INTELLECTUAL PROPERTY 101 CHASE KASPER, DIRECTOR OFFICE OF TECHNOLOGY DEVELOPMENT

IP: A VERY BRIEF HISTORY Trademarks have been traced back as far as the Roman Empire. Modern day patent system began in Europe in the 15 th Century In the United States, the Patent Act of 1790 was the first federal patent statute. The Copyright Act was established in the same year. The Patent Office (later the “USPTO”) was established in In 1946, the Lanham Act defined trademark protection and registration. Modern Patent Law is established in Copyright Act of 1976 established a single federal system. In 1980, the Bayh-Dole Act is established. In 2011, the Leahy-Smith America Invents Act (AIA) is enacted.

BAYH-DOLE ACT (37 C.F.R. 401) Established in 1980, this act permits universities, small businesses or not-for- profit institutions to elect title of an in invention that is created under federal research funding and grants. Transition results of research out for “public benefit” Gives U.S. universities control of the intellectual property rights related to inventions resulting from federal-government funded research.

BAYH-DOLE ACT (37 C.F.R. 401) Universities began to add “technology transfer offices” (TTOs) which were spun out of Sponsored Programs offices Synonymously known as: -Technology Transfer Office (TTOs) -Technology Licensing Office (TLOs) -Office of Technology Commercialization (OTCs) -Office of Technology Development (OTDs) -Office of Intellectual Property (OIPs)

BASIC RESEARCH

INVENTIONS AND DISCOVERIES

TECHNOLOGY-RELATED ACTIVITY (FY2012) $63.7B total sponsored research expenditures 23,741 Invention disclosures received 22,150 U.S. patent applications filed $345M in external legal fees paid 5,130 licenses executed ($2.6B in royalty income) 705 companies formed (554 in their “home” state) 591 new commercial products created Source: FY2012 AUTM U.S. Licensing Survey

NATIONAL RATIOS 1 Invention disclosure per $2.8M in R&D expenditures <1 patent application per invention disclosure 1 in every 4.6 disclosures is licensed

UNIVERSITY TECHNOLOGY TRANSFER Technology Transfer Research Disclosure Review / Evaluation ProtectionMarketingLicensing Development / Revenue

SOURCES OF LEADS FOR LICENSES SOURCE% Inventor56% Marketing by TTO19% Company called Univ.10% Research sponsor requested license7% Unknown7% Source: Jansen & Dillion, “Where Do the Leads Come From? Source data from 6 institutions” Journal of AUTM, 11, 1999

QUESTIONS / ISSUES Is this product/invention patentable or protectable? Is there a market for this invention? Can we find a business interested in licensing, developing and commercializing this technology? Can we start a new company around the technology? Are there available dollars to help further develop the inventive technology?

WHY IP MATTERS Intellectual property is an asset! - It can be monetized…and it can be stolen… Can create a competitive advantage for a company or an industry Fosters innovation and generates additional research and development Contributes to the ongoing economic development and welfare of our state, our country, and our world

CONSIDERATIONS FOR COMMERCIALIZATION POTENTIAL Describe Product/Technology -Attributes/Features/Qualities -Benefits to end user/Uniqueness Stage of Development -Feasibility Analysis/Prototype/Test/Production Intellectual Property Position -Source of Technology -Third Party Substantiation/Credibility Who are your competitors? What is their respective market share? What is your competitive advantage? Patent protection? Other barriers to entry? How will you maintain this advantage?

INDUSTRY / INVESTOR VIEWS “In any deal, no technology was the same at the end as it was in the beginning.” “If you can’t protect it, you’ve got a problem.” “Best way to kill opportunity is for PI to say: ‘I don’t need to disclose to the university.’” “Scientific breakthrough ≠ Commercial opportunity” “Triaging and protecting technologies are the biggest challenge.”