Vanderbilt University Office of Technology Transfer and Enterprise

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

OTTED brings three functions together and multiplies the opportunities for Vanderbilt Technology Transfer Enterprise Development Business Incubation

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

Who are Vanderbilt’s partners? n n n Large and mid-size companies Existing small firms Start-up enterprises (both local and beyond our region) Local, state, regional, and national notfor-profits and public sector entities Universities Investors (venture capitalists, angels)

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

Soon: Cool Springs Life Sciences Center

Bio-business in the Gulch

Sample success stories n Read 180 – teaching kids to read n Highway crash cushions – saving lives n Wiz. Order – physician order entry

Vanderbilt stats (FY 04) n Base revenue = $3. 8 million New licenses and options = 29 n Total active licenses = 212 n New technology disclosures = 131 n Total technologies managed = 694 n

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

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

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

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

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 n Owner can prevent others from using confusingly similar marks n n n 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!

Trade Secret n 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 n Cannot be used to protect matter that can be readily observed or reverse engineered n Can be a valuable form of protection if relationships are managed effectively n

High Points n Patent inventions n Copyright expressions n Trademark/service mark good will n Trade secrets

Food for thought…

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

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 50% 10% 0% 30% 10% 0% 40% 10% 25% 5% 10% VUMC: 50% 0% 20% 10% 0% VUMC: 40% 0% 25% 20% 5% 10% U Central: First $100 K per year U Central: Above $100 K per year First $100 K per year Above $100 K per year