Industry – University Transactions: Protecting Competitive Corporate Advantage Varda N. Main Director, Technology Licensing Rochester Institute of Technology Industry – University Transactions Committee LES 2002 Annual Meeting

V.N. Main – LES 2002 Annual Meeting The Collaboration Has Started – Now What? Deal compliance and administration – Differing roles and responsibilities University partner Corporate partner

V.N. Main – LES 2002 Annual Meeting Deal Administration: University Responsibilities Bayh-Dole Act – When federal funds paid (in whole or in part) for development of IP University needs to notify federal sponsor when inventions arise (typically within 2 months of disclosure to university by inventor) University needs to elect title to the invention from the federal sponsor University needs to make a timely first patent filing after electing title University cannot assign federally-funded IP to other than a patent management agency

V.N. Main – LES 2002 Annual Meeting Patenting of Arising IP What are the patent decision processes and authorities – within the university? – within the corporation? What are the respective time frames for patenting decisions?

V.N. Main – LES 2002 Annual Meeting Patenting of Arising IP Who should control the patent application preparation and prosecution? How should patent expenses be handled?

V.N. Main – LES 2002 Annual Meeting Proprietary Information: Handling and Term of Protection How are parallel projects handled in the university lab? Will student assistants be available throughout the project’s duration? When will they graduate?

V.N. Main – LES 2002 Annual Meeting Timing of Disclosures 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

V.N. Main – LES 2002 Annual Meeting Timing of Disclosures and Needs of Students 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

V.N. Main – LES 2002 Annual Meeting Universities Understand Corporate Needs Confidentiality Broad, strong patent protection Maintaining competitive advantage Time to market