Tech Transfer at the University of Florida Presented by Bruce Clary Assistant Director University of Florida Office of Technology Licensing

Priorities  Faculty service  Income generation  Economic development

Duties  Evaluating new technologies  Determining patentability  Registering copyrights  Locating potential licensees  Prosecuting patents  Negotiating license agreements  Educating inventors about the process  Assisting with faculty start-ups

How Does It Work at UF? Idea Invention Disclosure Form Written Disclosure Oral Disclosure Exert Waive OTL Explores Patentability & Marketability OTL Seeks Licensee & Makes Patent Decisions (120 Days)

UF Technology Disclosure  What needs to be disclosed? All Technologies. UF interest:  In the field of expertise or  With use of university resources  Invention Disclosure Form (  When do consulting activities / outside interests need to be disclosed? Better early than late.  Protection of technology  Initiate the process / get a ruling early

UF Disclosure Review  Disclosures are reviewed monthly in Office of Technology Licensing based on:  interested potential licensee(s)  US and foreign patent opportunities  potential market size, penetration, returns to UF  administrative complications  enforceability  Office of Technology Licensing options  Accept UF’s right to the technology  Waive UF’s right to sponsoring agency or inventor  Incomplete disclosure requiring further input

Public Disclosure  Public disclosure can include:  Publications in open literature  Poster Sessions & Abstracts  Presentations to open forum  Can be personal communications without some confidentiality agreement  Catalogues and libraries  Primary discriminations are:  Good faith attempt to maintain secrecy  Substantiality of material disclosed

Typical Distribution of Net Income From Inventions Net Adjusted Income up to $500,000 Net Adjusted Income over $500,000 40% Individual Creator(s) 10% Program(s) 7.5% Creator(s) Departments 7.5% Creator(s) Colleges 35% RGP or UFRF 25% Individual Creator(s) 10% Program(s) 10% Creator(s) Departments 10% Creator(s) Colleges 45% RGP or UFRF

Common Problems For Researchers to Avoid  Publicizing your discovery in any way prior to protecting it  Not keeping accurate laboratory notebooks  Never transfer or receive materials from an outside entity without the protection of a Material Transfer Agreement  Never discuss the enabling aspects of your research without the protection of a Confidential Disclosure Agreement ( Both MTAs and CDAs require signature from OTL or DSR)

Researcher Motivation  The Bayh-Dole Act of 1980  Allowed Universities to take ownership of Intellectual Property from Federally funded research.  Obligates the university to proactively protect and market the technology or return it to the Federal funding agency.  Researcher Motivation to Seek IP Protection  UF employees are legally bound  Attract industrial sponsorship  See the fruits of your research commercialized  Hit the Royalties Jackpot – less than 1% chance

Types of Intellectual Property  Patents  Copyrights  Trade secrets  Trademarks

What is a Patent?  A patent is a vehicle that details the invention one ‘owns’ and allows one to exclude others from making, using, or selling.  A patent must:  Be enabling (teach)  Show the best mode for one to practice the invention  A patent contains a title, abstract, narrative, etc. and CLAIMS

Patentability is Dependent on: Patentability is Dependent on:  Statutory Class  Machines  Articles of manufacture  Composition of matter  Processes  Improvements on the above  Newness - (1) Novelty (2) Non-Obvious  Usefulness - not easily defined, don’t have to supply prototype, just good faith justification in confidence of results

US vs. Foreign Patents  First to file (foreign) vs. first to invent (US)  Foreign patent time frame:  File within one year of US patent application  No previous disclosure allowed  Reasons to file foreign  Global economy  Company interest in locking out competitors in foreign countries

Who is an Inventor  First person(s) who conceives and reduces the invention to practice  Inventorship dependent on idea generators (originality)  Co-inventors can work independently, but stream of ideas must lead to invention  Technology Disclosure should list inventors, review by patent counsel

Patent Categories TypeApplies To:Life Utilityprocess20 years machinesfrom application compositions of matter DesignOrnamental14 years from issue Design PlantAsexually17 years from issue Producible Plants

Provisional Patent Application  Primarily of use to entrepreneurs, small companies, and universities in a time bind  Allows 1 year protection before patent application  Sets Priority Date without counting against 20 year patent term  Less expensive (maybe), but delays examination by US Patent & Trademark Office

Copyrights  Protects expression of an idea  Must show originality (not trivial) & fixation in a tangible form  Unlike patents, no requirement for exclusion of prior art  Simple filing by UF Office of Technology Licensing to Library of Congress  Term - life of author + 70 years

What is a Trade Secret?  May consist of any formula, pattern, device, or compilation of information which is used in one’s business, and which gives him/her an opportunity to obtain an advantage over competitors who do not know or use it  May be a formula for a chemical compound, a process for manufacturing, treating or preserving material, a pattern for a machine or other device, or a list of customers  TERM: as long as the trade secret is maintained in secrecy

What is a Trademark?  Includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods  In short: a trademark is a brand name

Trademarks / Servicemarks  Covers use of a name to describe a product or service - Gatorade ®  Term - for life while in use  Filing Requirements - USPTO does a search for name and use

What are the benefits of Trademarking?  Constructive notice nationwide of trademark owner’s claim  Evidence of ownership of the trademark  Jurisdiction of federal courts may be invoked  Registration can be used for obtaining registration in foreign countries  Can be filed with U.S. Customs Service to prevent importation of infringing foreign goods

Related Websites  (tech. transfer info.)  (patent info. & search)  (copyright info.)  ht.pdf (questions about UF copyrights) ht.pdf

“Any technology sufficiently advanced is indistinguishable from magic.” Arthur C. Clarke