technology and economic development intellectual property issues in research jim baker director...

Technology and Economic Development

Intellectual Property Issues in Research

Jim Baker

Director

Office of Technology and Economic Development

[email protected]

7-2228


Objectives

Inform researchers on issues related to intellectual property in research.Relevant laws, policies, and rationale for

University approach to IP rights.Basics of patenting, commercialization, and

patent licensing.Relationship of IP rights to general progress and

advancement of academic research programs.Breadth versus depth – follow up for details.


Outline

BackgroundTerminologyUniversity PoliciesFederal Rules

Federal Contracting Issues Industrial Contracting IssuesPatent Commercialization and Licensing BasicsUsing IP to grow your Research Program


Terminology

Ownership Sole control of an asset (Intellectual Property (IP) in this context). Subject to any legal encumbrances.

License The right to use an asset/IP.

Exclusive License A license under which the licensor agrees to not provide licenses

to any third party.

Non-Exclusive License A license under which the licensor reserves the right to provide

licenses to third parties.


University Policy - Objectives

Board Of Control Policy 18.1.1:“The research objectives of Michigan Technological University are:

1. To encourage scholarship and to assist and improve education.

2. To discover and disclose new knowledge.

3. To promote the utilization of new discoveries for the public benefit.

4. To aid, encourage, and support industry, particularly within Michigan.

5. To support the research objectives of State and Federal agencies.

The University supports research for these stated objectives and not merely because the ideas involved may be potentially profitable.”


University Policy Highlights – IP Protection and License Revenue

“The University may claim patent and/or proprietary rights where a concept is reduced to practice with the use of University facilities or in the course of employment.” (18.1.4.b)

“The University will seek a patent when it is judged to be an appropriate and effective means of disseminating knowledge or of promoting the utilization of new discoveries for the public benefit.” (18.1.2.b)

“If the University receives any royalty and/or other income from the sale or licensing of any patent or other proprietary rights, it will provide, consistent with the other provisions of this policy, a share of any royalties and/or other income received by the University for the inventor or inventors,” (18.1.2.c)


University Policy HighlightsContract Requirements and Exemptions

Contract Requirements “The University will state the terms and conditions of

proprietary rights in every research contract that is negotiated” (18.1.4.a)

Exemptions “The University may claim no equity in inventions developed

without the use of its funds, facilities, or equipment.“ (“funds” includes grant funds) (18.1.4.b)

“Books, articles, manuscripts, and works of art (except to the extent that they contain proprietary information related to inventions or computer software) are not included in this policy.” (Operating Procedure 11.1)


Relevant Federal Rules

37 CFR 401 (Bayh-Dole Act)Universities own inventions created from work

sponsored by the federal governmentIRS Revenue Procedure 2007-47 (Tax

Free Bond Act)Prohibits use of tax-exempt financed buildings

for “private use”Private use includes transferring IP ownership

to sponsors at less than market value


Federal Contracting Issues

Bayh-Dole provides the University with ownership of inventions

Simplifies contracting but comes with conditions Legal and contractual obligations to disclose

inventions to the funding agency. Obligation to pursue commercialization

in the United States with a preference for small businesses if possible.


Industrial Contracting Issues

University owns project generated IP University grants sponsors:

A royalty-free right non-exclusive license.The first option to a royalty bearing exclusive

license.Tax-free bond act generally prohibits

transfer of ownership and up-front designation of license terms.

Research rights/Freedom to operate


Technology Commercialization Process

Enablement

Demonstration

Development

Pro

babi

lity

of S

ucce

ss

Effort/Time

Idea Invention Patent License

Invention Disclosure

Commercialization Stage

Commercialization Steps


Starting the Process

Invention Disclosure Form at www.ted.mtu.edu/forms

…but we will take draft publications, proposals, theses/dissertations, etc.

Describe as many technical details as possible – enable someone to reproduce the invention.

Identify applications and potential partners if possible.


Technology Assessment

Technical maturity What needs to be done to reach the market What are the related research needs/opportunities

• Patentability• Is the invention ‘enabled’ – can it be reproduced

• Will a patent impact our ability to attract research funding and commercial partners.

• Market• Is there sufficient probability and magnitude value of

revenue (research or royalty) to justify the investment.


Leveraging IP for Research

Technology commercialization produces funding opportunities:Corporate partner research sponsorshipFederal Small Business Innovation and

Technology Transfer Research (SBIR/STTR)

Private InvestmentSpecialized technology gap fundsBusiness plan competitions


Example of Research and Commercialization Alignment

Discovery from federal research that has potentially significant public benefit and commercial potential. $20k proof of concept study

Michigan Universities Commercialization Initiative (MUCI). $60k next stage proof of concept

Funded by MUCI Support letter from private sector partner.

$230k validation study $70k MUCI $160k from private sector partner with an option to license technology

$230k development/further research NIH STTR Phase I $110k subcontract to Michigan Tech

Currently preparing ~$1M NIH STTR Phase II $370k subcontract to Michigan Tech


Example Outcomes to-date

~ $420,000 in sponsored research3 years Ph.D. student funding2 years lab tech funding

2 publications in preparation4 published conference proceedings$20,000 in royaltiesEquity in startup company (indeterminate value)


Funding Opportunities

Early stage technologies Funding available through traditional research

funding programs

Mid-stage technologies Technology gap funds SBIR/STTR – need corporate partner

You can create that partner or we can seek one out

Startup company with private investment

Demonstrated Technology Corporate sponsored research and development


Michigan Tech Experience Base

Michigan Tech is a national leader in: Proportion of research sponsored by industry Number of license agreements per dollar of research Number of invention disclosures per dollar of research

As a result we have staff experienced in: Appropriate contract term negotiation Managing conflicts of interest Startup business development Commercialization planning and implementation


Questions


Contact Information

Jim BakerDirector, Technology and Economic Development

[email protected]

www.ted.mtu.edu

technology and economic development intellectual property issues in research jim baker director...

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