new and useful machines, processes/methods, articles of manufacture, compositions of matter, or improvements thereof to exclude others from – Making – Using – Selling (or offering to sell) – Importing

Requirements of a Patent Three key elements – Novel (a new idea) – Non-obvious to someone skilled in the art – Useful (but not necessarily commercially useful) Enablement: it must teach one skilled in the art how to reproduce it Formal review process and grant by the U.S. Patent and Trademark Office (PTO) Each country must formally grant patents

The Patent Process Preparation of patent application – Patent attorney and inventor(s) prepare PTO reviews and corresponds to applicant - we answer PTO sends a notice of allowance or final rejection Average time to issue is 36 months; average cost for U.S patent is $16,000 Term of patent is now up to 20 years from filing

Benefits and Limitations of Patents Benefits – Monopoly: no one can practice claims without a license – U.S. rule is first to invent, not first to file Limitations – Public use, sale, or publication more than 1 year prior to filing bars filing; if less than 1 year prior to filing, U.S. filing permitted, but lose most foreign rights – Formal process takes 2-4 years – Granted by each country – Expensive

What Is Copyright? Laws that convey ownership in the EXPRESSION of an original work of authorship: writings, software, multimedia, photos, drawings, music No formalities are required to obtain copyright protection; once a work of authorship is fixed in a tangible form, it is protected

Rights Under Copyright The owner has the right to and authorize others to – Reproduce – Distribute – Create derivatives (modify) – Perform certain types of work – Display certain types of work

Benefits and Limitations Copyrights Benefits – No formal process to protect – Term of protection: author’s life + 70 yrs. – U.S. protection has international extension Limitations – Only expression is protected, not the ideas, concepts, facts – Others may create same work if independent – Several exceptions to author’s rights

From Creation to License Disclosure - formal written description of the creation Review and evaluation Patenting decision Marketing strategy Licensing strategy The license Maintaining the relationship

Review and Evaluation Rights to invention – Funding and other agreements – Collaboration internal & external – Proprietary material, techniques, information used – Public disclosures Patentability Commercial potential

Patenting Decision Has it been publicly disclosed? What other protection is available? – Tangible research property – Copyright – Trademark Would infringement be difficult to detect?

Marketing Strategy When do we start? – Waiting for publication – Waiting for data What is being made, used or sold? What is the state of the art? What other patents are needed to commercialize? Who would use, make, & sell & why? What are the industry’s biases to in- licensing?

Marketing Steps Create marketing content Create list of potential licensees Contact potential licensees Follow-up

Licensing Strategy What kind of company do we license (start-up, small or large company)? What expertise would the licensee need? Exclusive vs. non-exclusive Field of use Geographic areas

Parameters of a License Royalties – License issue royalty – Annual minimum royalty – Earned royalty – Equity Development milestones Reimbursement of patent costs Diligence provisions

Licensing - Economic Development Success 544 technologies licensed -10 years 44 start-up companies since 1995 (56% are still active) 40 Iowa-based start ups (50% are still active) 857 license agreements for plant germplasm (Iowa growers planted 184,000 bushels of specialty soybeans in last 10 years) ISURF venture fund of $200K for technology enhancement

Accessing ISU Technologies Funding faculty research activity – Biotech website: research and biotechnology link at – Point of Contact: Research publications often describe existing IP Technologies available for licensing and sign- up: Agreements used in accessing IP: confidentiality, material transfer, testing (prototype, software), option, and license

How to Access Technologies for Licensing Marketing and licensing staff – Mary Kleis, Technology Licensing Manager – Todd Headley, Life Sciences - Biotechnology – Material Sciences - Chemistry – Eddie Boylston, Physical Sciences - Engineering – Julie Minot, Germplasm Web search at:

License Process (Preferred) Meeting with researchers in lab Meeting with OIPTT & ISURF to review interests of parties & process used to arrive at a license Discuss various options including valuation of the technology Prepare draft agreement Resolve any remaining conflict language Sign agreement Periodic visits to discuss development

Examples of Assistance Provided to Our Licensees Work with companies to understand how our technologies fit into their business Assisted licensee with assessment of a possible joint venture with an overseas corporation Re-negotiate payment schedule and other terms of the agreement due to unexpected business circumstances Offer an equity deal to start-ups to reduce their up-front costs

Assisting Our Licensees (continued) Assisted in licensees sublicensing activity by reviewing the sublicense document Worked with development of a plan to manage large volume of sublicensees through a third party manager Refer licensees to internal and external resources for assistance Assist licensees in resolving enforcement issues Provide a $5,000 grant to start-ups to work with patent attorney Submit or assist in submitting applications for R&D 100 Awards

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