IP Overview for Alberta Heart

Jayant KumarJoanna Preston

Reg Joseph

TEC Edmonton is a joint venture between

A Joint Venture

TEC Edmonton is…

• the technology transfer agent for the University of Alberta and

• the commercialization service provider for the Greater Edmonton region.

TEC Edmonton is…A technology & business accelerator that

• optimizes return on Intellectual Property (IP)

• provides expertise and tailored advice • connects with facilities, granting agencies,

financing and management resources and

• transforms advanced technology into licensing opportunities and corporations

Executives-in-Residence

IP Experts

Market Analysts

Grant Specialists

Entrepreneur Advocates

Communication and Marketers

Finance and Legal Advisors

TEC Edmonton is a Team of

Intellectual Property (IP) Protection

Copyright

Trademark

Trade secrets

Patents

Copyright

• A tangible expression of an idea (e.g. music, publications, software)

• Automatically vests in the author, except for “work made for hire”

• Registration is not required but must be obtained in order to claim damages

• © Smith and Company, 2009

Copyright (cont’d)

• Inexpensive• Duration: typically life of author + 50

years in most countries (US: life + 70 years)

• Moral Rights – can be waived, but never assigned/ licensed

• Fair Dealing

Trademarks

Trade names – University of Alberta, Monsanto, Coca-Cola, Roundup Ready, Nike, coined names vs. descriptive names

Service mark – logos: Golden Arches, Nike Swoosh

Trade dress – packaging: Coca-Cola bottle, Booster Juice cup

• Need not be registered: ™ vs. ®

Trade Secrets

• Usually associated with a method or a formulation – (e.g. Coca-Cola formula, KFC

spices)• Value is in secrecy

Patent• A Patent is a right granted by the

government to the inventor “to exclude others from making, using or selling the invention.”

• General categories of inventions:– Product or device: mechanical device– Process: method of refining

petroleum– Composition of matter: alloys, drugs– Design: paper clip– Improvement of the above

Patent Criteria

• Must be novel: cannot be described anywhere in the public domain

• Must be useful: it must perform a function

• Must be non-obvious: an inventive step vs. a logical progression

Patent Specifics

• Must be registered: Provisional Formal/PCT National

• Prosecution: office action, issuance, maintenance

• Only valid in the country in which the patent is granted

• Valid 20 years from filing date

Challenges to Patenting

• Loss of rights due to public disclosure: scientific publication, newspaper article, etc. (grace period of 1 year in U.S. and Canada)

• Very expensive ~ US$250,000 worldwide

• Time consuming: up to 5 years• Only 1-3% of patents are

commercialized

First Stage - Discovery Report of Invention

If you have an invention, contact TEC Edmonton before

public disclosure.

Examples of public disclosure include:• Oral/poster presentation at a conference• Abstract or a manuscript publication

• Technology Evaluation

• Prior obligations search• Is it a new invention – are there

existing patents?

• Market Analysis

• Is there a market for this invention?

Evaluation Timeline: • Within 30 days of receiving the

Report of Invention TEC will contact you on the IP evaluation

Second Stage - Evaluate

Prior Obligations

Pre-existing contractual obligations may impact the ability to protect and commercialize inventions

CDA / NDA = Confidential or Nondisclosure Agreement

MTA = Material Transfer Agreement

CRA = Contract Research Agreement

Material Transfer Agreements

Academic transfers: • usually simple• MTAs required for all transfers

Compounds or biological materials from companies:

• MTAs can contain problematic IP and publications clauses

TEC will negotiate terms to ensure rights are protected

Third Stage - Protect

• Protection Timeline:– Filing for patents: within 60 days (of receiving

ROI)– Patent publication: 18 months from filing – Patent awarded: can take up to 5 yrs or more

Fourth Stage – Commercialization Strategy • Technology License

• Market to Companies

• Negotiate Agreements

• Company Development

• Corporate Management

• Negotiate Agreements

Collaboration between TEC Edmonton and UTI

Suggested Model:

• IP handled in accordance with the IP policies of institutions

• Scientific Lead Institution takes commercialization lead• Lead agent initiates IP protection, marketing, licensing• Out of pocket costs to be shared between the institutions• Revenue sharing by institutions based on contributions

Commercialization Process

Technology

FacilitiesNetworks & Connections

Financing

People & Expertise

Company

Business Services

TEC Edmonton’s ServicesBusiness Development

• Advice, mentoring

• Regional connections

• Business planning

• Incubation space

• Corporate management

• Market analysis

• Financing preparation

• Prizes (cash and in-kind)

Company Development

STRENGTHS• Control• More long term revenue• Diversification of the economy• Sustainability

WEAKNESSES• Risk• Longer term to revenue• Time commitment• Financing

TEC Screening Process

Gate 2 – Primary Evaluation

Gate 3 – Due Diligence

Gate 1 – Strategic Fit

Portfolio

Stage 1First Contact

Stage 2Lead Identification

Stage 3Qualified Lead

Stage 4Portfolio Company

Inventions from UofA

“Mining” the region for opportunities

Company Development Success Stories Working closely with Dr. Halloran”s spinoff

company - TSI, TEC Edmonton’s EIR and market analysts are developing a strategy to capitalize on opportunities - contract research services to pharmaceutical and biotech companies, new diagnostic systems and products, and licensing opportunities for the company’s unique database.

Mission Possible - “Shaheel provided frank feedback, mentorship and has constantly challenged us as entrepreneurs to refine our business strategy and product development plan.” Ken Bautista, CEO of Seek Your Own Proof

Partnerships

Regional Alliance - Connecting Business Incubators and Service Providers with Entrepreneurs

Members:TEC Edmonton, novaNAIT, Northern Alberta Business Incubator (NABI), NINT, Business Link and EEDC through the Advanced Technology Centre.

Focus: Facilities, Product Development, Entrepreneur Education and Community Relations

Partner with TEC Edmonton• Technology Evaluation

• Intellectual Property Protection (Patenting)

• Market Analysis

• Negotiation of Legal Agreements

• CDAs and MTAs,

• license/option agreements and

• shareholder agreements

• Licensing technologies or company creation

• Company development

Questions?