OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
University Patent Process
September 30, 2013
Mina W. Zion, J.D.
Director
Agenda
Introduction
Commercialization and Patent Strategy
Industry Rationale
Conclusion/Appendix
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
INTRODUCTION
Office of Research
Dr. Shreek Mandayam
Vice President, Research
Technology
Commercialization
Mina Zion, J.D.
Director
Martin Kent
IP Law Intern
Stephanie Heiser
Administrative
Assistant
Sponsored Programs
Sarah Piddington
Director
Research Compliance
Sreekant Murthy
Compliance Officer
Stephanie Lezotte
Assistant Director
Eric Gregory
Contracts Specialist
Kristy Carpenter
Post-Award Specialist
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
• Academic Technology Transfer
• University of Delaware
• Stevens Institute of Technology
• $1.3M in deal origination over 3 years
• Industry
• Technology Scout at BASF Future Business
• $45M in deal flow management, primarily with
university tech transfer offices
• M&A Project Manager at JPMorgan
• Education
• J.D., Rutgers University Law School – Newark
• B.S. in Chemical and Biological Engineering, NYU Poly
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
INTRODUCTION
Mina Zion
INTRODUCTION
Why Patent?
• Transferrable property interests
• Sold
• Licensed
• Stolen
• Subject to traditional Property
and Contract Laws
• Develop industry partnerships that will
fund future research
• Additional Recognition in the chosen field of art
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
Agenda
Introduction
Commercialization and Patent Strategy
Industry Rationale
Conclusion/Appendix
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
• 37 CFR 401.14(a)
• Incorporated into all federal funding agreements
• Mandate: BRING INNOVATION TO COMMERCIAL MARKETPLACE.
• Requirements:
• Report subject inventions to the sponsoring agency
• Elect whether to retain title
• Educate employees regarding the patenting process
• Grant to the gov’t. irrevocable “march-in” rights
• Share royalties with inventor
• Use the balance of revenue after expenses to fund scientific
research and education
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
STRATEGY
Bayh-Dole Act
STRATEGY
Rowan IP Policy
General Fund, 10%
Provosts Office, 10%
Department, 10%
Inventors, 50%
Administration, 20%
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
Disclose
Prosecute
License
• Faculty develops commercially relevant innovations that
meet unmet market demands.
• Communicate with OTC patent worth inventions.
• File provisional patent to receive early effective filing date.
• Begin to disclose externally to interested stake holders.
• Identify the strategic commercial partner(s) and negotiate
term sheet.
• Execute “bullet-proof” agreements to protect Rowan’s IP
and financial interests.
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
COMMERCIALIZATION STRATEGY
Rowan Commercialization Strategy
• Use the OTC disclosure power
point template.
• Present to the Patent Committee
at the South Jersey Technology
Park.
Disclosure
• Identify market compatibility and
potentially interested parties and
industries.
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
COMMERCIALIZATION STRATEGY
Rowan Commercialization Strategy
COMMERCIALIZATION STRATEGY
Projected Disclosures, FY 2013
CMSRU
CSM
COE
SOM
0
5
10
15
20
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
25
• Provisional -> Non-provisional.
• Work with outside patent counsel to
submit to the USPTO a disclosure
statement.
Prosecute
• Formulate effective claims, not too
narrow (limited in scope), not too
broad (unpatentable) and fully
responsive to unmet market needs.
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
COMMERCIALIZATION STRATEGY
Rowan Commercialization Strategy
Domestic
Foreign
$500
$5,000
Provisonal
PCT
$17,000
$150,000
Regular
National
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
PATENT STRATEGY
Patent Costs
• Strategic partners may be Fortune
500, mid-size, or a Rowan Start-up.
• May be exclusive, non-exclusive.
May be an Option for future use.
License
• Upfront cash payment plus royalties,
milestone payments, IP
reimbursements and annual
maintenance.
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
COMMERCIALIZATION STRATEGY
Rowan Commercialization Strategy
PATENT STRATEGY
Balancing Innovation Produces Economic Value
Too Broad
Too Narrow
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
Agenda
Introduction
Commercialization and Patent Strategy
Industry Rationale
Conclusion/Appendix
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
INDUSTRY RATIONALE
Innovation Pipeline - Academia
The Demand
Government
Mandates
The Innovation
Faculty
Research
Greater
Funding
The Opportunity
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
INDUSTRY RATIONALE
Innovation Pipeline - Industry
The Demand
UNMET
MARKET
NEEDS
The Innovation
Employee
Research
Greater
Sales
The Opportunity
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
Faculty
Research
Government
Mandates
UNMET
MARKET
NEEDS
Academic
Publications
Employee
Research
Sales
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
INDUSTRY RATIONALE
Innovation Pipeline – Industry Collaboration with Rowan
INDUSTRY RATIONALE
Industry Business model - Strengths/Weaknesses.
Resources
Market Focus
Organization
Talent
Innovation
Cost Management
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
Agenda
Introduction
Commercialization and Patent Strategy
Industry Rationale
Conclusion/Appendix
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
CONCLUSION
Targeted Innovation
UNMET
MARKET
NEED
To Create A Successful Product, Don’t
Start With A Blank Piece of Paper –
Start With A Customer Need.
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
-Paul Brown, Forbes Magazine 09/15/2013
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
CONCLUSION
Creativity is wonderful. But creativity
that isn’t linked to making money is
just a hobby. It isn’t a viable business
concept. And the reason you are
trying to come up with a new idea is,
ultimately, to make money.
CONCLUSION
License
Prosecute
Disclose
Starts With Marketable
Research That Addresses A
Valuable Business Objective
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION
CONCLUSION
Open Discussion
OFFICE OF
TECHNOLOGY
COMMERCIALIZATION