1. WPI Intellectual Property The next great invention? ToddKeiller Director, Technology Transfer 12/6/12

2. 12 Inventions that changed the world Airbag Safety System Area Rule of High-Speed Aircraft Design First Unbreakable Cryptosystem Internal Grinding Machine for Engine Manufacture Negative Feedback Theory Stainless Steel The Catalytic Converter The First Commercial Radio Station The First Liquid-Fueled Rocket The First Portable Drug Infusion Pump The Parallel-Wire Strand System for Suspension Bridges Traffic Engineering 2

3. Intellectual Property (IP) Define what it is How it is protected How does WPI manage IP What are your obligations

4. What Is IP? Data Materials Know-how Curricula Ideas Technologies

5. How Do You Protect IP? Trade and Service Marks Trade Secrets Patents Copyright Publications Material Transfer Agreements (MTA) Confidential Disclosure Agreements (CDA)

6. Technology Transfer 1980 – Bayh – Dole Act – Prior to 1980, government retained title to inventions – Bayh- Dole created a uniform patent policy among the agencies – Provided incentives to those who received federal funding – Fostered partnership with government, academia, and industry

7. Technology Transfer When presented with a new idea that may be a patentable invention: Is there a product? Who can commercialize that product?

8. You May Have an Invention – What Next? Contact TTO early re: disclosure matters Identify & document invention – identify inventive activity and keep good records: – Lab notebooks – Working notes, sketches, drawings – Draft publications – Date, sign, & witness lab records as feasible Review technical, product, and patent literature (“prior art” awareness) regularly 8

9. Basics About Disclosing Public, Private, & Institutional Disclosures – Public: publications, presentations, media interviews, posters, internet, etc. - publicly accessible record – Private: restricted access discussions, meetings, etc. – Institutional: formal university document with sign- offs, etc. compliant with federal req’ts. 9

10. Institutional Disclosure Process WPI Invention Disclosure Procedure – http://www.wpi.edu/Admin/Research/Sponsored/Handbook/in vention.html http://www.wpi.edu/Admin/Research/Sponsored/Handbook/in vention.html Don’t publish or present invention details until: – Discussion with WPI IP Office of prospective invention disclosure Research, prepare, & submit a WPI Disclosure Form if indicated – N.B.: FILING WPI DISCLOSURE FORM DOES NOT PROTECT INVENTION - PTO APPLICATION FILING IS NECESSARY. 10

11. Prior Art Search Primary search by technically cognizant inventor is essential – active researchers, related patents, applications, key words, etc. – Textbooks – Journals – Technical magazines – Manufacturers’ catalogs – Patents - www.uspto.govwww.uspto.gov – Google/patents Gordon Library Reference Resources 11

12. Post-WPI Disclosure Form Submission Evaluation of Disclosure Form information (e.g. complementary search, market assessment, etc.) for patentability, commercial potential, and WPI “fit” – WPI owns: We will designate a patent attorney You will need to work with that attorney – You own: We will sign a letter relinquishing any WPI claims You work with your patent attorney Patent application is prosecuted Patent Issues 12

13. Patents Grant by Federal Government – Gives inventor/owner the right to exclude – No one else can “make, use, sell or import” the technology – Limited term (20 years from “Date of File”) Why is this good? – Risky to innovate – Patents protect the party trying to innovate – Patents must be published

14. Four Hurdles Novel –must be new, not published * Non-Obvious, i.e., unexpected results Patent disclosure – describe invention Utility- must have a distinct practical use 14

15. Patent Protection Process Application Options – Provisional (USPTO, less than$1-4K) - not examined unless later dispute arises, establishes first to invent priority, 1 year to file utility – Utility (USPTO, $12K; Int’l/PCT $4K) – full filing for examination 15

16. Patent Strategies Understand the differences between university strategy vs. company strategy Claim strategy Publications ROI 16

17. America Invents Act September 26, 2011 15% increase in fees Micro-Entity status- 75% reduction Fast track examination option Effective 3/13 – First to file system But academia still has 1 year grace period 17

18. Inventor Categories -All persons performing research or scholarship at WPI, utilizing WPI resources/facilities, or deriving funds from WPI are either students or faculty/staff -- RAs are considered faculty/staff -- TAs are considered students 18

19. WPI Ownership Faculty/Staff Rules -Within stated objectives of current sponsored research, PLAN projects, thesis, or dissertation research, OR -Significant use of WPI facilities and resources (i.e. appreciable expenditure of WPI funds), OR -Faculty/staff while in role of student (project, thesis, directed study or research, course work) 19

20. Royalty Rule I If WPI pursues the patent, then WPI will absorb the costs and will share royalties on a 50-50 basis with the inventor(s), after the costs of the patent are recovered, or will share royalties in accordance with WPI institutional agreements. 20

21. Royalty Rule II If the student(s) wish to pursue the patent, WPI will assign any ownership rights it may have to the student through a jointly signed agreement providing that the student will give 10 percent of net future financial gains from the patent to WPI. The student will absorb the costs of pursuing the patent. Alternatively, if the student wishes to have WPI absorb the costs of pursuing the patent, then Rule I applies. 21

22. Royalty Rule III If there are no WPI resources used, then it is the inventors to own. The inventor(s) will pay all costs associated with patenting the invention, and will receive all benefits from the patent. 22

23. We filed the patent, what next? Need to find a commercial home – Straight license – Start up company Sources of funding for start ups – FFF – Angels – Venture Capital (traditional) – Venture Capital (corporate) 23

24. Common Terms in Licenses – Cash fees: direct cost recovery (patents), annual min. – Running royalty based on value enabled by technology – Warrants for equity if university start-up – University retains research & educational rights – Restrictions: field of use, territory – Time period: last patent to expire or 20 years – Sublicense with university approval – IP expense transfer to licensee, esp. int’l – Minimal university warrantees & liabilities – Commercial diligence 24 www.ibs-uk.co

25. Loading Cells on Biological Sutures 27G Syringe Needle Suture Needle Side Clamp 1.98 mm I.D. Silastic Tubing Biological Suture

26. iPhone: Afib detection prototype

27. TTO/Faculty-PI Interfaces On-Campus office – Boynton Hall, 1 st Floor, X4907 tkeiller@wpi.edu TTO website – www.wpi.edu/Admin/Research/TTOwww.wpi.edu/Admin/Research/TTO Forms (Invention Disclosure, IP Assignment Agreement, Material Transfer Agreement,...): http://www.wpi.edu/Admin/Research/Sponsored/forms.html Policies (Intellectual Property, Conflict of Interest,…): http://www.wpi.edu/Admin/Research/Handbook/policies.html 27

28. 28