technology transfer karen rufus sr. licensing officer
TRANSCRIPT
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Technology Transfer
Karen RufusSr. Licensing Officer
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Center for Technology Transfer
Unofficial Mission StatementIncrease Vanderbilt’s innovative capacity, commercialize its technology to benefit the public and generate economic return while operating at the highest standards of integrity.
BusinessCommercialize Vanderbilt technology through licensing and new venture creation, growing the innovation base.
CustomerPrimary: Vanderbilt InnovatorsSupporting: Administration, Investors, Entrepreneurs, Collaborators, Strategic Partners
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Role of Center for Technology Transfer
Serve the Vanderbilt community by assisting inventors in bringing their innovations to practical application for the benefit of the public Our relationship with inventors is a PARTNERSHIP We patent ideas so that we have a transferrable asset, but
patenting is only a means to an end We negotiate licensing agreements with industry
counterparts for access to our technology We assist in building deeper relationships with industry, via
sponsored research, collaborations, investments, etc.
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Other Services….Execute other Agreements:
• Material Transfer Agreements• Confidentiality Agreements• Inter-institutional Agreements• Review IP language in Sponsored
Research and Clinical Trial Agreements• Distribute royalty payments
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CTTC Core Commercialization Process
• Evaluate technologies foroPatentabilityoMarket potentialoClinical Merit / need in marketplaceoExpertise in development
• Determine most effective commercialization routeoLicense outoCreate new venture
• Negotiate development agreementsoLicensesoVenture fundingoR&D agreements
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How Do We Commercialize?Vanderbilt Commercialization Process
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How Do Inventors Benefit?
Creates research opportunities via collaborations
Generates research revenue
Inventors share in revenues as personal income50% of revenues are shared among the inventors
Creates additional notoriety for research
Brings healthcare products to the marketplace for the benefit of patients
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How Do Universities Benefit?
Creates opportunities for investment via collaborations
Additional sources for research revenues
Creates brand recognition
Increases Faculty recruitment
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How do Taxpayers Benefit?
Vitamin D milk
Insulin
Streptomycin
Magnetic memory
Gatorade
LCDs
Coumadin
Polio vaccine
Cysplatin
Restasis
MRI scanner
TaxolEmtriva
PET/CT scanner
Rocket fuel
Plexiglas
Penicillin
Pap smear
Pacemakers
Fluoride toothpaste
Allegra• Hepatitis B vaccine
Saccharin
Electron microscope
Neupogen
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Why should I disclose?
Federal Government requires reporting of Federally funded inventions
Vanderbilt requires disclosure as a condition of employment
Discoveries that can help people and make a difference will rot on the vine without disclosure, protection and commercialization
VU employees have a financial incentive – 50% of revenues from licensing inventions flow back to inventors
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The Inventor’s Role……
Commercialization
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Pre-disclosure• Keep good lab notes, and have them witnessed
periodicallyWill prove handy in the event of a patent interferenceProceeding
• Make sure that the contracts are in placeInter-institutional collaborations require a “Joint Development Agreement” to protect against loss of patentabilityContract researchers / programmers may require an obligation to assign in subcontract agreements
• Understand “invention” and engage CTT if you think you have a novel idea
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Disclosure• Provide a detailed description of the invention
Remember “enablement” and “best mode”Proper patent searches and proper market analyses cannot be done without a full description
• Identify any companies that you have a relationship with or you know that are in the relevant industry70% of licensing leads come from inventors
• Identify the source of research funding used to conceive or develop the inventionWe need to fulfill all reporting / IP obligations to sponsor
• Specify plans for ongoing development efforts
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Evaluation
• Discuss potential utilization of products (market size)• Help distinguish present invention from current products
– focus on novel features and advantages• Review prior art references identified and help
differentiate your invention from the prior art• Perform independent patent searches (www.uspto.gov)
and get a good feel for what products have been invented – DIFFERENT FROM WHAT IS BEING COMMERCIALIZED!
• Work with CTTC to describe the potential products that could result from the invention, as well as the relevant markets for such products
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Marketing
• Help with reviewing and editing marketing documents
• Help with identifying and approaching potential industry partners
• Participate in in-depth discussions with parties showing interest
• Continue to refine and develop the technology, make use of product development funds when appropriate
• Help evaluate the fit and capabilities of potential licensees – not all willing partners are good partners
• Continue to publish, publish, publish
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Patenting
• Review applications in a thorough and timely manner• Disclose ALL references that you believe in your own
judgment to be relevant to patentability (DUTY OF DISCLOSURE)
• Disclosure all embodiments of the invention• Assist in brainstorming ways to broaden patent
claims• Help with arguments to traverse rejections issued by
the US Patent Office• Engage counsel or a commercialization officer before
publishing patentable subject matter
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Are there any resources available to help develop new ideas?
CTTC is starting a Prototyping Fund Applications are for prototyping of existing
technology, or proof of principal experimentation
Applications would be made through CTTC Cannot be used for capital purchases Would be used outside CTTC
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What you should know about tech transfer as scientists….
Patents are a means to commercialization, not just another means for publications and lines on CVs
Just because there is a perceived medical need for an invention, doesn’t mean there is a market
Just because you can patent something doesn’t mean you should
You can’t patent something that’s been talked about publicly
Authorship ≠ Inventorship We are a service organization, so whenever you think you
have an invention, or have questions, our doors are open
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Questions?
Email: [email protected]: 615-322-4295
CTTC: [email protected]: 343-2430
Web: www.vanderbilt.edu/cttc