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Intellectual Property @Purdue
ARP, New Faculty Orientation August 22, 2008 Simran Trana Director Office of Technology Commercialization
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How does Purdue manage Intellectual Property?
Guiding Policies Policy VIII.4.1 Intellectual Property Memorandum B-53 Use of Copyrighted Materials for Educational and Research Purposes University Copyright Office - Donna Ferrullo
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Intellectual Property Policy VIII.4.1
PATENTS Inventions - IP protectable under US patent law University owns all rights to all Inventions made in the course of employment by the University, or through the use of University Resources. Trademark/Servicemark University owns all rights related to: an item of Intellectual Property; or a program of education, service, public relations, research or training program of the University. PLANT DESIGN UTILITY
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Intellectual Property Policy VIII.4.1
Tangible Research Property - perceptible items produced in the course of research University owns all rights in Tangible Research Property related to: an individual’s employment responsibilities; and/or developed with support from University Resources
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Intellectual Property Policy VIII.4.1
Copyrightable Work - original work of authorship, which has been fixed in any tangible medium of expression All rights in Copyrightable Works remain with the creator unless: created pursuant to the terms of a University agreement with an external party; created as a specific, written requirement of employment or as an assigned University duty; specifically commissioned by the University; the creator of the Copyrightable Work made more than incidental use of University Resources; the Copyrightable Work is also patentable and/or is associated with a University Trademark .
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Why is it important? Helps transform nascent scientific discoveries to products and services available for the public good Creates jobs Provides additional revenue to the inventor and university through patent licensing fees.
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Who is responsible for managing IP at Purdue?
Sponsored Program Services Research Office of Technology Commercialization Patents, copyrights, trademarks, TRP Conflict of Interest - OVPR Consulting, start-ups
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Conflict of Interest Outside Activities Up to 1 day a week
Outside Activities Up to 1 day a week Faculty and staff members must obtain prior approval of the President of the University, on President's Form 32a Recommended by Department Head and Dean Shall not enter into Intellectual Property agreements related to outside employment, unless approved by the President of the University. OVPR- Conflict of Interest Manager -Dr. Peter Dunn
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OTC Mission The mission of the Office of Technology Commercialization (OTC) is to serve Purdue University through the commercialization of its intellectual property
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Goals Public Utilization Economic Development Revenue
Faculty Retention Engagement with Industry
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What do we do? Advise faculty on IP issues
Foster inventor participation in the technology transfer process Educate campus researchers about the technology transfer process through a variety of means including seminars with guest speakers Solicit and analyze invention disclosures from faculty, students, and staff Analyze commercialization feasibility of university intellectual property and subsequent strategies License "tangible research property" for commercial use License patents and copyrights for commercial use Facilitate faculty and technology start-ups
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Steps involved www.otc.purdue.edu Not Viable Invention Disclosure
Patents Copyright Trademarks Trade secrets Invention Disclosure Invention Assessment IP and Commercialization Plan Management & Funding Start-up Faculty initiated Legal Issues Sponsor related directives Novelty – disc. Market potential Stage of development License to Existing Company
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Typical license terms Start Up Other Terms License to existing company
Non-faculty/Faculty Business Plan Equity Faculty Conflict of Interest License to existing company Commercialization Plan Up-front fee Other Terms Milestone Payments Earned Royalty Minimum Payments Patent Cost reimbursement Caveat emptor
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Revenue Participation
Under B-10… License 1/3 Trask/PRF 1/3 Inventors % Inventor 1 1/3 Department % Inventor 2 % Inventor 3 1/3 Center/Inst. 2/3 Department
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# of Disclosures/Patents
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Big Ten Standings 2005 Number US Dollars
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Licenses/Revenue
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Start-Ups
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PU/PRF Resources OTC Simran Trana 4-6725 strana@prf.org
Agriculture and Food Science @prf.org Eric Lynch Mechanical/Industrial Engineering Matt McFarland Life Sciences/Pharmacy Hilton Turner Electrical/Computer Engineering Shane Fimbel Life Sciences/Molecular Biology Karen White Software/Chemistry Business Development Julie Goonewardene
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