1. Seminar: “Introduction to Technology Transfer”
Presented by:
David Yee, Esq.
Patent Agent & Licensing Assistant
Office of Technology Transfer
February 7, 2008

2. Office of Technology Transfer (OTT) Staff

3. Office of Technology Transfer (OTT) Staff
In-house Technical Expertise
Life Sciences
Computer Science
Electrical Engineering
Chemistry

4. GMU OTT Goals
Contribute to the image of a research university through visibility of results
Fulfill expectations of faculty, students, and political, business and community leaders
Facilitate application of university research to economic and social development
Facilitate strong corporate relations
Satisfy obligations under Bayh-Dole Act of grants universities title to inventions conceived and developed with federal research funding
U.S. manufacturer for the U.S. market
Government march-in-rights
Governmental non-exclusive, royalty fee license
Create revenue for the university

5. GMU OTT Roles Develop and Administer Policies
Create an Environment to Foster Disclosure
Identify and Assess Intellectual Property (IP)
Protect IP
Market IP
License IP
Maintain License Relationships
Report and Disseminate Success Information

6. GMU OTT Constraints
Expectation that Technology Transfer Offices will fuel economic development
Public institutions as stewards of taxpayer dollars
State wants to see dollars stay in-state
Issues Imposed by VA Attorney General’s Office
Issues Imposed by VA Appropriation Committee
VA Appropriation Committee – VA’s legislative body that sets aside a sum of money for public purpose

7. Solution to GMU OTT Constraints
Pays for patent costs
Conducts licensing
Appears to be a complicated process but it allows for flexibility

8. Tech Transfer Fundamentals
So, what is Tech Transfer?
A vehicle for delivering research and innovations to the public that incorporates 2 major areas:
IP Protection
Commercialize ($$$)

9. I. IP Protection Protectable Subject Matter Patents Copyrights
Trademarks

10. Brief Summary of Protectable Subject Matter
Patent (***Utility***)
Copyright
Trademark
What is protected?
Device, Composition, or Process
Expression, not ideas
Source-indicating word, symbol
Criteria for protection?
Utility, Novelty, Non-obviousness, and Enablement
Originality
Distinctiveness
To obtain protection…
File patent appl’n with USPTO
Fixate expression on a tangible medium; file application with Copyright Office
Use in commerce; file trademark appl’n with USPTO
Protects Against…
Manufacture, use, sale, offer to sale, or import of claimed subject matter
Unlawful copying
Confusing and/or disparaging use
Duration of Protection
20 years from filing patent application subject to renewal
(Generally) Life of author + 70 years, not subject to renewal
Continuous with use and subject to renewal

11. Patents The U.S. Constitution grants U.S. patent rights.
“Congress shall have the power …
to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective inventions and discoveries.”
U.S. Const., Art. I, § 8

12. Public Policies Underlying Patent Law
Benefit the public by providing the prompt disclosure of new inventions to the public
(in exchange for)
Provide inventors and businesses with an incentive to innovate, by creating a legal right to exclude others from making, using or selling an invention for a limited time.

13. Patents
Types
Utility
Design
Plant

14. Limitations of Patents
Geographically
U.S. patents are limited to the U.S. and its territories
U.S. patents cannot be enforced outside the U.S.
Term
Utility – 20 years as of the filing date
Design – 14 years from the date the patent issues
Plant – 20 years from the filing date

15. What is patentable?
Any new and useful process, machine, manufacture or composition of matter
Any new and useful improvement thereof

16. What is not patentable?
A mere idea (e.g. law of nature or principle) without application.
Pure mathematical algorithms (e.g., E = mc2).
An inoperable device (e.g., perpetual motion machine).
An obvious improvement of an old device.

17. Some “interesting” patents
U.S. Pat. No. 4,809,435 – “Eating Utensil” Date of Patent: Mar. 7, Inventor: Gerald L. Printz
Bendable fork where the ends can be used as chopsticks

18. Some “interesting” patents
U.S. Pat. No. 5,934,226 – “Bird Diaper” Date of patent: Aug. 10, 1999 Inventors: Lorraine Moore, Mark Moore, Cely Giron
Mark (Navy) and Loraine – both ODU alumni; Local Business: Avian Fashions, 44 Mine Road, Suite 2-347, Stafford, VA 22554

19. Ex. Shortest Chemistry Patent Claim
U.S. Pat. No. 3,156,523 – “Element 95 and Method of Producing Said Element” Date of patent: Nov. 10, 1964
Inventor: Glenn T. Seaborg
What is claimed is:
1. Element 95.
Transuranium elements are not naturally occurring and are thus man-made and patentable; Seaborg also discovered Curium, Berkelium, Californium, Einsteinium, Fermium, Mendelevium, Nobelium, Seaborgium

20. What are the requirements for a patent?
The invention must be:
Useful (35 U.S.C. § 101);
New (35 U.S.C. § 102);
Nonobvious (35 U.S.C. § 103); and
Enabling (35 U.S.C. § 112)

21. Useful (Utility)
The invention must contribute to society, a foundational requirement of the patent system.
To accomplish this requirement, it must have a practical application.

