NCI Technology Transfer Branch: RAID, Intellectual Property, and Technology Transfer Agreements
Technology Transfer from A-Z!
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Transcript of Technology Transfer from A-Z!
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
Bruce Clary Assistant DirectorUniversity of Florida
Bruce Clary Assistant DirectorUniversity of Florida
• 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
The University of Florida
State’s largest University
• 52K Students• 16 Colleges• 150 Research
Centers/Institutes• AAU
• 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.
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
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.
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.
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.
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.
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)
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)
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
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
Conducting the Oral Disclosure Meeting
Conducting the Oral
Disclosure Meeting
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
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
Now….once you’ve done your prior art search and
determined you believe this is patentable…..
Now….once you’ve done your prior art search and determined you believe this is patentable…..
Just because you determine you CAN patent doesn’t mean you should!
Just because you determine you CAN patent doesn’t mean you should!
Just because you determine you CAN patent doesn’t mean you should!
Assisting with Faculty Startups• Start-ups are often the most appropriate (only)
vehicle to bridge the technology gap
Assisting with Faculty StartupsStart-ups are often the most appropriate (only)
vehicle to bridge the technology gap
Science
ProductsTechnology
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
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
University of Florida Technology Licensing Team
University of Florida Technology Licensing Team
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.)
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.)
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.
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.
Thank you!
Thank you!
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