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Principals of Technology Transfer James A. Poulos, III Technology Transfer Coordinator Office Technology Transfer Beltsville, MD Grotto March 21, 2011.

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Presentation on theme: "Principals of Technology Transfer James A. Poulos, III Technology Transfer Coordinator Office Technology Transfer Beltsville, MD Grotto March 21, 2011."— Presentation transcript:

1 Principals of Technology Transfer James A. Poulos, III Technology Transfer Coordinator Office Technology Transfer Beltsville, MD Grotto March 21, 2011

2 USDA Agencies Animal and Plant Health Inspection Service (APHIS) Center for Nutrition Policy and Promotion (CNPP) Economic Research Service (ERS) Farm Service Agency (FSA) Food and Nutrition Service (FNS) Food Safety Inspection Service (FSIS) Foreign Agricultural Service (FAS) Agricultural Research Service (ARS) Forest Service (FS) Grain Inspection, Packers and Stockyards Administration (GIPSA) National Agricultural Library (NAL) National Agricultural Statistics Service (NASS) National Institute of Food and Agricultural (NIFA) Natural Resources Conservation Service (NRCS) Risk Management Agency (RMA) Rural Development (RD) ARS/OTT manages the patenting and licensing of inventions made by USDA scientists. OTT has delegated authority to make such decisions for all of USDA.

3 ARS Mission To conduct research to develop & transfer solutions to agricultural problems of high national priority and provide information access and dissemination to: ensure high-quality, safe food, and other agricultural products assess the nutritional needs of Americans sustain a competitive agricultural economy enhance the natural resource base and the environment provide economic opportunities for rural citizens, communities, and society as a whole

4 ARS Research Priorities 1)Conserve and restore Agricultural and Water Resources 2) Help America promote agricultural production and biotechnology exports while ensuring food nutrition (health) and safety (security) 3)Assess the nutritional needs of America 4) Agriculture, feed stock to fuel America 5)A sustainable competitive Ag economy