22. New (Novelty - Not previously known)
The invention must NOT have been :
known or used by others;
described in a printed publication;
used in public; or
on sale
Note: In the U.S., the inventor must NOT have disclosed his/her own work for >1 year before the filing of the patent application.

23. Nonobvious A patent may not be obtained …
if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains.

24. Example of Nonobvious The Invention
A transgenic mouse (rodent/mammal) comprising Gene X fused to Promoter A, wherein X is overexpressed and the mouse (rodent/mammal) has a useful phenotype.
Reference 1
Discloses that when Gene X is fused to Promoter A, X is overexpressed in cells in tissue culture.
Reference 2
Discloses a transgenic mouse comprising Gene S under the control of Promoter A. The mouse has NO useful phenotype.
Arguments?

25. Enabling
Enablement – must teach others how to make and use the invention (consider it as a blueprint)
Written Description – must describe the invention
Best Mode – must disclose the best way of making the invention

26. Foreign Patents Patent Cooperation Treaty (PCT)
provides central filing and searching of application but examination is carried out by each country
many countries have an “absolute novelty” requirement
Public disclosure anywhere in the world (e.g., public use, commercial sale, etc.) prior to the filing of the patent application = no patent
Every country has a different patent system, but may share priority date under Paris Convention

27. Foreign Patents Advantages Protect local market Block competitor
Disadvantages
Must have agent in each country to prosecute
Can be costly and/or difficult to monitor

28. Inventorship v. Authorship
Defined as who conceived the idea
Not defined as who conducts experimentation or gathers data under the direction of another
Applies mostly towards patents
Authorship
writing or information embedded on a tangible medium (includes ideas, experimentation, data, results, photos, etc.)
Applies mostly towards copyrights

29. Technology Developed with Sponsored Funds
Federal Funds –
Bayh Dole Act of 1980
Must be reported
Absolute obligation to disclose
Obligation to patent & commercialize
Industry Funds
Contract clauses likely to govern treatment of patents
Disclosure Requirements
Publication Review
Joint Invention?
Bayh-Dole Act – gave univ., small businesses and nonprofits IP control over inventions resulting from fed funding; must share royalties with inventors; govt retains nonexcl, nontransferrable, irrevocable paid-up license to practice or have practice the invention throughout the world
Federal Funds – OBLIGATION to disclose

30. GMU Patent Policy For GMU patent policy, please see:

31. II. Commercialization
Technology Assessment
Marketing
Licensing

32. A. Technology Assessment
Technology’s Developmental Stage
More of a concept or more towards reality?
Sufficient data?
Prototyped?
Anticipated technological acceptance in the
marketplace?
Faster or “better” is not always readily embraced with open arms

33. B. Marketing Examples of OTT’s Efforts
Identify potential applications for the technology
Research the industry (e.g., major and minor players)
Presentations to potential licensees and entrepreneurs
Conferences/expos
Network
Post technology on websites

34. Mechanisms for Technology Transfer
C. Licensing
Mechanisms for Technology Transfer
Non-Exclusive License
Exclusive License
Note:
Generally OTT does NOT transfer title b/c:
We need to ensure that technology is used, not shelved
We need to maximize fields of use and markets served
For start-ups, we want to keep control in the event of bankruptcy

35. C. Licensing Goals for License Deal
Fields of use - apply technology in as many market sectors as possible
Diligence requirements in product development and sales goals
Create revenue
Create jobs
Make certain the technology is used
Generate support for new research
Educate the public with advanced technology

36. C. Licensing Forms of revenue License Fees (Upfront or Recurring)
Due Diligence Fees
Equity
Milestone Payments
Royalties
Royalties (after reimbursable expenses)
Current Royalty Income Allocation (as of 8/23/89)*
Inventors
50%
GMU *

37. Examples of GMU Startups
Mineral Sciences LLC
“Synthetic Nanoparticle Soil Materials”

38. Examples of GMU Startups
Global Water Systems
“An Iron Composition Based Water Filtration System for the Removal of Chemical Species Containing Arsenic and Other Metal Cations and Anions”

39. OTT Open House Open House on Fridays, 9AM - 12PM
Obtain and a completed Preliminary Disclosure Form to David Yee or any other OTT staff member
Set up appointment with Gloria Garcia
Phone: (703)
Come in

40. OTT Location and Directions

41. Questions? David Yee, Esq. Office of Technology Transfer
George Mason University
4400 University Dr., MSN 5G5
Patriot Square, Suite #2406
Fairfax, VA
Phone: (703)
Fax: (703)