1. Wyoming Research Products Center Technology Transfer and Licensing Senator Enzi’s Inventors Conference April 20, 2013 Phillip Wulf, Intellectual Property Analyst

2. About Technology Transfer UniversityIndustry PURPOSE: further development and commercialization

3. Purpose Economic development Talented faculty and graduates Corporate research support Licensing revenue for research and education Public benefits from products that reach the market

4. Process Identify new intellectual property Protect new technologies Development and commercialization strategies

5. Steps Invention/Idea Protection/Patent Market License

6. Protection Patenting by UW of discoveries from research: –Protects the investment in the research –Ensures the technology has a chance to reach the market

7. Measuring Success Numerical:

8. Measuring Success Numerical:

9. Measuring Success Non-Numerical: –UW’s ability to retain innovative faculty –Attract great students –Contribute to UW’s reputation –Collaborations established

10. Licensing Revenues Reimburse UW’s patent expenses Shared between the creators and the university Individual inventors Department and Colleges Research Products Center

11. University of Wyoming Example

12. Research Products Center The office at UW is unique Funding from both the UW Research Office and the Wyoming Business Council We serve BOTH university and inventors statewide

13. Our Goals for Independent Inventors 1. Facilitate technology transfer 2. Assist Wyoming inventors and small businesses: –Identify, protect, and commercialize IP –Transfer Wyoming ideas to the market –Support the creation of new technology start-ups in Wyoming –Encourage partnerships

14. Steps Invention/Idea Protection/Patent Market License

15. Disclosure Concerns regarding disclosure: 1.Protect patentability 2.Misappropriation 3.University’s role Disclosure is okay if done correctly

16. Confidentiality Agreement Proper disclosure demonstrates you are protecting the confidentiality of your idea To start working with us Form found on our website:http://uwadmnweb.uwyo.edu/RPC/

17. Evaluation The patenting process is long and expensive Do a good evaluation before wasting time and spending money

18. Evaluation Biggest concern is novelty and non- obviousness Review: –Patent estate –Journal Articles –Product Databases –Internet

19. Marketing To technology transfer, marketing means finding a licensee to commercialize the product Get the idea in front of companies in specific industries

20. Marketing 1. Identify market 2. Prepare technology description 3. Develop mailing list 4. Mail marketing package 5. Wait for responses 6. Add to website 7. Share additional data if requested –Under Confidentiality Agreement

21. Negotiation License = Permission for another to use your property Usually in return for money –Up-front fees –R & D funding –Royalties If someone else uses your patented invention without your permission you can start legal action

22. Negotiation You get what you negotiate: Royalty rateFees/Bonuses Patent costsLiability/Warranty New inventionsExclusivity Law and venueTechnical reports DiligenceLength of time InsuranceResearch funding

23. Technology Valuation Keep your perspective!! Early stage technologies are worth considerably less that those ready for immediate sale Example: UW has an early stage technology –Will require 10 years of development –Will address a $10,000,000 market

24. Technology Valuation Year Event Percent Success Annual Research Costs Discounted Value 1 Discovery $300,000$138,687 2 $300,000$473,782 3 $300,000$835,684 4Phase I Testing50$300,000$1,226,539 5 $300,000$2,973,325 6 $300,000$3,535,191 7 $300,000$4,142,006 8Phase II Testing60$300,000$4,797,366 9 $300,000$8,959,259 10Sales $300,000 $10,000,000

25. Other Assistance Copyrights and Trademarks “Please keep in mind that the results of our services serve as a mere advisement and are by no means conclusive on the issue of whether you should pursue protection for your invention or not. Only an attorney can give you a formal patentability opinion.”

26. Thank you Director: Davona K. Douglass Wyoming Research Products Center –Dept. 3672, 1000 E. University Ave., Laramie, WY 82071 –307-766-2509 (office) –307-766-2530 (fax) –9 th & Lewis Street, Room 207 –www.uwyo.edu/RPCwww.uwyo.edu/RPC Phillip Wulf –pwulf@uwyo.edu WyomingInvents.com