3 Office of Technology Transfer (OTT) Staff In-house Technical ExpertiseLife SciencesComputer ScienceElectrical EngineeringChemistry
4 GMU OTT GoalsContribute to the image of a research university through visibility of resultsFulfill expectations of faculty, students, and political, business and community leadersFacilitate application of university research to economic and social developmentFacilitate strong corporate relationsSatisfy obligations under Bayh-Dole Act of grants universities title to inventions conceived and developed with federal research fundingU.S. manufacturer for the U.S. marketGovernment march-in-rightsGovernmental non-exclusive, royalty fee licenseCreate revenue for the university
5 GMU OTT Roles Develop and Administer Policies Create an Environment to Foster DisclosureIdentify and Assess Intellectual Property (IP)Protect IPMarket IPLicense IPMaintain License RelationshipsReport and Disseminate Success Information
6 GMU OTT ConstraintsExpectation that Technology Transfer Offices will fuel economic developmentPublic institutions as stewards of taxpayer dollarsState wants to see dollars stay in-stateIssues Imposed by VA Attorney General’s OfficeIssues Imposed by VA Appropriation CommitteeVA Appropriation Committee – VA’s legislative body that sets aside a sum of money for public purpose
7 Solution to GMU OTT Constraints Pays for patent costsConducts licensingAppears to be a complicated process but it allows for flexibility
8 Tech Transfer Fundamentals So, what is Tech Transfer?A vehicle for delivering research and innovations to the public that incorporates 2 major areas:IP ProtectionCommercialize ($$$)
9 I. IP Protection Protectable Subject Matter Patents Copyrights Trademarks
10 Brief Summary of Protectable Subject Matter Patent (***Utility***)CopyrightTrademarkWhat is protected?Device, Composition, or ProcessExpression, not ideasSource-indicating word, symbolCriteria for protection?Utility, Novelty, Non-obviousness, and EnablementOriginalityDistinctivenessTo obtain protection…File patent appl’n with USPTOFixate expression on a tangible medium; file application with Copyright OfficeUse in commerce; file trademark appl’n with USPTOProtects Against…Manufacture, use, sale, offer to sale, or import of claimed subject matterUnlawful copyingConfusing and/or disparaging useDuration of Protection20 years from filing patent application subject to renewal(Generally) Life of author + 70 years, not subject to renewalContinuous with use and subject to renewal
11 Patents The U.S. Constitution grants U.S. patent rights. “Congress shall have the power …to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective inventions and discoveries.”U.S. Const., Art. I, § 8
12 Public Policies Underlying Patent Law Benefit the public by providing the prompt disclosure of new inventions to the public(in exchange for)Provide inventors and businesses with an incentive to innovate, by creating a legal right to exclude others from making, using or selling an invention for a limited time.
14 Limitations of Patents GeographicallyU.S. patents are limited to the U.S. and its territoriesU.S. patents cannot be enforced outside the U.S.TermUtility – 20 years as of the filing dateDesign – 14 years from the date the patent issuesPlant – 20 years from the filing date
15 What is patentable?Any new and useful process, machine, manufacture or composition of matterAny new and useful improvement thereof
16 What is not patentable?A mere idea (e.g. law of nature or principle) without application.Pure mathematical algorithms (e.g., E = mc2).An inoperable device (e.g., perpetual motion machine).An obvious improvement of an old device.
17 Some “interesting” patents U.S. Pat. No. 4,809,435 – “Eating Utensil” Date of Patent: Mar. 7, Inventor: Gerald L. PrintzBendable fork where the ends can be used as chopsticks
18 Some “interesting” patents U.S. Pat. No. 5,934,226 – “Bird Diaper” Date of patent: Aug. 10, 1999 Inventors: Lorraine Moore, Mark Moore, Cely GironMark (Navy) and Loraine – both ODU alumni; Local Business: Avian Fashions, 44 Mine Road, Suite 2-347, Stafford, VA 22554
19 Ex. Shortest Chemistry Patent Claim U.S. Pat. No. 3,156,523 – “Element 95 and Method of Producing Said Element” Date of patent: Nov. 10, 1964Inventor: Glenn T. SeaborgWhat is claimed is:1. Element 95.Transuranium elements are not naturally occurring and are thus man-made and patentable; Seaborg also discovered Curium, Berkelium, Californium, Einsteinium, Fermium, Mendelevium, Nobelium, Seaborgium
20 What are the requirements for a patent? The invention must be:Useful (35 U.S.C. § 101);New (35 U.S.C. § 102);Nonobvious (35 U.S.C. § 103); andEnabling (35 U.S.C. § 112)
21 Useful (Utility)The invention must contribute to society, a foundational requirement of the patent system.To accomplish this requirement, it must have a practical application.
