ADVICE TO UNC INVENTORS(Worth what you have paid for it)

Collin McKinneyUNC Department of Chemistry

Electronics Design Facility

Advantages of Disclosure/Patenting

• Obvious:• Royalties

40% to Inventor(s)20% to OTD40% to Inventor’s Department

Advantages of Disclosure/Patenting

• Obvious:• Royalties• Protection of concept(s)/provides value

Advantages of Disclosure/Patenting

• Obvious:• Royalties• Protection of concept(s)/provides value• Fame

“Wall of Patents” Courtesy of Dr. Joseph D. Simone

Advantages of Disclosure/Patenting

•Non-Obvious:• Controlled dissemination of new technologies• Ability to make technology available to outside labs for validation • Promotes industrial collaboration

Case Study: The Universal Electrochemistry Instrument (UEI)

A Tale of Hardware, Software, and Animals

The Mark Wightman Group

Things Done Wrong:• Software IP (copyright) was released to student by University because it was thought to have no value outside one or two research labs.• Result: ESA – Magellan Bioscience purchased rights to software from student. UNC Hardware useless without software!• Result: UNC is funding a rewrite of the software in order to regain control.

Things Done Right:• All hardware IP disclosed to OTD (many parts not patentable)• Result: ESA licensed hardware “know-how” from UNC .

• OTD negotiated license that contained an abandonment clause that returns IP rights to UNC.• Result: When Magellan chose to change the strategic direction of ESA and they partially abandoned the project, UNC could continue producing hardware for other labs.

UEI Case Study

Case Study: FAIMS Power Supply

A Tale of Ions, Traps, High Voltage, and NO Animals (Thank goodness!)

10-60pf variable capacitors

Ferrite core transformers

Driver circuits

(Field Asymmetric Ion Mobility Spectroscopy)

The Gary Glish Group

Things Done Right (So Far):• Hardware IP disclosed to OTD.• Provisional Patent Filed.• Result: Bruker Daltronics has funded the construction of two more power supplies and has an option to license if their experiments succeed.

FAIMS Case Study

Case Study: DRE(Dynamic Range Extender for NMR)

The NMR Facility

Probe

Preamp SummingJunction

Attenuator AmplifierMixer

Local Oscillator

AmplifierMixer

Local Oscillator

LP Filter ADCAmplifier

OverloadDetector

DAC

ADC

DSP

NMR SystemController

Trigger Out

Trig

MixerLocal Oscillator

600 MHz FID

Baseband FID

Things Done Right (We Hope):• Hardware IP disclosed to OTD – Basic Concept Only.• Provisional Patent Filed.• Result: Ability to talk more freely with potentially interested parties and colleagues. Applying for UNC internal funds for proof of concept. Undergraduate student applied and obtained funding to work on project. Will apply for SBIR/STTR funds if proof of concept successful. Must file patent in one year.

DRE Case Study

Summary• Disclose all concepts regardless of perceived value at the time of inception.• Update OTD file as changes or improvements are made – keep good notes!• Use non-disclosure agreements prior to patent submission to protect concepts.• Keep track of the market potential and applications as the concept is refined.• Develop contacts with potential collaborators or customers as market develops.