1. Vanderbilt University Office of Technology Transfer and Enterprise Development VUSE - Senior Design Course Chris McKinney chris.mckinney@vanderbilt.edu Bill Eads bill.eads@vanderbilt.edu September 8, 2004 v2.2

2. OTTED brings three functions together and multiplies the opportunities for Vanderbilt Technology TransferEnterprise Development Business Incubation

3. Primary functions: OTTED Technology services  Identification  Protection  Marketing  Licensing  Management Technology services  Identification  Protection  Marketing  Licensing  Management New company start-ups / investment of $$$ New company start-ups / investment of $$$ Bio-business incubation Bio-business incubation Education and in-reach Education and in-reach Materials transfer agreements Materials transfer agreements Compliance (federal, non-federal) Compliance (federal, non-federal) Clinical trials agreement services Clinical trials agreement services Sponsored R&D agreement services Sponsored R&D agreement services

4. Who are Vanderbilt’s partners? Large and mid-size companies Large and mid-size companies Existing small firms Existing small firms Start-up enterprises (both local and beyond our region) Start-up enterprises (both local and beyond our region) Local, state, regional, and national not- for-profits and public sector entities Local, state, regional, and national not- for-profits and public sector entities Universities Universities Investors (venture capitalists, angels) Investors (venture capitalists, angels)

5. Relationships matter… Association of University Technology Managers Licensing Executives Society Tennessee Technology Transfer Leadership Forum

6. Soon: Cool Springs Life Sciences Center

8. Bio-business in the Gulch

9. Sample success stories Read 180 – teaching kids to read Read 180 – teaching kids to read Highway crash cushions – saving lives Highway crash cushions – saving lives WizOrder – physician order entry WizOrder – physician order entry

10. Vanderbilt stats (FY04) Base revenue = $3.8 million Base revenue = $3.8 million New licenses and options = 29 New licenses and options = 29 Total active licenses = 212 Total active licenses = 212 New technology disclosures = 131 New technology disclosures = 131 Total technologies managed = 694 Total technologies managed = 694

11. Principal Forms of IP Patent Patent Copyright Copyright Trademark/Service Mark Trademark/Service Mark Trade Secret Trade Secret

12. Why IP? IP is a form of property which is intangible yet often quite valuable IP is a form of property which is intangible yet often quite valuable The “value capture” comes through leveraging IP in partnerships, joint ventures, research collaborations, licenses, and the like The “value capture” comes through leveraging IP in partnerships, joint ventures, research collaborations, licenses, and the like

13. (Utility) Patent What? - process - machine - product - composition of matter (includes software) What? - process - machine - product - composition of matter (includes software) Patentability - novel - useful - non-obvious Patentability - novel - useful - non-obvious Exclusive right – not an affirmative one! Exclusive right – not an affirmative one! Term - 20 years from filing Challenges – must file within one year of public use, offer for sale, sale, or publication; enters public domain after expiration of patent Variations - plant patent (asexual reproduction) - design patent (ornamental - 14 years)

14. Copyright Original works of expression fixed in a tangible form, including literary, musical, pictorial, graphic, sculptural, and audiovisual works (includes software) Original works of expression fixed in a tangible form, including literary, musical, pictorial, graphic, sculptural, and audiovisual works (includes software) Right to reproduce, make derivative works, publicly distribute, perform, and display work Right to reproduce, make derivative works, publicly distribute, perform, and display work Registration – not necessary but useful Term – life of author + 70 years or if “work for hire,” shorter of 95 years from publication or 100 years from creation But… only protects expression, not ideas; does not limit independent creation Variation - mask works

15. Trademark/Service Mark Any mark (e.g., word, group of words, logo) that identifies the source of goods or services from those of another when used in commerce Any mark (e.g., word, group of words, logo) that identifies the source of goods or services from those of another when used in commerce Owner can prevent others from using confusingly similar marks Owner can prevent others from using confusingly similar marks Common law rights – federal and state registrations available If registered on a federal basis, term can be extended forever “Use it or lose it” Avoid your mark becoming generic!

16. Trade Secret Data, formulas, patterns, compilations, programs, devices, methods, lists of actual or potential customers/suppliers that derive economic value from not being generally known or readily ascertainable Data, formulas, patterns, compilations, programs, devices, methods, lists of actual or potential customers/suppliers that derive economic value from not being generally known or readily ascertainable Enforcement based on proper safeguarding Cannot be used to protect matter that can be readily observed or reverse engineered Can be a valuable form of protection if relationships are managed effectively

17. High Points Patent  inventions Patent  inventions Copyright  expressions Copyright  expressions Trademark/service mark  good will Trademark/service mark  good will Trade secret  secrets Trade secret  secrets

18. Food for thought…

19. Takeaway message… “OTTED works with Vanderbilt inventors to drive the commercialization of new and exciting technologies.” Vanderbilt University Office of Technology Transfer and Enterprise Development 1207 17 th Avenue South, Suite 105 Nashville, Tennessee 37212 Ph: 343-2430 Fax: 343-4419 www.vanderbilt.edu/technology_transfer

20. Sharing of licensing income (after patent expenses are reimbursed) Inventor/Creator Inventor’s Lab Inventor’s Dept Inventor’s School Tech Promotion Fund Tech Research Fund U Central: First $100K per year 50% 10% 0%0%0%0% 30% 10% 0%0%0%0% U Central: Above $100K per year 40% 10% 25% 5%5%5%5% 10% VUMC: First $100K per year 50% 0%0%0%0% 20% 10% 0%0%0%0% VUMC: Above $100K per year 40% 0%0%0%0% 25% 20% 5%5%5%5% 10%