Untying the Gordian Knot: Providing Order in the Invention Disclosure Process
Workshop Topics 1. Inventor Relations 2. Technology Scouting 3. Crafting Disclosures Processes 4. Disclosure Evaluation and Assessment IC 2 Global Commercialization Group acknowledged for some slide materials. 2
Technology Commercialization Process TECHNOLOGY TECHNICAL ASSESSMENT MARKET Concept Proof-of-Concept Technical Assessment & Intellectual Property Strategy Market Strategy License LICENSE Target Licensees Marketing Prototype License Hold Drop/ Release* START-UP Start-Up Entrepreneur * Release requires inventors to agree to policy requirements Target Investors Investor Discussions Start-Up Hold 3 Drop/ Release*
Inventor Relations
Inventor Relationships How many faculty are in your university? How many research professors, post-docs, graduate students? How many of these do you personally know or personally know you? How many are interested in the commercialization process? How many have you engaged with this process? 5
Inventor Relations University of California at Davis InnovationAccess 6
Faculty Relations Educate them on your process Ask a lot of questions Learn from them, they are educators Communicate 7
Clarity in Purpose About Us UC Davis InnovationAccess is part of the Office of Research. We provide services that connect research to the marketplace and are focused specifically on protecting and commercializing intellectual property, and fostering entrepreneurship within the campus community. Our team is comprised of more than 15 professionals with PhDs, JDs, and MBAs with significant private sector experience and focus on: Technology Transfer: We evaluate and patent inventions from UC Davis faculty, researchers, and staff, and license those inventions for commercialization in the private sector, in order to benefit the public. Business Development: We help develop strategic research alliances with industry; provides commercialization support for early-stage UC Davis technologies; and supports entrepreneurship and UC Davis originated start-up companies. 8
Information for Inventors Activity Center Information Center Startup Successes Faculty Roadmap for a Start-up Company Best Practices for Inventors IP Management at UC Davis The Licensing Process Post-licensing Activities Marketing UC Davis Technology Industry University Collaboration Guide The Digital Millennium Copyright Act (DMCA) Copyrights UC and UC Davis trademarks Policies Web Resources 9
Clearly Stated Scope of Service 10
Sponsor Conferences An intensive, one-day program exclusively for UT faculty Complimentary/By invitation only Presented by the Office of Technology Commercialization, The University of Texas at Austin Friday, October 14, 2011, 8:30am-6:30pm Registration and continental breakfast - 7:30-8:30am AT&T Executive Education and Conference Center About the program Startup to IPO: Building for Success is the kickoff program in the 2011-2012 Colloquium on Commercialization. Learn, get inspired, and network. This full-day program, featuring discussions by attorneys, investment bankers, entrepreneurs, and venture capitalists, will provide insight into creating and sustaining quality companies. Topics will include patents, corporate legal, financing, and a walkthrough of the basic lifecycle of a startup through IPO. A cocktail reception and networking following the event will provide UT faculty a face-to-face opportunity to discuss challenges and key lessons with the speakers and panelists. 11
Discussion Topic What is working for you? 12
Technology Scouting
University Community Outreach Inventor referrals One-on-one faculty meetings Department presentations Lab presentations Inventor recognition events Promotional items (calendars, notepads, USB hubs) 14
Inventor Referrals Will eventually be your most effective method of outreach Survey inventors to ensure you are providing what the inventors expect If you survey be certain to follow-up on survey responses 15
One-on-One Faculty Meetings Meet with new and existing research faculty to introduce your office Explain the value of working with you and why it will be an easy process Meeting with faculty one-on-one is time consuming, but a productive approach if you want to target specific faculty 16
Educational Presentations Choose specific topic (patenting, startups) or talk about your office in general Choose audience, based on topic and goal Advertise campus-wide events via email and campus newspaper Add external speakers for campus-wide events to draw larger audience 17
Inventor Recognition Event for all inventors submitting disclosures Present issued patent plaques Short presentations by startups Recognition of biggest money makers Some Institutions have financial incentives for disclosures 18
How to Become Aware of Inventing Faculty and Researchers Constraints of the PCT Rules and America Invents Act 2011 Publications, Abstracts, Presentations Discussions with Provosts, Deans, Vice Presidents, others Circulate in the halls of research Special programs Other 19
Discussion Topic What is working for you? 20
Practical Exercises 21
Crafting Disclosure Processes 22
Submission of the Disclosure Paper disclosure form Web disclosure form Completing form with the inventor 23
Paper Disclosure Form Pros More familiar for some inventors Easier for several people to work on Cons More difficult to update Inventors don t complete all the data TTO has to re-enter the data after it is received 24
Completing Form with Inventor Helpful in education process May motivate the inventor to disclose May be the only way to get the inventor to disclose in the beginning! 25
Example Disclosure Form Review Handout: Disclosure of Invention 26
Basic Disclosure Information Other innovators or possible inventors? Was it published? Is it scheduled to be published? Technical description Related patent information Potential licensees 27
Some Disclosure Questions What is the purpose of the invention? What are the advantages and improvements on existing methods? What critical commercial problem does this solve? 28
Material Is part, or all, of the invention material that can be transferred to a licensee? Who will generate the material? When patent and material are licensed, is there a separate cost for generating the material? If combining patent and material, address separately in the license? 29
Communication Regardless of disclosure type, communication is key. Let the inventors know from the start: When the disclosure has been received What the next step will be When the next step will happen 30