Technology Transfer from A-Z!

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Technology Transfer from A-Z! Presented by Bruce Clary John Byatt Assistant Directors University of Florida Office of Technology Licensing

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Technology Transfer from A-Z!. Presented by Bruce Clary John Byatt Assistant Directors University of Florida Office of Technology Licensing. Technology Transfer from A-Z!. Presented by Bruce Clary John Byatt Assistant Directors University of Florida Office of Technology Licensing. - PowerPoint PPT Presentation

Transcript of Technology Transfer from A-Z!

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Technology Transfer

from A-Z!Presented by

Bruce Clary

John Byatt

Assistant Directors

University of Florida

Office of Technology Licensing

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                                                                            Technology Transfer from A-Z!

Presented by

Bruce Clary

John Byatt

Assistant Directors

University of Florida

Office of Technology Licensing

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Bruce Clary Assistant DirectorUniversity of Florida

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Bruce Clary Assistant DirectorUniversity of Florida

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• The state’s largest university, (and one of the nation’s largest), enrolls approximately 52,000 students per year.– 16 colleges– 150 research centers/institutes– Since 1985, a member of the

Association of American Universities (AAU) – the top 60 public and private U.S. institutions.

The University of Florida

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The University of Florida

State’s largest University

• 52K Students• 16 Colleges• 150 Research

Centers/Institutes• AAU

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• Approximately 5,000 faculty members with distinguished records in teaching, research and service;

• More than 60 Eminent Scholar chairs;

• Nearly 60 faculty elections to the National Academy of Sciences, Engineering, or Arts and Science, the Institute of Medicine or a counterpart in a foreign nation.

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5,000 distinguished faculty60 Eminent Scholar Chairs

Nearly 60 faculty elections to:

National Academy of Sciences, Engineering, or Arts and Science,

The Institute of Medicine or a counterpart in a foreign nation

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What is technology transfer?

Wikipedia’s definition:

Technology transfer is the process of sharing of skills, knowledge, technologies, methods of manufacturing, samples of manufacturing and facilities among governments and other institutions to ensure that scientific and technological developments are accessible to a wider range of users who can then further develop and exploit the technology into new products, processes, applications, materials or services.

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What is technology transfer?

Technology transfer is the process of sharing of skills, knowledge, technologies, methods of manufacturing, samples of manufacturing and facilities among governments and other institutions to ensure that scientific and technological developments are accessible to a wider range of users who can then further develop and exploit the technology into new products, processes, applications, materials or services.

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Priorities for Technology Managers/Licensing

Officers• Faculty service

– Open door, proactive faculty service approach

– Learn how to tell faculty in a positive way their baby is ugly and your resources are limited

• Ability to project patent related expenses and work under a budget

• Income generation– Number of deals, license fees/royalties

generated, reimbursement of patent expenses all important.

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Priorities for Technology Managers/Licensing

OfficersFaculty service

Open door, proactive faculty service approach

Learn how to tell faculty in a positive way their baby is ugly and your resources are limited

Ability to project patent related

expenses and work under a budget

Income generation

Number of deals, license fees/royalties generated, reimbursement of patent expenses all important.

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Evaluating new technologies: How Does It Work at UF?

Idea

InventionDisclosure

Form

WrittenDisclosure

OralDisclosure

Exert

WaiveOTL Explores Patentability & Marketability

OTL Seeks Licensee & Makes Patent

Decisions

(120 Days)

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Evaluating new technologies: How Does It Work at UF?

