Intellectual Property Technology Transfer Presented by George Konstant
Intellectual Property & Technology Transfer
Presented by George Konstant Auburn University Innovation Advancement and Commercialization (IAC) Vice President for Research and Economic Development 570 Devall Drive, Suite 102 Auburn, AL 36832 Phone: (334) 844 -4977 Fax: (334) 844 -5963 Copyright 2018 Auburn University
Technology Transfer • Process of taking technology from the research lab to the shelf • Academic compliment to business development • Began at university level in 1920 s at Wisconsin: Vitamin D in milk • Stanford became leader in 1970 s • Bayh-Dole Act of 1980
Why Do Technology Transfer? • To enable and further collaborative research with industry. • To enrich the educational experience through internships and other learning activities. • To enhance the reputation of the University • To help create a venue that attracts, develops, and retains the very best students, faculty, and researchers. • To improve the flow of research dollars and resources to the academic community.
AU Technology Transfer Process I. Creation of intellectual property II. Disclosure/Invention to the university III. Evaluation IV. IP protection strategy V. Marketing/Commercialization strategy VI. Licensing
I. Four Major Types of IP and What is Protected? Patents protect processes, methods or compositions of matter B. Copyrights protect expression C. Trademarks and Service Marks protect brand identity D. Trade Secrets protect secret information A.
What is a Patent? • A patent secures, for a limited time, the right to EXCLUDE others from making, using, selling, offering for sale the invention in the United States • Term: 20 years from the filing date • Requires FULL disclosure of invention
Three Types of Patents Utility Protects function, method or composition (Provisional and Non-provisional applications) n Design Protects only the ornamental appearance (i. e. the case design of a cell phone) n Plant (i. e. new plant varieties)
Patentability Criteria Usefulness – 35 U. S. C. § 101. - Does it really do anything Novelty – 35 U. S. C. § 102 - “Prior Art” includes publications Non-Obviousness – 35 U. S. C. § 103 - To one “reasonably skilled in the art”
Invention • Concept • Reduction to practice Actual • Constructive •
Copyrights • • • Protects “original works of authorship” Includes books, music, movies, images, maps, plays, choreography, software Gives owner exclusive right to reproduce, distribute, sell, perform, and prepare derivative works Copyright protection begins from the time the work is created in fixed form Copyrighted materials can be formally registered – makes enforcement easier and more powerful (increased damages) Protection for 95 years
Trademarks • A word, phrase, symbol or design (or combination thereof) that identifies and distinguishes the source of the goods of one party from others Branding • Can, but do not need to register • Common examples: Rolex, Yahoo!,
Trade Secrets • • Some valuable ideas are not patentable Other times, companies do not want to make their invention public knowledge Protection of trade secret lies in secrecy Must be closely guarded Confidentiality agreements, “need to know” basis Can be reverse engineered Not typically a good fit for public universities Examples: Coca-Cola, KFC, etc.
II. Disclosure/Invention – Disclosing to AU IAC • WHEN: Can disclose at any time, but preferably with sufficient notice before any publication or enabling public disclosure, or even after submitting a manuscript. IAC will help you both publish and protect. • WHAT: Disclose novel ideas, discoveries, inventions that are timely and useful to the marketplace • Not sure if you should disclose? Call IAC! • AU technology disclosure forms can be found at the IAC website: iac. auburn. edu
III. Evaluation Can it be protected? (Disclosure? Novelty? ) • Is it marketable? (Stage of development? ) • Are there obligations? (Look at funding) • Is it commercially feasible? • Feedback from companies/end users - “Fatal flaws” - Insight into what are the true industry problems
IV. IP Protection Strategy Patent Filing: provisional, non-provisional or PCT application • Copyright or trademark filing • Use Non-Disclosure Agreements (NDAs) – Never discuss the enabling aspects of your research without the protection of an NDA • Material Transfer Agreements (MTAs) – Never transfer to or receive materials from an outside entity without the protection of an MTA •
V. Marketing • Determine strategy Established companies? Form new company? Identify applications, markets Determine benefits of technology Prepare materials (right) Identify targets • • • Entrepreneurs Known contacts Search for companies, contacts Passive marketing (internet) Graduate student intern program • • •
VI. Licensing • • • License Agreement: A contract by which one entity grants IP rights to a company for purpose of commercialization in return for consideration Can be exclusive or non-exclusive; can be limited to field of use; or option agreements Consideration can include up-front payment (license fee), royalties on sales, annual minimums and/or equity Other Auburn requirements: diligence milestones, indemnification, reimbursed patent expenses, State of Alabama law Negotiations: go for “win win”
Inventions • Monoclonal antibodies (MAbs) specific to poultry muscle proteins for the detection of adultered poultry meat(s) in raw and cooked meat products • Monoclonal Antibody Specific to Raw and Cooked Pork • Use of troponin I as a specific marker protein for meat speciation in both raw and heat-processed products
Inventions • Implementing a Lumbar Belt to a Marching Drum Carrier • Surface Active N-Halamine Compounds • Kiwi and Chestnuts • Optical Microscope of High Resolution
Industry Research Contracts • iac. contracts@auburn. edu
Innovation Advancement and Commercialization • • • Jan Thornton, Executive Director George Konstant, Director, Industry Negotiations & Tech Transfer Brian Wright, Director, Commercialization Cary Chandler, Director, Business Development Jennifer Keller, Senior Industry Negotiator Troy Brady, Technology Transfer Officer Andrew Hampton, Technology Transfer Officer Judy O’Neal, Office Supervisor Misty Schwieker, Technology Transfer Assistant Angela Torbert, Technology Transfer Assistant Melanie Baker, Technology Transfer Compliance
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