1. Intellectual Property and the Graduate Student Presentation to Agricultural and Biosystems Engineering March 28, 2003 Kenneth Kirkland, Ph.D. Executive Director, Iowa State University Research Foundation, Inc. Director, Office of Intellectual Property and Technology Transfer Phone: (515) 294-4740 Email: kenk@iastate.edukenk@iastate.edu www.iastate.edu/~isurf

2. ISURF/OIPTT 2 Organization Iowa State University Research Foundation, Inc. (ISURF) Office of Intellectual Property and Technology Transfer (OIPTT) The Foundation was incorporated in 1938 as the Iowa State College Research Foundation to protect and license intellectual property developed by faculty, staff, and students ISURF is a not-for-profit corporation ISURF owns and manages intellectual property for ISU. Intellectual property ownership is assigned to ISURF according to university policies by inventors or creators who are employees* of the university. OIPTT markets and licenses the intellectual property assigned to ISURF * Faculty, staff, graduate assistants, postdoctoral fellows, and visiting scholars and scientists

3. ISURF/OIPTT 3 ISURF/OIPTT Facts and Figures FY02 budget of $3.3M 13 professional staff including 5 FTE for licensing 100 invention disclosures received in FY02 29 patents issued in FY02 30 patent applications filed in FY02. In addition, 34 provisional applications were submitted. 287 license agreements executed in FY02 ISURF has 416 royalty-generating agreements in place Total licensing income in FY02 was $11.4M

4. ISURF/OIPTT 4 Importance of University Licensing (AUTM Statistics 2000) Technology transfer plays an important role in the U.S. Economy Sales of licensed products $35B Investment by licensee companies $5B 270,000 jobs supported University activity (142 in U.S.) 368 start ups formed 3,272 US patents issued $1.1B in royalty income (< 4% of research expenditures) Importance of Bayh-Dole Universities can take title in IP developed under federal funding Can grant exclusive licenses

5. ISURF/OIPTT 5 What Is Intellectual Property (IP)? Inventions covered by patent protection Works of authorship protected by copyright (including software) Proprietary materials such as software, biological materials, materials with potential commercial value, and trademarks

6. ISURF/OIPTT 6 What Is A Patent? A legal document Grants inventor the right to exclude others from making, using, selling or importing the described invention (a legal monopoly) The most common form of patent is the utility patent which provides protection for a term of 20 years from filing A U.S. patent does not give protection to the invention overseas

7. ISURF/OIPTT 7 Requirements For A Patent The invention must be new. Other people cannot have used it or known about it before its invention. The invention must be non-obvious. It cannot be evident to another person skilled in the same field as that of the invention. The invention must be useful

8. ISURF/OIPTT 8 What Is Copyright? An exclusive right granted by the federal government to the owner of an original work of authorship to do and to authorize others to reproduce, distribute, perform and/or display the protected work Term of protection is life plus 70 years for an individual and 95 years from the publication date for an organization (or 120 years from the creation date, whichever is longer) Copyright protection is used primarily for books, plays, video performances, movies, sculptures, paintings, musical recordings, musical compositions, software and multimedia works

9. ISURF/OIPTT 9 What Is A Trademark? A trademark includes any word, name, symbol, or design adopted and used by an individual or organization to distinguish its goods from those of others The term of protection for a trademark is indefinite as long as it remains in regular use Trademarks can be registered federally and/or in individual states

10. ISURF/OIPTT 10 What Is Know-How? A body of knowledge outside the public domain that has commercial value, for example, a laboratory technique Know-how can be licensed out just like other forms of IP, that is, provision for its use may be included in a license agreement

11. ISURF/OIPTT 11 What are Trade Secrets? When an inventor does not wish to share certain information with the public, that information may be kept as a trade secret Trade secrets, are a fragile form of IP protection even though they have an unlimited lifetime if not disclosed The university is seldom, if ever, involved with trade secrets Classic example is the Coca-Cola recipe

12. ISURF/OIPTT 12 Benefits of Protecting Intellectual Property Companies have an incentive to invest in the technical and market development required to get a product in the marketplace Inventors and ISU receive recognition IP Protection preserves the rights of the inventors and the university to control the technology: Prevents the inappropriate use of the technology Ensures the use for the public good Ensures continued use for research at the university Income can be generated for all parties – companies, inventors and the university

13. ISURF/OIPTT 13 Sharing of Income ISURF shares the economic benefit of any IP with those who are recognized inventors; uses some of the income to pay legal, patent and administration costs; and reinvests a portion of the income for further research Net royalties are divided equally among: Inventor(s) – inventors agree among themselves at to how their royalty income is to be apportioned College – free to use their portion as they choose ISURF – uses their portion for IP and tech transfer activities

14. ISURF/OIPTT 14 Funding Requirements and Our Obligations Due to Federal Agency regulations: The university is obligated to have written agreements with its faculty and technical staff requiring disclosure and assignment of inventions. The university has an obligation to disclose each new invention to the federal funding agency within two months of receiving the invention disclosure. THEREFORE, inventors should make a prompt disclosure of all IP to ISURF to fulfill our obligations to the funding sources, and to ensure that the IP is properly protected before a public disclosure occurs.