22 New (Novelty - Not previously known) The invention must NOT have been :known or used by others;described in a printed publication;used in public; oron saleNote: In the U.S., the inventor must NOT have disclosed his/her own work for >1 year before the filing of the patent application.
23 Nonobvious A patent may not be obtained … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains.
24 Example of Nonobvious The Invention A transgenic mouse (rodent/mammal) comprising Gene X fused to Promoter A, wherein X is overexpressed and the mouse (rodent/mammal) has a useful phenotype.Reference 1Discloses that when Gene X is fused to Promoter A, X is overexpressed in cells in tissue culture.Reference 2Discloses a transgenic mouse comprising Gene S under the control of Promoter A. The mouse has NO useful phenotype.Arguments?
25 EnablingEnablement – must teach others how to make and use the invention (consider it as a blueprint)Written Description – must describe the inventionBest Mode – must disclose the best way of making the invention
26 Foreign Patents Patent Cooperation Treaty (PCT) provides central filing and searching of application but examination is carried out by each countrymany countries have an “absolute novelty” requirementPublic disclosure anywhere in the world (e.g., public use, commercial sale, etc.) prior to the filing of the patent application = no patentEvery country has a different patent system, but may share priority date under Paris Convention
27 Foreign Patents Advantages Protect local market Block competitor DisadvantagesMust have agent in each country to prosecuteCan be costly and/or difficult to monitor
28 Inventorship v. Authorship Defined as who conceived the ideaNot defined as who conducts experimentation or gathers data under the direction of anotherApplies mostly towards patentsAuthorshipwriting or information embedded on a tangible medium (includes ideas, experimentation, data, results, photos, etc.)Applies mostly towards copyrights
29 Technology Developed with Sponsored Funds Federal Funds –Bayh Dole Act of 1980Must be reportedAbsolute obligation to discloseObligation to patent & commercializeIndustry FundsContract clauses likely to govern treatment of patentsDisclosure RequirementsPublication ReviewJoint Invention?Bayh-Dole Act – gave univ., small businesses and nonprofits IP control over inventions resulting from fed funding; must share royalties with inventors; govt retains nonexcl, nontransferrable, irrevocable paid-up license to practice or have practice the invention throughout the worldFederal Funds – OBLIGATION to disclose
30 GMU Patent Policy For GMU patent policy, please see:
31 II. CommercializationTechnology AssessmentMarketingLicensing
32 A. Technology Assessment Technology’s Developmental StageMore of a concept or more towards reality?Sufficient data?Prototyped?Anticipated technological acceptance in themarketplace?Faster or “better” is not always readily embraced with open arms
33 B. Marketing Examples of OTT’s Efforts Identify potential applications for the technologyResearch the industry (e.g., major and minor players)Presentations to potential licensees and entrepreneursConferences/exposNetworkPost technology on websites
34 Mechanisms for Technology Transfer C. LicensingMechanisms for Technology TransferNon-Exclusive LicenseExclusive LicenseNote:Generally OTT does NOT transfer title b/c:We need to ensure that technology is used, not shelvedWe need to maximize fields of use and markets servedFor start-ups, we want to keep control in the event of bankruptcy
35 C. Licensing Goals for License Deal Fields of use - apply technology in as many market sectors as possibleDiligence requirements in product development and sales goalsCreate revenueCreate jobsMake certain the technology is usedGenerate support for new researchEducate the public with advanced technology
36 C. Licensing Forms of revenue License Fees (Upfront or Recurring) Due Diligence FeesEquityMilestone PaymentsRoyaltiesRoyalties (after reimbursable expenses)Current Royalty Income Allocation (as of 8/23/89)*Inventors50%GMU*
37 Examples of GMU Startups Mineral Sciences LLC“Synthetic Nanoparticle Soil Materials”
38 Examples of GMU Startups Global Water Systems“An Iron Composition Based Water Filtration System for the Removal of Chemical Species Containing Arsenic and Other Metal Cations and Anions”
39 OTT Open House Open House on Fridays, 9AM - 12PM Obtain and a completed Preliminary Disclosure Form to David Yee or any other OTT staff memberSet up appointment with Gloria GarciaPhone: (703)Come in