1. Intellectual Property 101
Chase Kasper, Director
Office of Technology Development

2. IP: a very Brief History
Trademarks have been traced back as far as the Roman Empire.
Modern day patent system began in Europe in the 15th Century
In the United States, the Patent Act of 1790 was the first federal patent statute. The Copyright Act was established in the same year.
The Patent Office (later the “USPTO”) was established in 1836.
In 1946, the Lanham Act defined trademark protection and registration.
Modern Patent Law is established in 1952.
Copyright Act of 1976 established a single federal system.
In 1980, the Bayh-Dole Act is established.
In 2011, the Leahy-Smith America Invents Act (AIA) is enacted.

3. BAYH-DOLE ACT (37 C.F.R. 401)
Established in 1980, this act permits universities, small businesses or not-for- profit institutions to elect title of an in invention that is created under federal research funding and grants.
Transition results of research out for “public benefit”
Gives U.S. universities control of the intellectual property rights related to inventions resulting from federal-government funded research.

4. BAYH-DOLE ACT (37 C.F.R. 401)
Universities began to add “technology transfer offices” (TTOs) which were spun out of Sponsored Programs offices
Synonymously known as:
Technology Transfer Office (TTOs)
Technology Licensing Office (TLOs)
Office of Technology Commercialization (OTCs)
Office of Technology Development (OTDs)
Office of Intellectual Property (OIPs)

5. Basic Research

6. INVENTIONS and discoveries

7. Technology-related activity (FY2012)
$63.7B total sponsored research expenditures
23,741 Invention disclosures received
22,150 U.S. patent applications filed
$345M in external legal fees paid
5,130 licenses executed ($2.6B in royalty income)
705 companies formed (554 in their “home” state)
591 new commercial products created
Source: FY2012 AUTM U.S. Licensing Survey

8. National Ratios
1 Invention disclosure per $2.8M in R&D expenditures
<1 patent application per invention disclosure
1 in every 4.6 disclosures is licensed

9. University Technology transfer
Research
Disclosure
Review / Evaluation
Protection
Marketing
Licensing
Development / Revenue

10. SOURCES OF LEADS for licenses
Inventor %
Marketing by TTO %
Company called Univ %
Research sponsor requested license 7%
Unknown %
Source: Jansen & Dillion, “Where Do the Leads Come From? Source data from 6 institutions” Journal of AUTM, 11, 1999

11. QUESTIONS / Issues
Is this product/invention patentable or protectable?
Is there a market for this invention?
Can we find a business interested in licensing, developing and commercializing this technology?
Can we start a new company around the technology?
Are there available dollars to help further develop the inventive technology?

12. WHY IP matters Intellectual property is an asset!
- It can be monetized…and it can be stolen…
Can create a competitive advantage for a company or an industry
Fosters innovation and generates additional research and development
Contributes to the ongoing economic development and welfare of our state, our country, and our world

13. considerations for commercialization potential
Describe Product/Technology
Attributes/Features/Qualities
Benefits to end user/Uniqueness
Stage of Development
Feasibility Analysis/Prototype/Test/Production
Intellectual Property Position
Source of Technology
Third Party Substantiation/Credibility
Who are your competitors?
What is their respective market share?
What is your competitive advantage?
Patent protection? Other barriers to entry?
How will you maintain this advantage?

14. INDUStry / investor Views
“In any deal, no technology was the same at the end as it was in the beginning.”
“If you can’t protect it, you’ve got a problem.”
“Best way to kill opportunity is for PI to say: ‘I don’t need to disclose to the university.’”
“Scientific breakthrough ≠ Commercial opportunity”
“Triaging and protecting technologies are the biggest challenge.”