15. ISURF/OIPTT 15 Public Disclosure Concerns A public disclosure can be in the form of: a publication (includes on-line information), oral presentation, poster display, samples, and/or prototypes, a sell or an offer to sell the technology, or if the technology is used commercially. In order to be a public disclosure, the information must be considered “enabling”. If someone skilled in the art can read your description of the technology and reproduce the invention, then the description is termed enabling.

16. ISURF/OIPTT 16 Things to Remember Before Public Disclosure File an invention disclosure through ISURF before any public disclosure. Try to give at least one month’s lead time if possible to allow ISURF to review the disclosure and, if appropriate, file a patent application. A Confidentiality Agreement and/or a Material Transfer Agreement can be sent out by ISURF to prevent a public disclosure. Do not provide “enabling” information to anyone not covered by a Confidentiality Agreement. When in doubt, mark all information “Confidential” – especially when submitting proposals!

17. ISURF/OIPTT 17 What Happens if a Public Disclosure Occurs? If your invention is publicly disclosed anywhere in the world even one day before you file a patent application, you lose the right to obtain a valid patent in most countries of the world, even though you might be able to obtain a U.S. patent. If a public disclosure occurs, then you have one year from the public disclosure date to file a patent application in the U.S. Patent and Trademark Office.

18. ISURF/OIPTT 18 U.S. Patent and Trademark Office Example of Patent U.S. PTO website: http://www.uspto.gov/ Good for literature searches – easy patent search capabilities Review competing technologies Search for possible collaborators See what other researchers are pursuing

19. ISURF/OIPTT 19 Procedure for Intellectual Property Protection Potential IP is identified by the inventor(s) through a written disclosure form to ISURF. The disclosure form can be downloaded from the website: www.iastate.edu/~isurf OIPTT / ISURF evaluates the IP disclosure for its inventorship and ownership rights, IP protection and commercial potential. The inventors are included in this process.

20. ISURF/OIPTT 20 Procedure for Intellectual Property Protection If the decision is made to file a patent, the inventor(s) is asked to provide all pertinent information and data. A patent law firm is then identified to handle the application. The inventor(s) is asked to work with the patent attorney to prepare the best patent application possible. The inventor(s) will be asked to assist with responses to office actions from the patent office, until the issuance of a patent.

21. ISURF/OIPTT 21 Licensing of Intellectual Property During the ongoing patent prosecution, a licensing associate from OIPTT conducts a preliminary market analysis for the technology. The inventor(s) plays a key role in assisting the licensing associate in writing a marketing description and provides advice on targeting the IP to specific companies. OIPTT will begin marketing efforts, which might include targeted emails and an in-depth industry survey. The marketing descriptions are also placed on the ISURF/OIPTT website: www.iastate.edu/~isurf www.iastate.edu/~isurf

22. ISURF/OIPTT 22 Licensing of Intellectual Property Contact between the company and inventor may be arranged, once a Confidentiality Agreement is signed. If the company is interested in developing the technology, an option or license agreement may be negotiated, which may or may not include further research funding into the university. The license, either exclusive or non-exclusive, gives specific rights for the licensee company to make, use and sell the invention. A license may extend a few years or for the life of the patent.

23. ISURF/OIPTT 23 Licensing of Intellectual Property Since ISURF’s mission is to get the technology used, licenses always contain “due diligence” provisions. If the company has not commercialized the technology within a certain period of time, or fails to pay royalties due, then ISURF may terminate the license or convert an exclusive license to a non-exclusive. No two licensing agreements are alike.

24. ISURF/OIPTT 24 Marketing and Licensing Summary During FY02, OIPTT made over 1500 contacts with companies concerning technologies available for licensing ISURF returned $2.7M to ISU from its operations in FY02. These monies were comprised of grants, royalty sharing to academic units and research income from licenses. The university’s allocation to support ISURF/OIPTT’s operations was $188K. Since 1990, we have licensed to 37 Iowa-based startup companies Second among U.S. Universities in number of licenses executed in FY01 Number one among land grant universities in licenses and options executed per $10M research expenditures in FY01 and second in the nation.

25. ISURF/OIPTT 25 Selected Contacts at ISURF/OIPTT Executive Director – Ken Kirkland, Ph.D. Invention Disclosures – Lynne Mumm lmumm@iastate.edu 294-4742 lmumm@iastate.edu Licensing Associates: Cheryl Kamman - Material Sciences & Chemistry  kamman@iastate.edu 294-7707 kamman@iastate.edu Eddie Boylston -Engineering  latinusb@iastate.edu 294-3621 latinusb@iastate.edu Todd Headley - Life Sciences  theadley@iastate.edu 294-4470 theadley@iastate.edu

26. ISURF/OIPTT 26 Questions?