ORIC Training Program NUST

Presenters Ms. Eram ZaidiIP Manager, NUST

Publish or Perish Mindset Select Research Topic Study Existing Literature Develop your Idea Conduct Research Work in lab (if necessary) Write Paper Submit to a Journal Review Process Paper Approved for Publication COMMERCILIZATION ? RESEARCH PHASE PUBLICATION PHASE IDEA PHASE

Publish and Patent Mindset Select Research Topic Study Prior Art Develop your Idea Conduct Research Work in lab (if necessary) Write Paper Submit to a Journal Review Process Paper Published RESEARCH PHASE IDEA PHASE PUBLICATION AND IP PROTECTION PHASE Study Existing Literature Draft Patent File Patent Patent Granted Technology Transfer Invention Disclosure Business Plan

Firms $ 65.2 B $29 B $6.3 B $2 B $99.8 B GB 5.3 B $10.7 B $26 B 1.9 B Euros

Faculty/Student Inventors John Hennesy MIPS Sergey Brin and Larry Page Google John Livil Transistors William E. Spicer Semiconductors Thomas J Fogarty M.D. Minimally invasive surgery, Invention and Innovation, Robotic Surgery

Put idea in practice Broad Adoption by Society Learn from Prior Art Garden of Forking Paths Problem Discovery Aha Moment! Develop the Innovative Idea

Novel Non-Obvious Utility

Two Different Belief Systems Innovation is a by-product of a proper environment, therefore, influence and control the environment: – Examples: Sun, Google, Yahoo, Microsoft, Cisco I’ve a vision, I’ve the Money, and I am in Control here – Examples: Walt Disney, Sony, NTT Docomo, Apple, Pixar, Facebook

Types of Intellectual Property Trade Secrets Copyrights Trademarks Patents

Trade Secrets Not known to public Provide economic benefit to its holder Reasonable effort being made to maintain its secrecy “ Merchandise 7X ” Formula Kentucky Fried Chicken Recipe

Copyrights Original works of authorship Exclusive rights to publish, distribute, and adapt Rights are licensable and transferable Durations: Years after creator’s death Fair Use Doctrine: – Purpose/intent of use; nature of work; portion of the original work used; and potential effect on market value of the original

Trademarks A Distinct sign: – A name, word, phrase, logo, symbol, design, image, or a combination of these elements. Used by an entity, e.g., a Business or organization Identifies either a product or a service Process for obtaining a trademark: – Interstate Commerce – Use in Commerce – Difference between  and 

Patents Patents encourage innovation Bargain: Monopoly with duration vs. public good Property rights to the inventor Patent Types (Provisional vs. Non-Provisional): – Utility Patent: product, machine, a process, or even composition of matter, 20 years from date of filing – Design Patent: only appearance, only 1 claim, 14 years – Plant Patent: only one claim, 20 years Writing a Patent: – Abstract, Diagrams, References, (Patents and other References), Description (Background, Summary, Brief Description of Diagrams, Detailed Description of Preferred Embodiments, Claims NOVELNON-OBVIOUSUTILITY

Class Assignment

The “Bayh-Dole Act” In order to motivate inventors and universities, in 1980 the US Government passed The Bayh-Dole Act. This act enabled Universities to own inventions made with government funds It also required that Universities share royalties with inventors Universities were encouraged to collaborate with industry – Preference in licensing to small business Exclusive licensing was allowed – Preference for U.S. industry

Results of the Bayh-Dole Numbers of University Technology Transfer offices increased Numbers of patents increased Level of licensing increased Universities were forced to develop new policies, one of which was “Revenue” sharing with inventors

Technology Transfer Technology Transfer is the process of facilitating the relationship between academia and industry, allowing ideas to flow or be transferred both ways and resulting in the development of technologies. Technology Transfer is the process of taking an invention from laboratory to industry

The Core Technology Transfer Documents Invention Disclosure Form Inventor Assignment Form Confidentiality Agreements Term Sheet Inter-Institutional Agreements (Term Sheet) License Agreements Option Agreements Patents – Provisional applications – PCT applications – National applications – Issued patents

Structure of A License Agreement Introduction Definition Grant Royalties Representations and Warranties Term and Termination Assignment and Transfer Miscellaneous Terms Signatures

Commercial Spin offs Company needs to register with the SECP Type of Companies: Single Member Company Private Company Public Company Holding Company Association (Section 42 Non-Profit)

Thank You Contacts:

Technology Transfer Process The first step in this process is to complete an invention disclosure form other steps include: Screening Assessment Marketing Licensing and Compliance

View of University Technology Transfer Researcher/ Inventor IPO Non-disclosure agreement Disclosure of Invention IP Filing IP management EDC Become an entrepreneur Develop skills for entrepreneurship Learn how to write Business plans Transfer of Technology Start up Company Start an Incubatee company at TIC Technology Licensing Pre-Marketing Technology Assessment Industrial Collaboration Final Product In the Market Market Commercialization Funding Opportunities