The Intellectual Properties Committee at the University of Kentucky Bruce Webb IPC Chair

Who/what is the IPC? – A faculty committee from Colleges producing most IP disclosures at UK – Members identified in consultation with college Deans of Research – Ex Officio: Don Keach, Katherine Adams, Taunya Phillips – Supporting Staff: Mariam Gorjian, Sabrina Darnell, Natasha Jones,

Current IPC Members (voting) Czar Grofcheck – Biosystems and Agricultural Eng. Todd Hastings – Electrical Engineering Eric Munson –Pharmaceutical Sciences Brian Rymond - Biology Peter Spielman – Molecular and Cellular Biochemistry Bruce Walcott – Electrical and Computer Engineering Karyn Esser – Physiology Craig Vander Kooi – Molecular and Cellular Biochemistry Bruce Webb – Entomology, Chair

Why do we have an IPC? The University’s administrative regulations provide for the IPC To protect the University’s interest in IP To serve inventors and facilitate IP development

What does the IPC do? Authorize UK Intellectual Properties Development Office (IPDO:Don Keach) to spend funds to protect UK IP Decision based on patentability, commercial potential and UK ownership The IPC provides periodic advice to the University administration in IP matters and a faculty voice in this area

IPC process - Assessment Inventor discloses technology through Inventor Portal – triggers assessment meeting Inventor contacted to schedule assessment meeting (Mariam Gorjian and IPC member) Objectives of assessment meeting are to: – Develop an understanding of the technology – prepare a ‘lean assessment’ – Explore commercialization potential and inventor plans to commercialize – Answer inventor questions

IPC Process: Administrative Action Administrative Action used when a clear decision is evident Positive recommendation 1.IP related to IP already being protected by the University 2.IP protection that is being funded by another party Negative recommendation 1.IP has been disclosed by inventor and cannot be protected under current law. 2.IP that does not belong to the University

IP Process: Committee Review IPC Chair contacts inventors to schedule presentations (~1 week before meeting) and provide a ‘presentation template’ Inventor presentations scheduled at 20 minute intervals – 15 minute inventor presentation and Q&A; 5 minute deliberation and vote – Committee votes to – Protect IP – Motion A – Release IP – Motion B – Come Back – Motion C

IPC Process: Motions Motion A. Protect. University has ownership and should seek appropriate IP protection (68%) Motion B. Release. University has ownership but should not protect IP; University does not have ownership; IP cannot be protected (28%) Motion C. University has ownership but the technology is not sufficiently developed to protect (4%)

IPC Process: the meaning of appropriate. It depends – Develop and file a patent – Seek a patentability opinion and then decide whether or not to file – Provisional patent Immediate filing Delay filing provisional File and let provisional expire

IPC Process: Factors in IPC Decisions Patentability as perceived by the committee Potential for cost recovery – Commitment of inventors to commercialization – Engagement of potential sponsors – External funds to cover patent costs – Market size and significance of IP Value to the University and/or faculty inventors

IPC: Post Meeting – Letter sent to inventors informing of committee decision – Letter contains standard language that protects any future IP by specifically stating that: Inventor designation has a particular meaning If released, the release applies only to the disclosed technology Informs the inventors that they will be contacted by a patent attorney who will assist them with preparing the patent – This normally marks the end of IPC role

The IPC has a dual role IPC members are sympathetic to inventors and supportive of commercialization of University IP The IPC serves the University interests by – Providing technical expertise to University IP decisions – Protecting the University’s IP interests – Serving as stewards of University resources

Limitations of the IPC Administrative charge is to authorize University expenditures to protect IP – The IPC has no role in commercialization Faculty volunteers Administrative engagement Resources – Von Allman Center (Mariam Gorjian) – Intellectual Property Development Office

Questions? Contact information Bruce Webb IPC Chair Mariam Gorjian Commercialization Specialist

IPC Process Inventor Disclosure Assessment Administrative Action or Committee Review Protect (A) Release (B) Do More Work (C) (IPDO) (IPDO) (come back to IPC) Communicate Decision to Inventor Contact Bruce Webb Mariam Gorjian