Technology and Economic Development Intellectual Property Issues in Research Jim Baker Director...
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Technology and Economic Development
Intellectual Property Issues in Research
Jim Baker
Director
Office of Technology and Economic Development
7-2228
Technology and Economic Development
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.
Technology and Economic Development
Outline
BackgroundTerminologyUniversity PoliciesFederal Rules
Federal Contracting Issues Industrial Contracting IssuesPatent Commercialization and Licensing BasicsUsing IP to grow your Research Program
Technology and Economic Development
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.
Technology and Economic Development
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.”
Technology and Economic Development
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)
Technology and Economic Development
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)
Technology and Economic Development
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
Technology and Economic Development
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.
Technology and Economic Development
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 and Economic Development
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
Technology and Economic Development
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 and Economic Development
Technology and Economic Development
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.
Technology and Economic Development
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
Technology and Economic Development
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
Technology and Economic Development
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)
Technology and Economic Development
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
Technology and Economic 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
Technology and Economic Development
Questions
Technology and Economic Development
Contact Information
Jim BakerDirector, Technology and Economic Development
www.ted.mtu.edu