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The Role of the NYS Science & Technology Law Center in Technology Commercialization Center for Engineered Polymeric Materials April 21, 2006 Ted Hagelin,

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Presentation on theme: "The Role of the NYS Science & Technology Law Center in Technology Commercialization Center for Engineered Polymeric Materials April 21, 2006 Ted Hagelin,"— Presentation transcript:

1 The Role of the NYS Science & Technology Law Center in Technology Commercialization Center for Engineered Polymeric Materials April 21, 2006 Ted Hagelin, Board of Advisors Professor of Law Director, NYS Science & Technology Law Center Syracuse University College of Law

2 Introduction NYS STLC Technology Commercialization Support Activities –Conferences –Meetings with CATS –NYSTAR Reports –NYS STLC Resources Technology Commercialization Process Technology Commercialization Research Projects

3 Conferences – Lab to Market Series Building Sound Patent Practices –Buffalo – May 16-17, 2005 The Business Side of Patents –CUNY Graduate Center – October 27-28, 2005 University-Industry Sponsored Research –Welch Allyn Lodge – Skaneateles, NY – June 16, 2006 –Speakers Carl Schramm – President, Kauffman Foundation Mark Crowell – Vice Chancellor, Univ. North Carolina, Past AUTM President Al Johnson – Senior Analyst, University Contracts, Corning, Inc. –Register –

4 Meetings with CATS Topic, Format, Venue, Participants –Determined by CAT Possible Topics –Intellectual Property; Business Development –Technology Commercialization Strategy Possible Formats –Presentation; Seminar; Roundtable Discussion Possible Venues –On-Site at CAT; Other On-Site; Teleconference

5 NYSTAR Reports Two Reports Each Year –Experimental Use Exemption to Patent Infringement –Patent Reform Legislation (available 9/1/06) –Survey of University Sponsored Research Policies –Survey of Industry Sponsored Research Policies

6 NYS STLC Resources NYS STLC Web Page –Many IP/Technology Commercialization Topics Innovation E-Review (Monthly Newsletter) Technology Commercialization Internet Research Guide (80+ Hyperlinked Sites)

7 Technology Commercialization Process Invention Different from Innovation –Invention Reduction to Practice Patent Prosecution –Innovation Transforming Invention Into Commercially Viable Product or Process Set of Engineering, Business and Legal Decisions that Guide Technology Development

8 Technology Commercialization Process Fundamental Science Basic Research Applied Research * Conception * Reduction to Practice * Alpha/Beta Testing * Commercial Scale-Up * Manufacturing * Sales/Distribution * Support * Risk High Low Investment Low ($10) High ($100) * Decision Points Engineers Managers Lawyers

9 Technology Commercialization Research Projects Technology Evaluation Projects Intellectual Property Policy Projects

10 Technology Evaluation Projects Background –Syracuse University Technology Commercialization Research Center Established in 1987 Over 100 Technology Evaluation Projects –Large, Medium, Small, Start-Up Companies –Universities, Federal Laboratories, TDOs Some Past Clients –Eastman Kodak, Welch Allyn, OrthoSystems, SU, Cornell, RPI, UR, RIT, Naval Research Laboratory, Lawrence Livermore National Laboratory

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13 Technology Evaluation Projects - Continued Approx. 20 Students Enrolled in Research Center Each Year –Law, Business, Engineering, Public Policy, Communications 10 Teaching Assistants 4 Faculty Typical Research Team –5 Students –2 Teaching Assistants –2 Faculty (Primary and Secondary Supervisors)

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15 Technology Evaluation Projects Technology Research and Analysis –Substitute Products in Market –Research and Development in Field –Patents Relevant to Technology Market Research and Analysis –Market Size, Trends, Structure –Competitor Firms, Potential Partners –Potential Licensees and Licensors Legal Research and Analysis –Patent Law Issues Related to Technology –Administrative Regulations Food and Drug Administration, Environmental Protection Agency, Export Control Requirements Competitive Advantage Valuation of Technology

