university of florida office of technology licensing overview for uf inventors

© 2015 University of Florida

University of Florida Office of Technology Licensing

Where Science Meets Business

www.otl.ufl.edu


Meet the OTL Staff


Video: UF Research Discoveries Making the World a Better Place

Making the World a Better Place


•Sentricon® is a colony elimination technology for termite control, developed at UF, introduced to the market in 1995

•Saved the Statue of Liberty from a termite infestation

•Has also led to a 300-metric-ton reduction in chemical use in homes nationwide

Sentricon®


Gatorade™ is the most well-known product from UF

Gatorade™ has maintained an 80%market share throughout the betterpart of the drink’s existence

Gatorade™


•RTI Surgical™ is a UF spin-off that processes donated human tissue into allograft implants

•In many cases enabling patients to walk again

RTI Surgical™


How Did They Move From Lab to Market?

•Further development/testing

•Commercial partner with $$$

•Protected intellectual property & effective technology transfer services


Bayh-Dole Act of 1980

•Gave universities/researchers the opportunity to patent and reap financial rewards from technologies

•Gave industry a way to generate ROI for developing, marketing university technologies

•Strong incentive for industry-university research collaborations and industrial investment

•Academic research is critical to the nation’s innovation and R&D

•More than 260 university TLOs created


How Does It Work at UF?

Idea

Invention

Disclosure

Form

WrittenDisclosure

OralDisclosure

Exert

WaiveOTL Explores

Patentability &

Marketability

OTL Seeks

Licensee &

Makes Patent

Decisions

(120 Days)


UF Patents & Licensing

Research

Awards

Invention

Disclosures

Issued U.S.

Patents

Licenses/

Options

Executed

2014/15 $707 M 337 117 85

2013/14 $702 M 296 112 87

2012/13 $641 M 294 106 84

2011/12 $644 M 324 60 79

2010/11 $619 M 298 86 78

2009/10 $678 M 279 59 67

2008/09 $574 M 271 73 72

2007/08 $562 M 299 52 75

2006/07 $583 M 327 77 74

2005/06 $519 M 260 78 73


Innovation R&D Hotbeds

MIT, Caltech –

And the Gators?How the University of Florida moved to the

major league of technology startups

BusinessWeek May 21, 2007

A National Leader in Startups


A National Leader in Startups

• Since 2000, UF OTL helped create more than 175 biomedical and tech startups

• Ranked #6 in startup launches (15) in 2013 Association of University Technology Managers survey

• #7 in licenses and options granted

• #8 in US patents issued


Benefits of Technology Licensing

•Attracts research funding

•Forms industrial partnerships

•Places graduate students in rewarding jobs

•Earns royalty income

•Moves your discovery to market


What/When to Disclose

•WHAT: Disclose novel ideas, discoveries, inventions that are timely and useful to the marketplace

•WHEN: Disclose with sufficient notice before any publication (prior to submission) or enabling public disclosure

•Don’t know if you should disclose?Call OTL!(352) 392-8929


Disclosing an Invention

• Use our web-based invention disclosure module accessible from the main OTL website (www.otl.ufl.edu).

Direct link: http://www.research.ufl.edu/otl/newdiscovery.html

• Enter your Gatorlink login and password at the prompt

• On the form, describe in detail the different aspects of your invention

• Submitting the form to us initiates your interaction with OTL, but does NOT provide patent protection

• Invention Disclosure Submission ≠ Patent Filing

http://www.research.ufl.edu/otl/newdiscovery.html


Your Partnership with OTL

•Provide us with industry contacts who might be licensing partners:

•Scientific colleagues/collaborators

•Conference attendees

•Grant review panel members

•Scientific journals

•Students/post docs now working in industry

• Explain and promote the technical benefits of your invention to potential licensees


UF Owns Employee Inventions When:

