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Stephanie Roof, CRA Proposal Manager Sponsored Projects Administration BALL STATE UNIVERSITY INTELLECTUAL PROPERTY TECHNOLOGY TRANSFER
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1] Definitions and Concepts 2] Ball State IP Processes 3] Tech Transfer Activity at Ball State TOPICS ADDRESSED
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TOPIC 1 DEFINITIONS | CONCEPTS
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Technology transfer is the process of transferring knowledge from one organization to another for further development, commercialization, and for society’s benefit. Identification of new technologies Protection of technologies through patents, copyrights, etc. Research and development activities Commercialization strategies, including marketing and licensing WHAT IS TECHNOLOGY TRANSFER
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Institutions engage in the technology transfer process for a variety of reasons: Recognition for discoveries and outstanding works Attracts and retains talented faculty Local economic development Attracts industry and corporate research support Improves the world and people’s lives WHY TECHNOLOGY TRANSFER
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PRODUCTS OF THE MIND IN TANGIBLE FORM Creative Works Inventions Technical Innovations Scientific Discoveries Ideas, mathematical methods, theories, and discoveries of natural substances are not intellectual property WHAT IS INTELLECTUAL PROPERTY
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Devices Gadgets Instructional DVD Music Poems Textbooks Drawings Paintings Software Processes Know-How WHAT IS INTELLECTUAL PROPERTY
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Copyrights Patents Trade Secrets Trademarks CATEGORIES OF INTELLECTUAL PROPERTY PROTECTION
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Copyrights Copyright protection is an automatic right, once the expression is reduced to writing or fixed in a tangible medium. Copyright law protects the original expression of a work. It is a narrow form of protection. For an individual author, copyright protection extends for the author’s life plus 70 years. A copyright owner has the exclusive right to reproduce the work, distribute by sale or otherwise, display or perform the work publicly, and prepare derivative works. Adding copyright notice and registering the work can be done; this does not make the work less likely to be infringed upon. CATEGORIES OF INTELLECTUAL PROPERTY PROTECTION
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Patents A patent is a grant issued by the United States Patent and Trademark Office giving an inventor the right to exclude all others from making, using, or selling the invention for a period which expires 20 years after the patent filing. To be patentable in most countries, an invention must be NOVEL, USEFUL, and NONOBVIOUS. Prior to any oral or written disclosure, it is strongly advisable to have protections in place for the work. Provisional, Utility, Design, Plant, PCT Bayh-Dole Act 1980 | America Invents Act 2013 CATEGORIES OF INTELLECTUAL PROPERTY PROTECTION
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Trade Secrets The law of trade secret gives the owner of the trade secret a competitive edge over others in business or commerce. It is used to protect valuable proprietary information, e.g. software. Protection will remain legally valid as long as secrecy is maintained. Individuals having access to the secret are bound by a contractual agreement not to disclose it through a nondisclosure or confidentiality agreement. CATEGORIES OF INTELLECTUAL PROPERTY PROTECTION
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Trademark A trade or service mark is a word, name, symbol or device adopted by an organization to identify its goods or services and distinguish them from the goods and services of others. Registration of trade and service marks may be obtained on both the state and federal levels. However, to apply for a federal registration of a mark, it must be used in interstate commerce. CATEGORIES OF INTELLECTUAL PROPERTY PROTECTION
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United States Copyright Office www.copyright.gov United States Patent and Trademark Office www.uspto.gov Association of University Technology Managers www.autm.net The Better World Project www.betterworldproject.org FOR ADDITIONAL INFORMATION
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TOPIC 2 BALL STATE IP PROCESSES
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COMMERCIALIZE PROTECT DISCLOSE IDENTIFY MANAGING INTELLECTUAL PROPERTY
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SPA | AUTHORS | INVENTORS | STUDENTS Proposal submission Internal grant External grant Special projects IDENTIFYING INTELLECTUAL PROPERTY
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Complete an Intellectual Property Disclosure form accessible on the SPA website. NOTE: Traditional works of scholarship do not need to be disclosed. This includes journal articles, textbooks, research bulletins, and other scholarly publications. The university shall not claim ownership of traditional works of scholarship unless certain conditions apply. See section 2.1.4 of Ball State’s Intellectual Property Policy for additional clarification. DISCLOSE INTELLECTUAL PROPERTY
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Page 1 BALL STATE INTELLECTUAL PROPERTY DISCLOSURE FORM
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Page 2 BALL STATE INTELLECTUAL PROPERTY DISCLOSURE FORM
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Page 3 BALL STATE INTELLECTUAL PROPERTY DISCLOSURE FORM
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Registration of Copyright or Trademark Sponsored Project Agreement Material Transfer Agreement (MTA) Uniform Biological Material Transfer Agreement (UBMTA) Licensing Agreement Non-Disclosure or Confidentiality Agreement Inter-Institutional Agreement (IIA) Provisional/Non- Provisional Patent Application Other Contracts PROTECTING INTELLECTUAL PROPERTY
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Carol Clendening Contracts and Grants Attorney Ted Kolodka Contract Compliance Analyst Wil Davis President, Ball State Innovation Corporation Jonathan Huer Director of Emerging Technologies and Media Development Justin Miller Director, Sponsored Projects Administration Stephanie Roof Proposal Manager, Sponsored Projects Administration Linda Swartz Secretary, Sponsored Projects Administration Rebecca Tyler Secretary, Compliance Operations PROTECTING INTELLECTUAL PROPERTY
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The Ball State Innovation Corporation (BSIC) is a not-for-profit organization that provides resources and guidance in the commercialization of innovations and creative works developed by Ball State faculty, staff, and students. Wil Davis, President www.bsic.com COMMERCIALIZING INTELLECTUAL PROPERTY
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TOPIC 3 TECHNOLOGY TRANSFER AT BALL STATE
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Royalty Income FY16 to date BALL STATE UNIVERSIT Y
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Royalty Income FY10–FY16 BALL STATE UNIVERSIT Y
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Royalty Income FY10–FY16 BALL STATE UNIVERSIT Y
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TECHNOLOGY TRANSFER AT BSU
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Examples of products available for purchase through CASHNet BALL STATE UNIVERSIT Y
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Thank you! For additional information, please feel free to contact me: Stephanie Roof Proposal Manager Sponsored Projects Administration 765-285-5084 slroof@bsu.edu QUESTIONS
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