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Technology and Economic Development Intellectual Property Issues in Research Jim Baker Director Office of Technology and Economic Development

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Presentation on theme: "Technology and Economic Development Intellectual Property Issues in Research Jim Baker Director Office of Technology and Economic Development"— Presentation transcript:

1 Technology and Economic Development Intellectual Property Issues in Research Jim Baker Director Office of Technology and Economic Development

2 Technology and Economic Development Objectives Inform researchers on issues related to intellectual property in research. Relevant laws, policies, and rationale for University approach to IP rights. Basics of patenting, commercialization, and patent licensing. Relationship of IP rights to general progress and advancement of academic research programs. Breadth versus depth – follow up for details.

3 Technology and Economic Development Outline Background Terminology University Policies Federal Rules Federal Contracting Issues Industrial Contracting Issues Patent Commercialization and Licensing Basics Using IP to grow your Research Program

4 Technology and Economic Development Terminology Ownership Sole control of an asset (Intellectual Property (IP) in this context). Subject to any legal encumbrances. License The right to use an asset/IP. Exclusive License A license under which the licensor agrees to not provide licenses to any third party. Non-Exclusive License A license under which the licensor reserves the right to provide licenses to third parties.

5 Technology and Economic Development University Policy - Objectives Board Of Control Policy : “The research objectives of Michigan Technological University are: 1. To encourage scholarship and to assist and improve education. 2. To discover and disclose new knowledge. 3. To promote the utilization of new discoveries for the public benefit. 4. To aid, encourage, and support industry, particularly within Michigan. 5. To support the research objectives of State and Federal agencies. The University supports research for these stated objectives and not merely because the ideas involved may be potentially profitable.”

6 Technology and Economic Development University Policy Highlights – IP Protection and License Revenue “The University may claim patent and/or proprietary rights where a concept is reduced to practice with the use of University facilities or in the course of employment.” ( b) “The University will seek a patent when it is judged to be an appropriate and effective means of disseminating knowledge or of promoting the utilization of new discoveries for the public benefit.” ( b) “If the University receives any royalty and/or other income from the sale or licensing of any patent or other proprietary rights, it will provide, consistent with the other provisions of this policy, a share of any royalties and/or other income received by the University for the inventor or inventors,” ( c)

7 Technology and Economic Development University Policy Highlights Contract Requirements and Exemptions Contract Requirements “ The University will state the terms and conditions of proprietary rights in every research contract that is negotiated” ( a) Exemptions “ The University may claim no equity in inventions developed without the use of its funds, facilities, or equipment.“ (“funds” includes grant funds) ( b) “Books, articles, manuscripts, and works of art (except to the extent that they contain proprietary information related to inventions or computer software) are not included in this policy.” (Operating Procedure 11.1)

8 Technology and Economic Development Relevant Federal Rules 37 CFR 401 (Bayh-Dole Act) Universities own inventions created from work sponsored by the federal government IRS Revenue Procedure (Tax Free Bond Act) Prohibits use of tax-exempt financed buildings for “private use” Private use includes transferring IP ownership to sponsors at less than market value

9 Technology and Economic Development Federal Contracting Issues Bayh-Dole provides the University with ownership of inventions Simplifies contracting but comes with conditions Legal and contractual obligations to disclose inventions to the funding agency. Obligation to pursue commercialization in the United States with a preference for small businesses if possible.

10 Technology and Economic Development Industrial Contracting Issues University owns project generated IP University grants sponsors: A royalty-free right non-exclusive license. The first option to a royalty bearing exclusive license. Tax-free bond act generally prohibits transfer of ownership and up-front designation of license terms. Research rights/Freedom to operate

11 Technology and Economic Development Technology Commercialization Process Enablement Demonstration Development Probability of Success Effort/Time Idea InventionPatentLicense Invention Disclosure Commercialization Stage Commercialization Steps

12 Technology and Economic Development Starting the Process Invention Disclosure Form at …but we will take draft publications, proposals, theses/dissertations, etc. Describe as many technical details as possible – enable someone to reproduce the invention. Identify applications and potential partners if possible.

13 Technology and Economic Development

14 Technology Assessment Technical maturity What needs to be done to reach the market What are the related research needs/opportunities Patentability Is the invention ‘enabled’ – can it be reproduced Will a patent impact our ability to attract research funding and commercial partners. Market Is there sufficient probability and magnitude value of revenue (research or royalty) to justify the investment.

15 Technology and Economic Development Leveraging IP for Research Technology commercialization produces funding opportunities: Corporate partner research sponsorship Federal Small Business Innovation and Technology Transfer Research (SBIR/STTR) Private Investment Specialized technology gap funds Business plan competitions

16 Technology and Economic Development Example of Research and Commercialization Alignment Discovery from federal research that has potentially significant public benefit and commercial potential. $20k proof of concept study Michigan Universities Commercialization Initiative (MUCI). $60k next stage proof of concept Funded by MUCI Support letter from private sector partner. $230k validation study $70k MUCI $160k from private sector partner with an option to license technology $230k development/further research NIH STTR Phase I $110k subcontract to Michigan Tech Currently preparing ~$1M NIH STTR Phase II $370k subcontract to Michigan Tech

17 Technology and Economic Development Example Outcomes to-date ~ $420,000 in sponsored research 3 years Ph.D. student funding 2 years lab tech funding 2 publications in preparation 4 published conference proceedings $20,000 in royalties Equity in startup company (indeterminate value)

18 Technology and Economic Development Funding Opportunities Early stage technologies Funding available through traditional research funding programs Mid-stage technologies Technology gap funds SBIR/STTR – need corporate partner You can create that partner or we can seek one out Startup company with private investment Demonstrated Technology Corporate sponsored research and development

19 Technology and Economic Development Michigan Tech Experience Base Michigan Tech is a national leader in: Proportion of research sponsored by industry Number of license agreements per dollar of research Number of invention disclosures per dollar of research As a result we have staff experienced in: Appropriate contract term negotiation Managing conflicts of interest Startup business development Commercialization planning and implementation

20 Technology and Economic Development Questions

21 Technology and Economic Development Contact Information Jim Baker Director, Technology and Economic Development


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