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OFFICE OF TECHNOLOGY COMMERCIALIZATION University Patent Process September 30, 2013 Mina W. Zion, J.D. Director.

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Presentation on theme: "OFFICE OF TECHNOLOGY COMMERCIALIZATION University Patent Process September 30, 2013 Mina W. Zion, J.D. Director."— Presentation transcript:

1 OFFICE OF TECHNOLOGY COMMERCIALIZATION University Patent Process September 30, 2013 Mina W. Zion, J.D. Director

2 OFFICE OF TECHNOLOGY COMMERCIALIZATION Agenda Introduction Commercialization and Patent Strategy Industry Rationale Conclusion/Appendix

3 OFFICE OF TECHNOLOGY COMMERCIALIZATION I NTRODUCTION Office of Research Dr. Shreek Mandayam Vice President, Research Office of Research Dr. Shreek Mandayam Vice President, Research Technology Commercialization Mina Zion, J.D. Director Technology Commercialization Mina Zion, J.D. Director Martin Kent IP Law Intern Stephanie Heiser Administrative Assistant Martin Kent IP Law Intern Stephanie Heiser Administrative Assistant Stephanie Lezotte Assistant Director Eric Gregory Contracts Specialist Kristy Carpenter Post-Award Specialist Stephanie Lezotte Assistant Director Eric Gregory Contracts Specialist Kristy Carpenter Post-Award Specialist Research Compliance Sreekant Murthy Compliance Officer Research Compliance Sreekant Murthy Compliance Officer Sponsored Programs Sarah Piddington Director Sponsored Programs Sarah Piddington Director

4 OFFICE OF TECHNOLOGY COMMERCIALIZATION I NTRODUCTION Mina Zion Academic Technology Transfer University of Delaware Stevens Institute of Technology $1.3M in deal origination over 3 years Industry Technology Scout at BASF Future Business $45M in deal flow management, primarily with university tech transfer offices M&A Project Manager at JPMorgan Education J.D., Rutgers University Law School – Newark B.S. in Chemical and Biological Engineering, NYU Poly

5 OFFICE OF TECHNOLOGY COMMERCIALIZATION I NTRODUCTION Why Patent? Transferrable property interests Sold Licensed Stolen Subject to traditional Property and Contract Laws Develop industry partnerships that will fund future research Additional Recognition in the chosen field of art

6 OFFICE OF TECHNOLOGY COMMERCIALIZATION Agenda Introduction Commercialization and Patent Strategy Industry Rationale Conclusion/Appendix

7 OFFICE OF TECHNOLOGY COMMERCIALIZATION S TRATEGY Bayh-Dole Act 37 CFR (a) Incorporated into all federal funding agreements Mandate: BRING INNOVATION TO COMMERCIAL MARKETPLACE. Requirements: Report subject inventions to the sponsoring agency Elect whether to retain title Educate employees regarding the patenting process Grant to the gov’t. irrevocable “march-in” rights Share royalties with inventor Use the balance of revenue after expenses to fund scientific research and education

8 OFFICE OF TECHNOLOGY COMMERCIALIZATION S TRATEGY Rowan IP Policy

9 OFFICE OF TECHNOLOGY COMMERCIALIZATION C OMMERCIALIZATION S TRATEGY Rowan Commercialization Strategy Disclose Faculty develops commercially relevant innovations that meet unmet market demands. Communicate with OTC patent worth inventions. Prosecute File provisional patent to receive early effective filing date. Begin to disclose externally to interested stake holders. License Identify the strategic commercial partner(s) and negotiate term sheet. Execute “bullet-proof” agreements to protect Rowan’s IP and financial interests.

10 OFFICE OF TECHNOLOGY COMMERCIALIZATION C OMMERCIALIZATION S TRATEGY Rowan Commercialization Strategy Disclosure Use the OTC disclosure power point template. Present to the Patent Committee at the South Jersey Technology Park. Identify market compatibility and potentially interested parties and industries.

11 OFFICE OF TECHNOLOGY COMMERCIALIZATION C OMMERCIALIZATION S TRATEGY Projected Disclosures, FY 2013

12 OFFICE OF TECHNOLOGY COMMERCIALIZATION C OMMERCIALIZATION S TRATEGY Rowan Commercialization Strategy Prosecute Provisional -> Non-provisional. Work with outside patent counsel to submit to the USPTO a disclosure statement. Formulate effective claims, not too narrow (limited in scope), not too broad (unpatentable) and fully responsive to unmet market needs.

13 OFFICE OF TECHNOLOGY COMMERCIALIZATION P ATENT S TRATEGY Patent Costs Domestic $500 Provisonal $17,000 Regular Foreign $5,000 PCT $150,000 National

14 OFFICE OF TECHNOLOGY COMMERCIALIZATION C OMMERCIALIZATION S TRATEGY Rowan Commercialization Strategy License Strategic partners may be Fortune 500, mid-size, or a Rowan Start-up. May be exclusive, non-exclusive. May be an Option for future use. Upfront cash payment plus royalties, milestone payments, IP reimbursements and annual maintenance.

15 OFFICE OF TECHNOLOGY COMMERCIALIZATION P ATENT S TRATEGY Balancing Innovation Produces Economic Value Too Broad Too Narrow COMMERICALLY RELEVANT

16 OFFICE OF TECHNOLOGY COMMERCIALIZATION Agenda Introduction Commercialization and Patent Strategy Industry Rationale Conclusion/Appendix

17 OFFICE OF TECHNOLOGY COMMERCIALIZATION I NDUSTRY R ATIONALE Innovation Pipeline - Academia Government Mandates Faculty Research Greater Funding The Demand The Innovation The Opportunity

18 OFFICE OF TECHNOLOGY COMMERCIALIZATION I NDUSTRY R ATIONALE Innovation Pipeline - Industry UNMET MARKET NEEDS Employee Research Greater Sales The Demand The Innovation The Opportunity

19 OFFICE OF TECHNOLOGY COMMERCIALIZATION I NDUSTRY R ATIONALE Innovation Pipeline – Industry Collaboration with Rowan Government Mandates Faculty Research Academic Publications UNMET MARKET NEEDS Employee Research Sales

20 OFFICE OF TECHNOLOGY COMMERCIALIZATION I NDUSTRY R ATIONALE Industry Business model - Strengths/Weaknesses. Resources Market Focus Organization Talent Innovation Cost Management

21 OFFICE OF TECHNOLOGY COMMERCIALIZATION Agenda Introduction Commercialization and Patent Strategy Industry Rationale Conclusion/Appendix

22 OFFICE OF TECHNOLOGY COMMERCIALIZATION C ONCLUSION Targeted Innovation UNMET MARKET NEED To Create A Successful Product, Don’t Start With A Blank Piece of Paper – Start With A Customer Need.

23 OFFICE OF TECHNOLOGY COMMERCIALIZATION C ONCLUSION Creativity is wonderful. But creativity that isn’t linked to making money is just a hobby. It isn’t a viable business concept. And the reason you are trying to come up with a new idea is, ultimately, to make money. -Paul Brown, Forbes Magazine 09/15/2013

24 OFFICE OF TECHNOLOGY COMMERCIALIZATION C ONCLUSION Disclose Prosecute License Starts With Marketable Research That Addresses A Valuable Business Objective

25 OFFICE OF TECHNOLOGY COMMERCIALIZATION C ONCLUSION Open Discussion


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