• The invention was made while you were employed at UF

• AND

• The invention is in the field/discipline in which you are/were employed

• OR

• The invention was made with university resources


Types of Intellectual Property

•Patents- Enable you to exclude others from using your ideas for a

limited period of time

•Copyrights- Grant you the right to exclude others from reproducing

your work without permission

•Know-how- Expertise required to reproduce a patent, licensed in

conjunction with the patent


Types of Intellectual Property

•Trade secretsMethod, formulation, or process not disclosed to the public and not covered by a patent (ie recipe for Coca-Cola®)

• TrademarksA distinguishing symbol, design, mark or word used by a manufacturer to identify its product from a competitor’s (ieGatorade™)


Tips for Protecting Your Intellectual Property

•Keep accurate lab notebooks• numbered and bound + document date of conception

• Use a Material Transfer Agreement (MTA) when transferring or receiving materials from an outside entity

•Always complete a Confidential Disclosure Agreement (CDA) prior to discussing enabling aspects of your research with an outsider

•Protect your intellectual property before publicizing your discovery in any way


Criteria for Patentability

• Novel- New, never before used

• Useful- Must have a purpose or intended use

• Non-obvious to someone “skilled in the art”- Peers and/or patent examiner would not

readily identify the improvement or new application


Events Impacting Patentability

• First publication- Includes providing information to others without a

confidentiality agreement/poster, sessions or presentations at conferences

• First public use

• First offer for sale


Public Disclosure

• Public disclosure can include:

- Publication in open literature

- Poster sessions and abstracts (postings to the web)

- Presentations to an open forum (thesis defense)

- Personal communications without a confidentiality agreement

- Catalogues and libraries


Avoid Public Disclosure

Check Box 3: “Is proprietary/privileged information included in the application?

Check this Box on Grant Applications:


Office of Technology Licensing

Bridging the Technology Transfer Gap


Large Company

Startup Company

Medium Size Company Jobs

Profits &

Tax Revenue

Products &

Services

• % of Revenue

• Securities

• Combination

The University

US, State and

Local Governments

A Very Virtuous Cycle

Lab to Market – It Works !

http://www.50states.com/florida.htm

http://www.50states.com/florida.htm

http://upload.wikimedia.org/wikipedia/commons/a/a4/Flag_of_the_United_States.svg

http://upload.wikimedia.org/wikipedia/commons/a/a4/Flag_of_the_United_States.svg


Critical Elements for Creating Tech Startups

•Strong, diverse research programs that generate innovations

•Technology transfer expertise

•Business startup facilities

•Capital

•Management


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Fiscal Year

Source of Innovation

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Non-Federal

Federal

UF Research Awards 2003-2015


• UF Tech Connect® program fosters new business creation

• Match researchers with potential management

• Assist in business plan creation and market feasibility studies

• Provide training for “wanna be” entrepreneurs

• Introduce funding opportunities through VC & angel network introductions

• Measured based on jobs & private investment

Technology Transfer Expertise


• Opened 2011• 760 jobs, $50M investment

Incubator Facilities: Florida Innovation Hub

• Blocks from campus, downtown • Startups and service providers• 48,000 square feet of labs and offices• OTL offices, UF Tech Connect®


Sid Martin Biotechnology Development Institute#1 biotech incubator in the world, 2013

Incubator Facilities: BDI

• Opened 1995

• 42,000 sq ft; 19 labs, 13 offices

• Small and large animal facilities


Capital• Funding follows

opportunity appropriately matched with an experienced entrepreneur

• Seed Grant Program: Florida Institute for the Commercialization of Public Research

• Venture capital firms in Gainesville• Sofinnova• Harbert


• Two approaches:

– Recruit

– Grow Your Own

• The Hatchery

• Start Up Quest

• Empowering Women in Tech Startups

Management Talent


OTL Can Help You To:

• Take the steps necessary to get your discovery into the marketplace where it can benefit society

• Find innovative approaches to commercializing your discoveries by facilitating mutually beneficial working relationships


University of Florida Office of Technology Licensing

Where Science Meets Business

www.otl.ufl.edu