1. 1 University Based Technology Transfer Steve Bauer Director, RERC on Technology Transfer State of the Science Conference RERC on Advancing Cognitive Technologies Barriers to the Flow of Intellectual Property October 25-26, 2007 Denver, Colorado

2. 2 Acknowledgements NIDRR RERC on Advancing Cognitive Technologies –Cathy Bodine, Michael Lightner RERC on Technology Transfer –UB colleagues & friends

3. 3 Patents and Trademarks Act Governing legislation –Nonprofits receiving federal $ (universities+) –Assigns IP ownership to non-profits Objectives –utilization of Federal R&D inventions –small business benefitting from Federal R&D –collaboration of nonprofits and private sector –increase competition and enterprise –commercialize Federal R&D inventions

4. 4 Patents and Trademarks Act Assignee responsibilities –disclose assignment to funding agency –seek patent protection for invention –grant non-exclusive rights to funding agency –commercialize invention –cannot re-assign invention –share royalties with inventor Public benefit… NOT university enrichment

5. 5 TTO Metrics Royalties+ # Licenses # Equity Positions # Patents # Patent Applications # Market Reports # Disclosures (Faculty) Corollaries: home runs, large & known markets, health sciences & engineering, IP gatekeepers…

6. 6 AUTM 2004 Annual Survey 196 universities 96 of 100 top universities 84.5% of respondents (196 of 232) $40.2Btotal revenue $27.6Bfederal65.7% $2.9Bprivate 7.2% [25%] $1.4B royalty+ 3.5% 9.6~1.0 total > federal > private > license

7. 7 Business Metrics Students Faculty Infrastructure Collaborative research (non-IP) Consortia (IP) Technology –licensing –start ups Reference: AUTM 2006, U. Minnesota Manufacturer Survey In all cases, IP needs to be resolved up front

8. 8 Faculty Metrics Research Funding –State & Federal –Corporate Publications Patents… Tenure Teaching Mentorship Service Recognition NOT disclosures NOT intellectual property NOT business culture NOT startups NOT SBIR/STTR Disclosure ~ conference paper? Patent ~ journal paper? License ~ grant?

9. 9 Recommendations University –new success metrics (total > private/public > royalty), combine TTO & SR, TTO (service provider), faculty AND corporations (customers), new TTO funding formula Faculty –new faculty metrics, regular proactive communication, teach (business culture, disclosures, intellectual property, business start up, SBIR/STTR…) Disclosure –short, lay, market, technology, competition, IP, business plan, contact, references

10. 10 Recommendations Companies –adopt company metrics, establish network, regular proactive communication, practice business culture, all sizes & types, champion Brokering –inventor > direct marketing > reputable journals >> other Intellectual property –adopt due diligence (intent of B.D.), patent, don’t fight over “new” IP (with companies, other universities)

11. 11 Recommendations Licensing –exploratory, access to inventor Development –SBIR/STTR, R&D facilities, on campus R&D, incubators, start up funding, non-IP R&D, consortia Other –knowledge & experience, contracts & collaborations business, technical, market… legal

12. 12 Questions? Thank You!