1. The Catholic University of America Office of Technology Transfer Discovery, Patenting and Commercialization of CUA- Developed Technologies January 9, 2003

2. The Catholic University of America Office of Technology Transfer Agenda 10:00 Welcome and Introductions 10:05University Policies 10:25CUA Tech Transfer Policies 10:35Documenting the Invention 11:00U.S. Patent and Trademark Office 11:25Marketing of Technologies 11:40Question and Answer Session 11:55Wrap-up and Adjourn

3. The Catholic University of America Office of Technology Transfer Speakers Ralph Albano –Director, Office of Technology Transfer Kathryn Bender –Associate General Counsel Steven Prewitt –Patent Attorney, Jagtiani + Guttag –Karlena Schwing, patent agent at J+G, CUA Mech.Eng & Law Anita Gross –Administrative Appeals Judge, U.S. Patent and Trademark Office

4. The Catholic University of America Office of Technology Transfer Mission and Goals of Office of Technology Transfer The Office of Technology Transfer (OTT) at the Catholic University of America assists the CUA faculty, staff and students with the management and commercialization of their intellectual property. Protect the university Serve the faculty and staff Facilitate research Improve the human condition

5. The Catholic University of America Office of Technology Transfer OTT Operational Objectives Increase the number of invention disclosures submitted by university community, adding to the university’s intellectual property portfolio Continue to manage the relationships with companies that have licensed university technologies Find commercial partners and initiate license revenues for new technologies

6. The Catholic University of America Office of Technology Transfer Technology Transfer – Value to the University Revenue stream from licensing Increased research funding and collaborations Increased visibility of university and researchers Stimulating research and an entrepreneurial environment among faculty

7. The Catholic University of America Office of Technology Transfer Technology Transfer Procedures at CUA

8. The Catholic University of America Office of Technology Transfer Invention Disclosure and OTT Procedures Inventor submits Invention Disclosure Form OTT works with OSP to ensure proper sponsor reporting OTT meets with inventors and makes initial patentability decision Inventor assigns rights to university OTT files Provisional Patent application OTT meets with inventors to begin marketing effort…..

9. The Catholic University of America Office of Technology Transfer Invention Disclosure and OTT Procedures (cont.) OTT produces “Commercialization Plan” Approximately six months after filing the provisional patent, OTT convenes Patent Committee to report on the progress of the marketing effort, and to evaluate assignment and patenting options. –Releases invention back to inventor, or… –Accept assignment, and file full patent application

10. The Catholic University of America Office of Technology Transfer Technology Evaluation Criteria Corporate involvement (sponsored research) Likelihood that patent claims will issue Encumbrances (number of assignees) Time-to-market

11. The Catholic University of America Office of Technology Transfer Marketing of Technologies

12. The Catholic University of America Office of Technology Transfer Realistic Expectations Statistics form “leading” university tech transfer program –400 technologies disclosed –120 technologies get market evaluations –40 technologies licensed, of those –20 technologies net positive royalties –1 technology brings in over $1 million in revenue

13. The Catholic University of America Office of Technology Transfer Marketing Starts with the Inventor Importance of peer-reviewed publications –Publishing vs. Patenting Inventors make the best technical sales people –Research sponsors –Contacts in the field (former students?) –Spin-off or start-up?

14. The Catholic University of America Office of Technology Transfer Marketing of University Technologies Methods to make industry aware of technology will also increase visibility with potential funders of additional research –White papers –Glossy brochures –Targeted mailings –Trade magazine articles –Industry and technical conferences/trades shows –Industry contacts –Open House/Industry Days

15. The Catholic University of America Office of Technology Transfer Questions and Answers

16. The Catholic University of America Office of Technology Transfer Further Information Ralph Albano Director, Office of Technology Transfer x6444 Currently in 114 McMahon, moving soon to 3 rd Floor Caldwell Our web site is http://ott.cua.edu and we will soon have today’s charts and all necessary forms available online. We already have a a great deal of general information available.