Wyoming Research Products CenterIntellectual Property and Licensing Services

Senator Enzi’s Inventors Conference April 12, 2008Davona K. Douglass, Acting Director

About Technology Transfer

University Industry

PURPOSE: further development and commercialization

Purpose

• Local economic development

• Attract talented faculty and retain talented graduates

• Attract corporate research support

• Licensing revenue for further research and education

• Public benefits from products that reach the market

Process

• Identify new intellectual property

• Protect new technologies

• Development and commercialization strategies

Steps

Disclosure

Patent

Market

License

Protection• Patenting by the University of

Wyoming of discoveries resulting from research:– Protects the investment in the research– Ensures the technology has a chance

to reach the market

Measuring Success

• Numerical:

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1 9 9 9 2 0 0 0 2 0 0 1 2 0 0 2 2 0 0 3 2 0 0 4 2 0 0 5 2 0 0 6 2 0 0 7 2 0 0 8

s o fa r

# o f U W D is c lo s u re s b y Y e a r

Measuring Success

• Numerical:

0

1 0

2 0

3 0

4 0

5 0

1 9 9 9 2 0 0 0 2 0 0 1 2 0 0 2 2 0 0 3 2 0 0 4 2 0 0 5 2 0 0 6 2 0 0 7

# o f U W P a te n ts F ile d b y Y e a r

Measuring Success

• Non-Numerical:– UW’s ability to retain innovative faculty– Attract great students– Contribute to UW’s reputation– Collaborations established

Licensing Revenues

• Reimburse UW’s patent expenses

• Shared between the creators and the university

• Individual inventors• Department and Colleges• Research Products Center

University of Wyoming Examples

• Mitigation of Paraffin Wax Deposition Using Ultrasonic Waves

• Dr. Brian Towler• Wax deposits in crude oil pumping equipment is

enormously expensive problem for nearly all oil producers

• Reduce wax deposits on tubes by attaching a device that emits ultrasonic waves

• Discovered 3 different frequencies

that disintegrate wax and inhibit

it from attaching

Research Products Center

• The technology transfer office at UW is unique

• Funding from both the UW Research Office and the Wyoming Business Council

• We serve BOTH university and inventors statewide

Our Goals

• 1. Facilitate technology transfer

• 2. Assist Wyoming inventors and entrepreneurs:– Identify, protect, and commercialize IP– Transfer Wyoming ideas to the market– Support the creation of new technology

start-ups in Wyoming– Encourage partnerships

Steps

Disclosure

Patent

Market

License

Disclosure

• Concerns regarding disclosure:1. Protect patentability

2. Misappropriation

3. University’s role

Disclosure is okay if done correctly

Confidentiality Agreement

• Proper disclosure demonstrates you are protecting the confidentiality of your idea

• To start working with us• Form found on our

website:http://uwadmnweb.uwyo.edu/RPC/

Evaluation

• The patenting process is long and expensive

• Do a good evaluation before wasting time and spending money

F ees$3 ,000

S earch$1 ,500

P rep & F ile$8 ,000

P ro secu te$4 ,000

Evaluation

• Biggest concern is novelty and non-obviousness

• Review:– Patent estate– Journal Articles– Product Databases– Internet

Marketing

• To technology transfer, marketing means finding a licensee to commercialize the product

• Get the idea in front of companies in specific industries

Marketing

• 1. Identify market• 2. Prepare technology description• 3. Develop mailing list• 4. Mail marketing package• 5. Wait for responses• 6. Add to website• 7. Share additional data if requested

– Under Confidentiality Agreement

Negotiation

• License = Permission for another to use your property

• Usually in return for money– Up-front fees– R & D funding– Royalties

If someone else uses your patented invention without your permission you can start legal action

Negotiation

• You get what you negotiate:Royalty rate Fees/Bonuses

Patent costs Liability/WarrantyNew inventions Exclusivity

Law and venue Technical reports

Diligence Length of time

Insurance Research funding

Technology Valuation

• Keep your perspective!!• Early stage technologies are worth

considerably less that those ready for immediate sale

• Example: UW has an early stage technology– Will require 10 years of development– Will address a $10,000,000 market

Technology Valuation

Year EventPercent Success

Annual Research Costs

Discounted Value

1  Discovery   $300,000 $138,687

2     $300,000 $473,782

3     $300,000 $835,684

4 Phase I Testing 50 $300,000 $1,226,539

5     $300,000 $2,973,325

6     $300,000 $3,535,191

7     $300,000 $4,142,006

8 Phase II Testing 60 $300,000 $4,797,366

9     $300,000 $8,959,259

10 Sales   $300,000 $10,000,000

Other Assistance

• Copyrights and Trademarks

• “Please keep in mind that the results of our services serve as a mere advisement and are by no means conclusive on the issue of whether you should pursue protection for your invention or not. Only an attorney can give you a formal patentability opinion.”

Thank you

• Davona K. Douglass

• Wyoming Research Products Center– Dept. 3672, 1000 E. University Ave., Laramie,

WY 82071– 307-766-2509 (office) – 307-766-2530 (fax)– 13th & Lewis Street, Room 152– www.uwyo.edu/RPC

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