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Technology Transfer Karen Rufus Sr. Licensing Officer.

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Presentation on theme: "Technology Transfer Karen Rufus Sr. Licensing Officer."— Presentation transcript:

1 Technology Transfer Karen Rufus Sr. Licensing Officer

2 Center for Technology Transfer Unofficial Mission Statement Increase Vanderbilts innovative capacity, commercialize its technology to benefit the public and generate economic return while operating at the highest standards of integrity. Business Commercialize Vanderbilt technology through licensing and new venture creation, growing the innovation base. Customer Primary: Vanderbilt Innovators Supporting: Administration, Investors, Entrepreneurs, Collaborators, Strategic Partners

3 Role of Center for Technology Transfer Serve the Vanderbilt community by assisting inventors in bringing their innovations to practical application for the benefit of the public Our relationship with inventors is a PARTNERSHIP We patent ideas so that we have a transferrable asset, but patenting is only a means to an end We negotiate licensing agreements with industry counterparts for access to our technology We assist in building deeper relationships with industry, via sponsored research, collaborations, investments, etc.

4 Other Services …. Execute other Agreements: Material Transfer Agreements Confidentiality Agreements Inter-institutional Agreements Review IP language in Sponsored Research and Clinical Trial Agreements Distribute royalty payments

5 CTTC Core Commercialization Process Evaluate technologies for o Patentability o Market potential o Clinical Merit / need in marketplace o Expertise in development Determine most effective commercialization route o License out o Create new venture Negotiate development agreements o Licenses o Venture funding o R&D agreements

6 How Do We Commercialize? Vanderbilt Commercialization Process

7 How Do Inventors Benefit? Creates research opportunities via collaborations Generates research revenue Inventors share in revenues as personal income 50% of revenues are shared among the inventors Creates additional notoriety for research Brings healthcare products to the marketplace for the benefit of patients

8 How Do Universities Benefit? Creates opportunities for investment via collaborations Additional sources for research revenues Creates brand recognition Increases Faculty recruitment

9 How do Taxpayers Benefit? Vitamin D milk Insulin Streptomycin Magnetic memory Gatorade LCDsLCDs Coumadin Polio vaccine Cysplatin Restasis MRI scanner Taxol Emtriva PET/CT scanner Rocket fuel Plexiglas Penicillin Pap smear Pacemakers Fluoride toothpaste Allegra Hepatitis B vaccine Saccharin Electron microscope Neupogen

10 Why should I disclose? Federal Government requires reporting of Federally funded inventions Vanderbilt requires disclosure as a condition of employment Discoveries that can help people and make a difference will rot on the vine without disclosure, protection and commercialization VU employees have a financial incentive – 50% of revenues from licensing in ventions flow back to inventors

11 The Inventors Role…… Commercialization

12 Pre-disclosure Keep good lab notes, and have them witnessed periodically Will prove handy in the event of a patent interference Proceeding Make sure that the contracts are in place Inter-institutional collaborations require a Joint Development Agreement to protect against loss of patentability Contract researchers / programmers may require an obligation to assign in subcontract agreements Understand invention and engage CTT if you think you have a novel idea

13 Disclosure Provide a detailed description of the invention Remember enablement and best mode Proper patent searches and proper market analyses cannot be done without a full description Identify any companies that you have a relationship with or you know that are in the relevant industry 70% of licensing leads come from inventors Identify the source of research funding used to conceive or develop the invention We need to fulfill all reporting / IP obligations to sponsor Specify plans for ongoing development effort s

14 Evaluation Discuss potential utilization of products (market size) Help distinguish present invention from current products – focus on novel features and advantages Review prior art references identified and help differentiate your invention from the prior art Perform independent patent searches (www.uspto.gov) and get a good feel for what products have been invented – DIFFERENT FROM WHAT IS BEING COMMERCIALIZED!www.uspto.gov Work with CTTC to describe the potential products that could result from the invention, as well as the relevant markets for such products

15 Marketing Help with reviewing and editing marketing documents Help with identifying and approaching potential industry partners Participate in in-depth discussions with parties showing interest Continue to refine and develop the technology, make use of product development funds when appropriate Help evaluate the fit and capabilities of potential licensees – not all willing partners are good partners Continue to publish, publish, publish

16 Patenting Review applications in a thorough and timely manner Disclose ALL references that you believe in your own judgment to be relevant to patentability (DUTY OF DISCLOSURE) Disclosure all embodiments of the invention Assist in brainstorming ways to broaden patent claims Help with arguments to traverse rejections issued by the US Patent Office Engage counsel or a commercialization officer before publishing patentable subject matter

17 Are there any resources available to help develop new ideas? CTTC is starting a Prototyping Fund Applications are for prototyping of existing technology, or proof of principal experimentation Applications would be made through CTTC Cannot be used for capital purchases Would be used outside CTTC

18 What you should know about tech transfer as scientists…. Patents are a means to commercialization, not just another means for publications and lines on CVs Just because there is a perceived medical need for an invention, doesnt mean there is a market Just because you can patent something doesnt mean you should You cant patent something thats been talked about publicly Authorship Inventorship We are a service organization, so whenever you think you have an invention, or have questions, our doors are open

19 Questions? Phone: CTTC: Phone: Web:


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