Idea

InventionDisclosure

Form

WrittenDisclosure Oral

Disclosure

Exert

WaiveOTL Explores Patentability & Marketability

OTL Seeks Licensee & Makes Patent

Decisions

(120 Days)

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UF Disclosure Review• Disclosures are reviewed monthly in Office of

Technology Licensing based on:– interested potential licensee(s)– US and foreign patent opportunities– potential market size, penetration, returns to UF– administrative complications– enforceability

• Office of Technology Licensing options– Accept UF’s right to the technology– Waive UF’s right to sponsoring agency or inventor– Incomplete disclosure requiring further input

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UF Disclosure ReviewDisclosures are reviewed monthly in Office of Technology Licensing based on:

• interested potential licensee(s)

• US and foreign patent opportunities

• potential market size, penetration, returns to UF

• administrative complications

• enforceability

Office of Technology Licensing options

• Accept UF’s right to the technology

• Waive UF’s right to sponsoring agency or inventor

• Incomplete disclosure requiring further input

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Conducting the Oral Disclosure Meeting

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Conducting the Oral

Disclosure Meeting

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Points UF considers when reviewing a new disclosure for

patentability…any Public Disclosure

Public disclosure can include:Publications in open literature Poster Sessions & Abstracts Presentations to open forum Can be personal communications without some

confidentiality agreement Catalogues and libraries

Primary discriminations are: Good faith attempt to maintain secrecySubstantiality of material disclosed

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Points UF considers when reviewing a new disclosure for patentability…

any Public Disclosure

Public disclosure can include:Publications in open literature

Poster Sessions & Abstracts

Presentations to open forum

Can be personal communications without some confidentiality agreement

Catalogues and libraries

Primary discriminations

are: Good faith attempt to maintain secrecy

Substantiality of material disclosed

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Now….once you’ve done your prior art search and

determined you believe this is patentable…..

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Now….once you’ve done your prior art search and determined you believe this is patentable…..

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Just because you determine you CAN patent doesn’t mean you should!

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Just because you determine you CAN patent doesn’t mean you should!

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Just because you determine you CAN patent doesn’t mean you should!

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Assisting with Faculty Startups• Start-ups are often the most appropriate (only)

vehicle to bridge the technology gap

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Assisting with Faculty StartupsStart-ups are often the most appropriate (only)

vehicle to bridge the technology gap

Science

ProductsTechnology

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Critical Elements-Technology transfer expertise – UF Tech Connect housed in OTL

• UF Tech Connect program fosters new business creation at UF

• Matches researchers with potential management • Assists in business plan creation and market feasibility

studies• Provides training for “wanna be” entrepreneurs• Introduces funding opportunities through VC and angel

network introductions• Measure based on jobs & private investment

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Critical ElementsTechnology transfer expertise – UF Tech Connect housed in OTL

UF Tech Connect program fosters new business creation at

UF

Matches researchers with potential management

Assists in business plan creation and market feasibility

studies

Provides training for “wanna be”

entrepreneurs

Introduces funding opportunities through VC and angel network

introductions

Measure based on jobs & private

investment

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University of Florida Technology Licensing Team

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University of Florida Technology Licensing Team

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Most important things to remember about this

presentation…• Faculty service is our #1 priority! Without them we

wouldn’t have any technology to transfer so have an open door policy, be responsive and communicate with them regularly!

• Set expectations to faculty according to your resources….be aware of other resources on campus who can help them if you can’t

• Use effective time management. Find the right balance on how to divide your time up in a day’s work: Example: 25% new disclosure review, 50% licensing, 25% other (marketing, prosecuting patents, negotiating other agreements, etc.)

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Most important things to remember about this

presentation…Faculty service is our #1 priority! Without them we wouldn’t have any technology to transfer so have an open door policy, be responsive and communicate with them regularly!

Set expectations to faculty according to your resources….be aware of other resources on campus who can help them if you can’t

Use effective time management. Find the right balance on how to divide your time up in a day’s work: Example: 25% new disclosure review, 50% licensing, 25% other (marketing, prosecuting patents, negotiating other agreements, etc.)

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And last but definitely not least,UF is also well known for its

Athletics!• Victories include 26 national

team championships and more than 200 individual national titles;

• UF is the first university in history to win national football and men’s basketball titles in the same year (2006);

• UF won back-to-back national championships in men’s basketball in 2006-’07.

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And last but definitely not least,UF is also well known for its

Athletics!Victories include 26 national team championships and more than 200 individual national titles;

UF is the first university in history to win national football and men’s basketball titles in the same year (2006);

UF won back-to-back national championships in men’s basketball in 2006-’07.

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Thank you!

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Thank you!

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