oric training program nust. presenters ms. eram zaidiip manager, nust
TRANSCRIPT
ORIC Training Program
NUST
Presenters
Ms. Eram Zaidi IP Manager, NUST
Publish or Perish Mindset
Select Research
Topic
Study Existing Literature
Develop your Idea
Conduct Research
Work in lab (if necessary) Write Paper
Submit to a Journal
Review Process
Paper Approved for Publication
COMMERCILIZATION ?
RESEARCH PHASE
PUBLICATION PHASE
IDEA PHASE
Publish and Patent Mindset
Select Research
Topic Study Prior Art
Develop your Idea
Conduct Research
Work in lab (if necessary)
Write Paper
Submit to a Journal
Review Process
Paper Published
RESEARCH PHASE
IDEA PHASE
PUBLICATION AND IP
PROTECTION PHASE
Study Existing Literature
Draft Patent
File Patent Patent Granted
Technology Transfer
Invention Disclosure
Business Plan
Firms $ 65.2 B
$29 B
$6.3 B$2 B
$99.8 BGB 5.3 B
$10.7 B
$26 B
1.9 B Euros
Faculty/Student Inventors
John HennesyMIPS
Sergey Brin and Larry PageGoogle
John Livil Transistors
William E. SpicerSemiconductors
Thomas J Fogarty M.D.
Minimally invasive surgery, Invention and Innovation,
Robotic Surgery
Put idea in practice
Broad Adoption by Society
Learn from Prior Art
Garden of Forking Paths
Problem Discovery
Aha Moment!
Develop the Innovative Idea
NovelNon-ObviousUtility
Two Different Belief Systems
• Innovation is a by-product of a proper environment, therefore, influence and control the environment:– Examples: Sun, Google, Yahoo, Microsoft, Cisco
• I’ve a vision, I’ve the Money, and I am in Control here– Examples: Walt Disney, Sony, NTT Docomo,
Apple, Pixar, Facebook
Types of Intellectual Property
• Trade Secrets• Copyrights • Trademarks• Patents
Trade Secrets
• Not known to public• Provide economic benefit to its holder• Reasonable effort being made to maintain its secrecy
“Merchandise 7X” Formula
Kentucky Fried Chicken Recipe
Copyrights• Original works of authorship• Exclusive rights to publish, distribute, and adapt• Rights are licensable and transferable• Durations: 50-70 Years after creator’s death• Fair Use Doctrine:
– Purpose/intent of use; nature of work; portion of the original work used; and potential effect on market value of the original
Trademarks• A Distinct sign:
– A name, word, phrase, logo, symbol, design, image, or a combination of these elements.
• Used by an entity, e.g., a Business or organization• Identifies either a product or a service• Process for obtaining a trademark:
– Interstate Commerce– Use in Commerce– Difference between and
Patents
• Patents encourage innovation• Bargain: Monopoly with duration vs. public good• Property rights to the inventor• Patent Types (Provisional vs. Non-Provisional):
– Utility Patent: product, machine, a process, or even composition of matter, 20 years from date of filing
– Design Patent: only appearance, only 1 claim, 14 years– Plant Patent: only one claim, 20 years
• Writing a Patent:– Abstract, Diagrams, References,
(Patents and other References),Description (Background, Summary,Brief Description of Diagrams,Detailed Description of PreferredEmbodiments, Claims
NOVELNON-OBVIOUS
UTILITY
Class Assignment
The “Bayh-Dole Act”
• In order to motivate inventors and universities, in 1980 the US Government passed The Bayh-Dole Act.
• This act enabled Universities to own inventions made with government funds
• It also required that Universities share royalties with inventors
• Universities were encouraged to collaborate with industry– Preference in licensing to small business
• Exclusive licensing was allowed– Preference for U.S. industry
Results of the Bayh-Dole
• Numbers of University Technology Transfer offices increased• Numbers of patents increased• Level of licensing increased• Universities were forced to develop new policies, one of
which was “Revenue” sharing with inventors
Technology Transfer
• Technology Transfer is the process of facilitating the relationship between academia and industry, allowing ideas to flow or be transferred both ways and resulting in the development of technologies.
• Technology Transfer is the process of taking an invention from laboratory to industry
The Core Technology Transfer Documents• Invention Disclosure Form• Inventor Assignment Form• Confidentiality Agreements• Term Sheet • Inter-Institutional Agreements (Term Sheet) • License Agreements• Option Agreements• Patents
– Provisional applications– PCT applications– National applications– Issued patents
Structure of A License Agreement Introduction
Definition
Grant
Royalties
Representations and Warranties
Term and Termination
Assignment and Transfer
Miscellaneous Terms
Signatures
Commercial Spin offs
• Company needs to register with the SECP• Type of Companies:• Single Member Company• Private Company• Public Company• Holding Company• Association (Section 42 Non-Profit)
View of University Technology Transfer
Researcher/ Inventor
IPO
Non-disclosure agreementDisclosure of InventionIP FilingIP management
EDC
Become an entrepreneurDevelop skills for entrepreneurshipLearn how to write Business plans
Transfer of Technology
Start up Company
Start an Incubatee company at TIC
Technology Licensing
Pre-MarketingTechnology Assessment
Industrial Collaboration
Final Product In the Market
MarketCommercialization
Funding Opportunities