Management of Intellectual Property at Iowa State University Contributing to Economic Development Kenneth Kirkland, Ph.D. Executive Director, Iowa State University Research Foundation, Inc. Director, Office of Intellectual Property and Technology Transfer

Iowa State University Who we are & what we do 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 ISURF non-profit (1938) protects, owns, and manages assets

Iowa State University Iowa State University Office of Intellectual Property and Technology Transfer and Iowa State University Research Foundation, Inc.

Iowa State University 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

Iowa State University 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.

Iowa State University 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

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

Iowa State University 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

Iowa State University 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 and individual’s right to benefit from identity

Iowa State University 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

Iowa State University 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

Iowa State University 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 $13,000 Term of patent is now up to 20 years from filing

Iowa State University 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

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

Iowa State University Patenting decision Has it been publicly disclosed? What other protection is available? Tangible research property Copyright Trademark Would infringement be difficult to detect?

Iowa State University 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, and sell and why? What are the industry’s biases to in-licensing?

Iowa State University Marketing steps Create marketing content Create list of potential licensees Contact potential licensees Follow-up

Iowa State University 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

Iowa State University Parameters of a license Royalties License issue royalty Annual minimum royalty Earned royalty Equity Development milestones Reimbursement of patent costs Diligence provisions

Iowa State University How to access our technologies Licensing associates: Todd Headley, Life Sciences - Biotechnology Cheryl Kamman, Material Sciences - Chemistry Eddie Boylston, Physical Sciences - Engineering Julie Gustafson, Germplasm Web search at:

Iowa State University How ISURF and OIPTT Contribute to Economic Development Direct Contributions 481 technologies licensed in last 10 years Sales of products from these licenses $363M, of which $88M in Iowa 44 start-up companies formed since 1995, of which 32 based in Iowa 24 of these companies still active; 15 in Iowa 800 license agreements for plant germplasm Iowa growers planted 167, 000 bushels of specialty soybeans under license in last 10 years Venture Fund of $200K per year for technology enhancement

Iowa State University How ISURF and OIPTT Contribute to Economic Development Indirect Contributions $3.7M of licensing income returned to ISU in last 10 years $3M donated to the Office of the Vice Provost for Research since 1995