5 5 Richard Brenner Assistant Administrator (AA ) Robert Griesbach Deputy Assistant Administrator (DAA) AA June Blalock AA Tech Licensing Coordinator AA June Blalock AA Tech Licensing Coordinator Licensing Staff i Brian Nakanishi Licensing Specialist i Brian Nakanishi Licensing Specialist Diana Tucker Licensing Specialist Diana Tucker Licensing Specialist Vacant Licensing Specialist Vacant Licensing Specialist Carla Boettinger Program Analyst Carla Boettinger Program Analyst Deborah Penot Foreign Patent Specialist Deborah Penot Foreign Patent Specialist Gernard Little Legal Instruments Examiner Gernard Little Legal Instruments Examiner Kim Melton Licensing Assistant Kim Melton Licensing Assistant John Gaudet Licensing Specialist John Gaudet Licensing Specialist AA Vacant AA Marketing Specialist AA Vacant AA Marketing Specialist Natasha Snuggs Marketing Assistant Natasha Snuggs Marketing Assistant MarketingMarketing Vacant Marketing Technician Vacant Marketing Technician CRADACRADA DAA Thomas Moreland DAA Program Analyst DAA Thomas Moreland DAA Program Analyst Paula Reed Executive Asst Paula Reed Executive Asst Executive Support Staff Executive Support Staff Melissa Repoza. Program Support Asst. Melissa Repoza. Program Support Asst. DAA Kate Baker DAA Management Analyst DAA Kate Baker DAA Management Analyst Beltsville, MD Byron Stover Patent Advisor (BA, ERRC & Chemical) Byron Stover Patent Advisor (BA, ERRC & Chemical) Howard Owens Patent Advisor (PWA) Howard Owens Patent Advisor (PWA) Sonya Domingo Legal Instruments Examiner Sonya Domingo Legal Instruments Examiner Elizabeth Sampson Patent Advisor (PWA) Elizabeth Sampson Patent Advisor (PWA) Albany, CA Robin McCormick Legal Instruments Examiner Robin McCormick Legal Instruments Examiner Evelyn Rabin (NAA, Patent Advisor SA, & Biotech) Evelyn Rabin (NAA, Patent Advisor SA, & Biotech) AA Gail Poulos AA (SAA) Supervisory Patent Advisor (SAA) AA Gail Poulos AA (SAA) Supervisory Patent Advisor (SAA) Kelli Gantt Patent Assistant Kelli Gantt Patent Assistant Vacant Patent Assistant Vacant Patent Assistant Patent Staff Peoria, IL Albert Tsui Patent Advisor (MWA & NPA) Albert Tsui Patent Advisor (MWA & NPA) Randy Deck Patent Advisor (SPA & MWA) Randy Deck Patent Advisor (SPA & MWA) Sheri Whitehurst Legal Instruments Examiner Sheri Whitehurst Legal Instruments Examiner Robert Jones Patent Advisor (SAA) Robert Jones Patent Advisor (SAA) Technology Transfer Coordinator Staff Tara Marostica Tech Tran Assistant Tara Marostica Tech Tran Assistant Annetta Ebelhar Tech Tran Assistant Annetta Ebelhar Tech Tran Assistant James Poulos DAA BA, Tech Tran Coordinator James Poulos DAA BA, Tech Tran Coordinator Dolores Shilkitus Tech Tran Assistant Dolores Shilkitus Tech Tran Assistant Bryan Kaphammer DAA NPA/SPA, Tech Tran Coordinator Bryan Kaphammer DAA NPA/SPA, Tech Tran Coordinator Don Nordlund DAA SAA Tech Tran Coordinator Don Nordlund DAA SAA Tech Tran Coordinator David Nicholson DAA PWA, Tech Tran Coordinator David Nicholson DAA PWA, Tech Tran Coordinator Jason Bray Tech Tran Assistant Jason Bray Tech Tran Assistant Vic Chavez DAA NAA, Tech Tran Coordinator Vic Chavez DAA NAA, Tech Tran Coordinator Kristin Kimball Tech Tran Assistant Kristin Kimball Tech Tran Assistant Thomas Valco DAA MSA Tech Tran Coordinator; Cotton Thomas Valco DAA MSA Tech Tran Coordinator; Cotton Renee Wagner DAA MWA, Tech Tran Coordinator Renee Wagner DAA MWA, Tech Tran Coordinator Kim Garner Tech Tran Assistant Kim Garner Tech Tran Assistant Babette Davis Tech Tran Assistant Babette Davis Tech Tran Assistant Joe Lipovsky SRRC, Assoc. Tech Tran Coord. Joe Lipovsky SRRC, Assoc. Tech Tran Coord. Vacant Assoc. Tech Tran Coord. Vacant Assoc. Tech Tran Coord. James McMurtrey Licensing Assistant James McMurtrey Licensing Assistant

6 Historic ARS Contributions Remarkable discoveries ARS Scientist Dr. Theodore Diener working in Beltsville, Maryland discovered the viroid, a singled- stranded, circular RNA molecule. Robert W. Holley discovered a class of low molecular ribonucleic acids -transfer ribonucleic acids (tRNAs). These are carriers for amino acids during protein synthesis. Robert Davis discovered spiroplasmas, a previously unrecognized life form. A form of bacteria without cell walls, spiroplasmas cause diseases of crop plants and of insects including honey bees and are suspected in some human maladies. He also discovered pathogens against this life form.

7 Historic ARS Contributions creation of industries USDA botanist Frederick Coville started the world’s first successful blueberry research program. Blueberries are the second most popular berry in the United States. A multi-million dollar industry USDA Participated in restoring the flavor and aroma lost during vacuum evaporation of concentrated orange juice. This a multi-billion dollar industry. USDA Scientist Bill Doane cross-linked starch and synthetic polymers creating industry based on super absorbency. -- A multiple billion dollar industry.

8 ARS Contributions Future industry? USDA scientists created economical methods for extracting latex from guayule plants. Yulex is based in Carlsbad, Calif. It Just acquired $8 million in additional venture funding.

