1. Industry – University Transactions: Rights to Future Intellectual Property Varda N. Main Director, Technology Licensing Rochester Institute of Technology Industry – University Transactions Committee LES 2002 Annual Meeting

2. V.N. Main – LES 2002 Annual Meeting Achieving Win-Win Collaborative Relationships Relationships between not-for-profits and for- profits – Collaborative research – Other partnering arrangements – Directed, sponsored research – Contractor or consultant

3. V.N. Main – LES 2002 Annual Meeting Differing World Views Academic – Advancement of science – Experience for students – Working with colleagues Corporate – Competitive advantages

4. V.N. Main – LES 2002 Annual Meeting Rights to Future Intellectual Property What rights does the academic partner really need? What rights does the corporate partner really need?

5. V.N. Main – LES 2002 Annual Meeting Rights to Future IP: University Needs Ability to publish and give presentations in a timely manner – Timing of publications and presentations Delay may effect ability to get needed grants Delay may effect ability to attract and retain students Delay may effect tenure and other promotion decisions Effect of long review/approval process by sponsor – Grant submissions – Papers and talks

6. V.N. Main – LES 2002 Annual Meeting Rights to Future IP: University Needs Freedom to continue to do research in that area – On own – In collaboration with other universities – In collaboration with other corporate sponsors Will future research require access to BIP by collaborators?

7. V.N. Main – LES 2002 Annual Meeting Rights to Future IP: University Needs Ability to provide students with meaningful research experiences – Need to be able to incorporate research results into thesis/dissertation/research paper – Delay may effect graduation and job search

8. V.N. Main – LES 2002 Annual Meeting Rights to Future IP: University Needs Ability to grow IP portfolio and then to leverage it – IP portfolio enhances university reputation and ability to attract and retain quality faculty, staff and students – IP portfolio provides additional source of funding for research – Universities are not consulting shops

9. V.N. Main – LES 2002 Annual Meeting Rights to Future IP: The University View of the Corporate Needs Ownerships of all arising IP is preferred position Exclusivity without FOU restrictions Exclusivity in FOU Delayed disclosure

10. V.N. Main – LES 2002 Annual Meeting University Issues that Corporate Partners Need to Understand Bayh-Dole Act Who owns the IP generated by university “personnel”? – Does the university own student IP? What if the student is first and foremost an employee of a company? Does the university own adjunct or visiting faculty IP? What hat is the professor wearing? University employee? Independent consultant?

11. V.N. Main – LES 2002 Annual Meeting University Issues that Corporate Partners Need to Understand What can be negotiated before the research work is performed and the IP is generated? – IRS Rev. Proc. 97-14 Will any work be done as part of a class project; e.g. capstone projects? Will any work be done as part of thesis or dissertation work? – Who will sit on the defense committee? – Who may attend the defense?

12. V.N. Main – LES 2002 Annual Meeting Valuing Future IP How to arrive at a fair apportioning value of the IP that is yet to be developed? – What is the value-add of the university BIP? – What is the value-add of the corporate BIP?

13. V.N. Main – LES 2002 Annual Meeting Protecting Future IP Patenting strategy – Timing of filing patent applications – Jurisdictions Funding for Controlling prosecution of

14. V.N. Main – LES 2002 Annual Meeting Can it be done? Is it worth it? ABSOLUTELY……….. In 2000 2.7B$ of corporate sponsored research was reported by 190 universities in the AUTM Survey. – Representing ~10% of all sponsored research