New Faculty Orientation February 9, PDF Free Download

New Faculty Orientation February 9, 2011

What is IURTC? Indiana University Research and Technology Corporation IURTC Non-profit corporation founded by Indiana University Purpose: To manage and market IU intellectual property (IP)

Who is IURTC? President and CEO Finance Contracts Admin Patent Attorney No photo available Brian Cholewa Vice President of Technology Commercialization Tony Armstrong Marie Kerbeshian Vicki Montgomery Tina Wilson No photo available Jenny Sonafrank Technology Managers Bill Brizzard Doug Bodde Cathy Farmer Brad Fravel Matt Rubin Jeremy Schieler Dave Wilhite Bloomington Indianapolis

How can we help you? IURTC Patentability determination Market assessment Conception of invention Reduction to practice Draft and file patent applications Participate in patent prosecution Ensure licensee is being diligent Help ID potential licensees or CEO Market IP Negotiate & license IP R&D, market, FDA, sales, etc. Product benefits the general public Financial reward for inventor, lab, and IU

How does the disclosure/evaluation process work? Disclosure Case manager Assessment Discuss results Jointly decide how to proceed

Disclosure What should you disclose? New inventions the discovery or creation of a new material (either a new manufactured product or a new composition or matter), a new process, a new use for an existing material, or any improvements of any of these. Biological Materials Cell lines Antibodies Genetic material Transgenic animals Copyrights Software Copyrights created by IU faculty and owned by IU

Manager assignment and assessment Disclosure Assessment Case manager Cathy Farmer Brad Fravel Matt Rubin Jeremy Schieler Dave Wilhite http://innovate.indiana.edu/iurtc/ 278-4100

Patentability IURTC Patentability assessment Conception of invention Reduction to practice R&D, market, FDA, sales, etc. Product benefits the general public Financial reward for inventor, lab, and IU

What is a patent? According to the USPTO A patent is grant of a property right to the inventor, issued by the USPTO Three types of patents: Utility-for the discovery of a new and useful process, machine, article of manufacture, composition of matter or any new and useful improvement thereof Design-for the invention of a new, original, and ornamental design for an article of manufacture Plant-for the invention or discovery and asexual reproduction of a distinct and new variety of plant Valid in the US and US territories Term is for 20 years from the time of file

Patentability Legal matter: Patentable subject matter Anything under the sun that is made by man Can t patent abstract ideas, laws of nature, or natural phenomena Useful New Non-obvious Reduction to practice

Why patent? Exclude others from: Making Selling Using Importing

Market/Technology Assessment IURTC Patentability determination Market assessment Conception of invention Reduction to practice R&D, market, FDA, sales, etc. Product benefits the general public Financial reward for inventor, lab, and IU

Market/Technology Assessment What s the technology/invention? Product New drug or biologic, monoclonal antibody for research, device (e.g. drugeluting stent), etc. Process Synthetic method for making an FDA approved drug, method for making nanoparticles used in an orthopedic device, etc. Service Analytical services (e.g. MS, NMR, sequence analysis), business consulting, regulatory consulting, etc.

Market/Technology Assessment What stage of development is the technology at? New mouse trap (idea, drawings, prototype) Drug (target, small molecule screen, animal studies)

Why does stage of development matter?

Market/Technology Assessment What is/are the application(s)? Was the technology invented to solve a specific problem? Are there additional applications (e.g. mouse trap that will also catch rats)? Solution in search of a problem? Segway personal computer phonograph

Market/Technology Assessment What are the advantages and disadvantages of the technology? New mouse trap that does not kill the mouse Advantages: Animal rights coalition will like Less mess Disadvantages: Repeat customers Have to deal with releasing a live mouse

Technology Assessment Is there a substitute? New smart phone Windows, Google, Apple, Palm, etc. New ED drug Cialis, Levitra, Staxyn, and Viagra New drug for treatment of COPD that stops the progression of the disease.

Market/Technology Assessment Summary What is the technology? What stage is the technology at? What are the applications? What are the advantages and disadvantages? Who are the potential licensees?

Discuss results IURTC Patentability determination Market assessment Conception of invention Reduction to practice R&D, market, FDA, sales, etc. Product benefits the general public Financial reward for inventor, lab, and IU

Decision process Disclosure Case manager Assessment Discuss results Jointly decide how to proceed

Next step IURTC Patentability determination Market assessment Conception of invention Reduction to practice Draft and file patent applications Participate in patent prosecution R&D, market, FDA, sales, etc. Product benefits the general public Financial reward for inventor, lab, and IU

Drafting and filing a provisional patent application Case manager Patent attorney Inventor

Patent timeline Disclosure 0 3 6 9 12 15 18 21 24 27 30 33 36 39 42 45 (Months) Provisional Patent PCT Patent Application National Patent Appl. Cost ~$4,000 ~$10,000 ~$10,000-$50,000/country Who pays? IURTC IURTC-Licensee Licensee

Next step IURTC Patentability determination Market assessment Conception of invention Reduction to practice Draft and file patent applications Participate in patent prosecution Help ID potential licensees or CEO Market IP R&D, market, FDA, sales, etc. Product benefits the general public Financial reward for inventor, lab, and IU

Commercialization roadmap Known Company Contacts None Non-confidential Discussions Confidential Discussions High interest Moderate Interest Company Internal Analysis Technology Customization And Collaborative Development License and Product Sales Revenue

Starting a company CEO University does not allow faculty members to serve as CEO Funding Seed funds Angel investors Venture capital Licensing Negotiate Diligence

Licensing/commercialization is simultaneous with patenting Disclosure 0 3 6 9 12 15 18 21 24 27 30 33 36 39 42 45 (Months) Provisional Patent PCT Patent Application National Patent Appl. Patent process Non-confidential Discussions Confidential Discussions Company Analysis License Negotiation Clinical Trials / Product Sales Market development

Benefits of successful licensing and commercialization Share of licensing income: Academic Administration Net Revenue Creators Labs Campus Units University 35% 15% 15% 35% IURTC New research collaborations Sponsored research Invention is publicly used

Practical IP tips

A word about public disclosure Public disclosure: any communication, verbal or written, that allows someone else to reproduce your invention. Examples: Publishing Poster presentation Seminars Non-confidential conversations outside the university Student thesis

How to get people interested without publicly disclosing Discuss the benefits of what you are doing without divulging the HOW. Examples: Increased efficiency Increased efficacy Decreased toxicity

Research contracts Intellectual property clauses in research contracts should be reviewed by IURTC The Office of Research Administration should also review the agreement SRSinfo@iupui.edu P: 278-3473 Please request that IURTC included in the review process

Contact information: Knowing the intricacies of technology development and commercialization is our job. We are always willing to answer any questions related to technology development and commercialization. http://innovate.indiana.edu/iurtc/ jsonafra@iupui.edu P: 274-5905

Questions??