9 Technology Transfer Goals of ARS Transfer of technology is primary objective, not income Facilitate research partnerships & adoption of federal research outcomes for broad U.S. public benefit Protect (patent) intellectual property primarily if it enhances technology transfer, Enhance U.S. economic development, global competition, and sustainable economic security

10 Technology Transfer Mechanisms Scientific publications, conferences, workshops, field days Public germplasm releases National Agricultural Library Information Staff - ARS public affairs, Ag Research Magazine, news releases, exhibits, web page. Transferring research materials to non- USDA scientists Research Partnerships CRADAs Patenting / Licensing

11 Cooperative Research and Development Agreement CRADA partners a Govt. lab scientist with an outside partner No Direct funding to Govt lab Mutually beneficial research Within goals of ARS Expected outcome is intellectual property

12 Cooperative Research and Development Agreement CRADA Can lead to an exclusive license in technology Confidentiality up to five years A positive weighing factor in award of USDA SBIR Patent expertise

13 To partner with economic development entities to enhance the effectiveness & impact of technology transfer. To enhance the flow of ARS technologies to small businesses & encourage technology-based economic development.

14 ATIP Network

15 David Nicholson - PWA Bryan Kaphammer - NPA / SPA Renee Wagner - MWA Victor Chavez - NAA Thomas Valco - Cotton Technology Donald Nordlund - SAA / MSA James A. Poulos, III- BA

16 David Nicholson – PWA Renee Wagner - MWA Bryan Kaphammer - NPA / SPA Thomas Valco - Cotton Technology Victor Chavez - NAA Donald Nordlund - SAA / MSA James A. Poulos, III BA

17 Goals of ATIP Provide complementary assets to ARS Guide local / regional business with research needs to the appropriate ARS scientist across ARS (CRADA opportunities) Triage business plans of private sector to seek well-qualified candidates for licensing / research partnerships with ARS Acquire marketing assessments on ARS technologies from 3 rd party sources (business schools, entrepreneur programs, angel investors, etc.) for targeted marketing Coordinate “Technology Showcase” events to facilitate partnerships with private sector companies

18 National Patent Committees Three “Subject Matter” Committees Life Sciences Chemical Mechanical & Measurement Meet quarterly

19 Q1 : Is there current commercial interest in the invention or a high probability of commercialization in the future? Patent Committee Criteria

20 Q1 : Is there current commercial interest in the invention or a high probability of commercialization in the future? Q2: Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent? Patent Committee Criteria

21 Q1 : Is there current commercial interest in the invention or a high probability of commercialization in the future? Q2: Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent? Q3: Would the patent likely play a significant role in transferring the technology to the user? Patent Committee Criteria

22 Q1 : Is there current commercial interest in the invention or a high probability of commercialization in the future? Q2: Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent? Q3: Would the patent likely play a significant role in transferring the technology to the user? Q4: Would a patent be enforceable, i.e., is the invention drawn to, or does it employ a unique and readily identifiable material or device which could be bought or sold? Patent Committee Criteria

23 Q1 : Is there current commercial interest in the invention or a high probability of commercialization in the future? Q2: Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent? Q3: Would the patent likely play a significant role in transferring the technology to the user? Q4: Would a patent be enforceable, i.e., is the invention drawn to, or does it employ a unique and readily identifiable material or device which could be bought or sold? Q5: Is the invention of sufficient scope to justify patenting? Patent Committee Criteria

24 Some FY 2008 Metrics Licenses (302 active) Universities – 122 (40%) Non-profits – 16 (5%) Small Businesses – 100 (33%) Foreign businesses (no U.S. presence) – 8 (3%) Large businesses (includes foreign multinationals with major U.S. presence) – 56 (19%) CRADAs (232 active) Small businesses – 127 (62%) Outside state of researcher – 155 (72%) Out of ARS Area of researcher – 129 (60%)

25 Current Research of conducted at BARC Pheromone extraction and identification Honey bee protection Agricultural plastics –PLA and keratin Genomic Research –chickens, Cattle and pigs and plants Food safety

26 Questions ???

27 Thank you


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