16 Technology Evaluation Projects - Continued Client Use of Research and Analysis –Decisions Regarding Future Direction of Technology Development Strategic Alliances Alternative Market Applications Market Niches Means to Overcome Legal and Regulatory Hurdles Short-term and Long-term Commercialization Strategies –Attracting Private Investment Pre-seed, Angel and Venture Capital Win-Win Result –Client Obtains Relevant and Useful Information –Students Obtain Unique Learning Experience

17 Technology Evaluation Projects - Continued Sample Research Projects –New Matrix for Healing Chronic Wounds

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19 Technology Evaluation Projects - Continued Sample Research Projects –New Matrix for Healing Chronic Wounds –Photonic Biopsy Pill

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21 Technology Evaluation Projects - Continued Sample Research Projects –New Matrix for Healing Chronic Wounds –Photonic Biopsy Pill –Continuous Glucose Monitoring Device

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23 Technology Evaluation Projects - Continued Sample Research Projects –New Matrix for Healing Chronic Wounds –Photonic Biopsy Pill –Continuous Glucose Monitoring Device –Natural Language Processing of Medical Records –Ultrasound Osteoporosis Diagnosis Device

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25 Technology Evaluation Projects - Continued Sample Research Projects –New Matrix for Healing Chronic Wounds –Photonic Biopsy Pill –Continuous Glucose Monitoring Device –Natural Language Processing of Medical Records –Ultrasound Osteoporosis Diagnosis Device –Universal Wireless Driver Interface –Gold Nanoparticle DNA Assay

26 DNA Detection Technology Overview Target Gene (~300bp) Fluorescent Probe (~25 bases) + Melting; ssDNA (-) Negative; no target gene in sample (+) Positive; target gene present in sample + Gold nanoparticle Positive (+) ID = Sample IS fluorescent Negative (-) ID = Sample IS NOT fluorescent Excess probe quenched

27 Intellectual Property Policy Projects Research and Analysis of IP Topics Relevant to Technology Commercialization Examples –Managing IP in Complex Research Environments IP Identification, Capture, Exploitation –University-Industry Sponsored Research Trends, New Initiatives, Points of Disagreement, Points of Agreement Uses –Implement IP Management Policies –Reduce Sponsored Research Transaction Costs –Facilitate University-Industry Collaboration

28 Externally Initiated Projects Involving Third Party Technology in which CIMS and RIT Faculty, Staff and Students participate Flow Chart CInitial Project Phase Step 1: Inventory IP an Knowledge/Technology Inputs List all CIMS, RIT, or third party IP inputs and any non-protected technology to be utilized in this project Step 2: Identify Ancillary IP Opportunities Preliminarily attempt to identify ancillary IP arising during the course of this project (Patent, copyright, business method, etc.) Step 3: Review IP Recordation/Documentation Policy Remind CIMS and RIT Personnel to adhere to established IP policies -Lab notebook policy (update/witness) -Technology disclosure Step 4: Establish Monitoring Protocols Determine project specific methods for monitoring IP documentation and reporting -lab notebook audits (weekly/bi-weekly/per phase) Step 5: Identify Party Responsible for Monitoring IP Documentation and Reporting Protocol Step 6: Identify Likely Principle Inventors or Authors Of all project participants, who are expected to be primarily responsible for inventing or creating Proceed with next planned phase of the project Step 7: Establish any parties other than CIMS/RIT who will have responsibility for securing IP protection -Private sector -TLO -Federal (per Bayh-Dole, presumptively TLO)

29 Final Research Reports Approx. 150 Pages –1000+ Footnotes Approx. 8 Drafts Before Final Report Approx Hours of Research, Analysis, Writing and Editing

30 Research Projects Four Projects Each Semester Beginning to Plan Research Projects for Fall 2006 Semester If you are interested in discussing a research project, please let me know

31 THANK YOU QUESTIONS?


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