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Technology Transfer from A-Z! Presented by Bruce Clary John Byatt Assistant Directors University of Florida Office of Technology Licensing.

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Presentation on theme: "Technology Transfer from A-Z! Presented by Bruce Clary John Byatt Assistant Directors University of Florida Office of Technology Licensing."— Presentation transcript:

1 Technology Transfer from A-Z! Presented by Bruce Clary John Byatt Assistant Directors University of Florida Office of Technology Licensing

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3 Bruce Clary Assistant Director University of Florida

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5 The state’s largest university, (and one of the nation’s largest), enrolls approximately 52,000 students per year. –16 colleges –150 research centers/institutes –Since 1985, a member of the Association of American Universities (AAU) – the top 60 public and private U.S. institutions. The University of Florida

6 State’s largest University 52K Students 16 Colleges 150 Research Centers/Institutes AAU

7 Approximately 5,000 faculty members with distinguished records in teaching, research and service; More than 60 Eminent Scholar chairs; Nearly 60 faculty elections to the National Academy of Sciences, Engineering, or Arts and Science, the Institute of Medicine or a counterpart in a foreign nation.

8 5,000 distinguished faculty 60 Eminent Scholar Chairs Nearly 60 faculty elections to: National Academy of Sciences, Engineering, or Arts and Science, The Institute of Medicine or a counterpart in a foreign nation

9 What is technology transfer? Wikipedia’s definition: Technology transfer is the process of sharing of skills, knowledge, technologies, methods of manufacturing, samples of manufacturing and facilities among governments and other institutions to ensure that scientific and technological developments are accessible to a wider range of users who can then further develop and exploit the technology into new products, processes, applications, materials or services.

10 What is technology transfer? Technology transfer is the process of sharing of skills, knowledge, technologies, methods of manufacturing, samples of manufacturing and facilities among governments and other institutions to ensure that scientific and technological developments are accessible to a wider range of users who can then further develop and exploit the technology into new products, processes, applications, materials or services.

11 Priorities for Technology Managers/Licensing Officers Faculty service –Open door, proactive faculty service approach –Learn how to tell faculty in a positive way their baby is ugly and your resources are limited Ability to project patent related expenses and work under a budget Income generation –Number of deals, license fees/royalties generated, reimbursement of patent expenses all important.

12 Priorities for Technology Managers/Licensing Officers Faculty service Open door, proactive faculty service approach Learn how to tell faculty in a positive way their baby is ugly and your resources are limited Ability to project patent related expenses and work under a budget Income generation Number of deals, license fees/royalties generated, reimbursement of patent expenses all important.

13 Evaluating new technologies: How Does It Work at UF? Idea Invention Disclosure Form Written Disclosure Oral Disclosure Exert Waive OTL Explores Patentability & Marketability OTL Seeks Licensee & Makes Patent Decisions (120 Days)

14 Evaluating new technologies: How Does It Work at UF? Idea Invention Disclosure Form Written Disclosure Oral Disclosure Exert Waive OTL Explores Patentability & Marketability OTL Seeks Licensee & Makes Patent Decisions (120 Days)

15 UF Disclosure Review Disclosures are reviewed monthly in Office of Technology Licensing based on: –interested potential licensee(s) –US and foreign patent opportunities –potential market size, penetration, returns to UF –administrative complications –enforceability Office of Technology Licensing options –Accept UF’s right to the technology –Waive UF’s right to sponsoring agency or inventor –Incomplete disclosure requiring further input

16 UF Disclosure Review Disclosures are reviewed monthly in Office of Technology Licensing based on: interested potential licensee(s) US and foreign patent opportunities potential market size, penetration, returns to UF administrative complications enforceability Office of Technology Licensing options Accept UF’s right to the technology Waive UF’s right to sponsoring agency or inventor Incomplete disclosure requiring further input

17 Conducting the Oral Disclosure Meeting

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19 Points UF considers when reviewing a new disclosure for patentability… any Public Disclosure  Public disclosure can include:  Publications in open literature  Poster Sessions & Abstracts  Presentations to open forum  Can be personal communications without some confidentiality agreement  Catalogues and libraries  Primary discriminations are:  Good faith attempt to maintain secrecy  Substantiality of material disclosed

20 Points UF considers when reviewing a new disclosure for patentability… any Public Disclosure Public disclosure can include: Publications in open literaturePoster Sessions & AbstractsPresentations to open forum Can be personal communications without some confidentiality agreement Catalogues and libraries Primary discriminations are: Good faith attempt to maintain secrecySubstantiality of material disclosed

21 Now….once you’ve done your prior art search and determined you believe this is patentable…..

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23 Just because you determine you CAN patent doesn’t mean you should!

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29 Assisting with Faculty Startups Start-ups are often the most appropriate (only) vehicle to bridge the technology gap

30 Assisting with Faculty Startups Start-ups are often the most appropriate (only) vehicle to bridge the technology gap Science Products Technology

31 Critical Elements - Technology transfer expertise – UF Tech Connect housed in OTL UF Tech Connect program fosters new business creation at UF Matches researchers with potential management Assists in business plan creation and market feasibility studies Provides training for “wanna be” entrepreneurs Introduces funding opportunities through VC and angel network introductions Measure based on jobs & private investment

32 Critical Elements Technology transfer expertise – UF Tech Connect housed in OTL UF Tech Connect program fosters new business creation at UF Matches researchers with potential management Assists in business plan creation and market feasibility studies Provides training for “wanna be” entrepreneurs Introduces funding opportunities through VC and angel network introductions Measure based on jobs & private investment

33 University of Florida Technology Licensing Team

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35 Most important things to remember about this presentation… Faculty service is our #1 priority! Without them we wouldn’t have any technology to transfer so have an open door policy, be responsive and communicate with them regularly! Set expectations to faculty according to your resources….be aware of other resources on campus who can help them if you can’t Use effective time management. Find the right balance on how to divide your time up in a day’s work: Example: 25% new disclosure review, 50% licensing, 25% other (marketing, prosecuting patents, negotiating other agreements, etc.)

36 Most important things to remember about this presentation… Faculty service is our #1 priority! Without them we wouldn’t have any technology to transfer so have an open door policy, be responsive and communicate with them regularly! Set expectations to faculty according to your resources….be aware of other resources on campus who can help them if you can’t Use effective time management. Find the right balance on how to divide your time up in a day’s work: Example: 25% new disclosure review, 50% licensing, 25% other (marketing, prosecuting patents, negotiating other agreements, etc.) Use effective time management. Find the right balance on how to divide your time up in a day’s work: Example: 25% new disclosure review, 50% licensing, 25% other (marketing, prosecuting patents, negotiating other agreements, etc.)

37 And last but definitely not least, UF is also well known for its Athletics! Victories include 26 national team championships and more than 200 individual national titles; UF is the first university in history to win national football and men’s basketball titles in the same year (2006); UF won back-to-back national championships in men’s basketball in 2006-’07.

38 And last but definitely not least, UF is also well known for its Athletics! Victories include 26 national team championships and more than 200 individual national titles; UF is the first university in history to win national football and men’s basketball titles in the same year (2006); UF won back-to-back national championships in men’s basketball in ’07.

39 Thank you!

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41 SCREEN SHOTS More Redesign Ideas


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