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Commercializing Discoveries: Disclosing your Intellectual Property By Ryan N. Fiorini, Ph.D., MBA, MHA Licensing and Commercialization Manager MUSC Foundation.

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Presentation on theme: "Commercializing Discoveries: Disclosing your Intellectual Property By Ryan N. Fiorini, Ph.D., MBA, MHA Licensing and Commercialization Manager MUSC Foundation."— Presentation transcript:

1 Commercializing Discoveries: Disclosing your Intellectual Property By Ryan N. Fiorini, Ph.D., MBA, MHA Licensing and Commercialization Manager MUSC Foundation for Research Development

2 Goal of Presentation How do I Commercialize my Technology? What does the Foundation for Research Development (FRD) do? Where can I get more information? Why is it important to learn about technology transfer? MUSC Foundation for Research Development 909 Haborview Tower

3 Who Works at FRD? Chip Hood, J.D. Executive Director Lisa Benson Patent Administrator Karen Hallenbeck, J.D. Legal Council Ryan Fiorini, Ph.D., MBA Technology and Marketing Manager

4 What does FRD do? Manage Technology Transfer for MUSC BenchBedsideIndustry

5 What does FRD do? Manage Technology Transfer for MUSC

6 Where is the Information? FRD Website –Forms –Policies –Procedures –Links

7 Evaluation Patent Licensee Release ROI Retain Technology Transfer Inventor Foundation for Research Development Outside MUSC Licensee

8 Invention Protection: Step 1 Document that you are the first one to come up with this idea A.Write the idea down in your notebook B.Gather data to support your idea A.Protocols and Experiments B.Data and Analysis C.Keep accurate records A.If in doubt, write it down Date and Witness Eureka! You have an idea At any time: Call us! We’ll help do an early assessment of the commercial potential of your invention

9 Why Date and Witness? NASDAQ: MEND

10 Evaluation Patent Licensee Release ROI Retain Technology Transfer Inventor Foundation for Research Development Outside MUSC Licensee

11 The disclosure What to Report? Anything that is new (or improved) and may be useful: e.g. new use of known compounds new chemical structures devices reagents cell lines software diagnostic markers copyright etc. When in doubt, CALL US!

12 You CAN’T Patent Genes, Peptide, RNA, Long Protein, Novel Bacteria found on ground Can’t patent a natural occurring product

13 You CAN Patent Can patent its use or method to extract Product by Process Biomarker, Probe, Gene Modulator, Novel Therapeutic, Probiotic

14 Why should I file an invention disclosure? High Publicity of Your Research Further Progress of Your Science –Sponsored Research Licensing of Technology –Royalties

15 Make it Big Nature Reviews Molecular Cell Biology 5, (March 2004) taxol

16 Evaluation Patent Licensee Release ROI Retain Technology Transfer Inventor Foundation for Research Development Outside MUSC Licensee

17 Evaluation What are we looking for? What is the commercial potential? Likelihood of obtaining Intellectual Property = What is a company looking for?

18 Evaluation What is the commercial potential? –Is it better, cheaper, quicker? –How much development needed before commercialization? –What is the Market size? –Potential for making a profit? –Is a company interested already?

19 Case Studies and Issues **Further information available on website and at all departmental seminars

20 Most Common Mistakes Public Disclosure Prior to Protection Signing Rights –MTA Inadvertent COI Sponsored Research Source: Council on Governmental Relations

21 The Disclosure When to Report? Before public disclosure! Including: –Publication of the paper –Poster in hallway –Student presentation –Departmental seminar –Discussion with colleague from other institution –Material Transfer Agreement (MTA) –Grants If you think it might be a disclosure, calll us! Confidentiality Agreement or

22 Cohen-Boyer Recombinant DNA –Stanford, UCSF Paper – November 1973 Applied for Patent 1974 Patent Issued December 2, 1980

23 The Outcome Still widely successful –Total loss of foreign rights Patent Expired in 1997 –Licensing Revenue $255 million –From $35 billion in worldwide sales Point: Send in your disclosures

24 Blockbuster Drugs from Patent Epogen (Amgen) Procrit (Amgen) Humulin (Lilly) Novolin (Noro-Nordisk) In vitro HIV (Abbott) Recombinate (Genetic Institute-Baxter) Proleukin (Chiron) Intron A (Schering)

25 MTA Signatory Authority Loss of Rights Future Inventions Definition of Material Conflicts with Existing IP MUSC Example

26 Consider the Following… Post Doc develops 3 new novel targets in a pathway Pathway not patentable Info kept from IP office Unauthorized signed by Post-doc 4 years later targets and novel therapeutics sent to IP office ALL PATENT RIGHTS LOST

27 Conclusion Importance of technology transfer Role of Intellectual Property Be aware of public disclosure Call FRD with any questions New Website

28 Contact Information W. Chip Hood, J.D Ryan Fiorini, Ph.D. MBA ? ? ? ? ? ? Questions


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