Iowa State University Research Foundation,
Inc. (ISURF) and the Office of Intellectual
Property and Technology Transfer (OIPTT)
Kenneth Kirkland, Executive Director
ISURF and Director, OIPTT
kenk@iastate.edu
www.techtransfer.iastate.edu
Background-ISURF
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ISURF is a Not-For-Profit Corporation, founded in 1938 to
own and manage intellectual property developed at Iowa
State University.
ISURF is self-funding and also finances the activities of
OIPTT.
Background-OIPTT
• OIPTT was founded in 1990 to provide
support services to the university community
on matters related to intellectual property, to
facilitate the disclosure of new inventions
arising from university research, to market
these inventions and to license them to
industry for commercial development and
sale.
Services Provided by ISURF and
OIPTT
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Assisting faculty and staff with the invention disclosure process
Valuation of disclosures for potential intellectual property, ownership,
inventorship and commercial value
Reporting to the federal government
Legal protection of disclosed intellectual property (patents or
copyright)
Patent maintenance
Marketing of disclosed intellectual property
Negotiating option and license agreements
Providing assistance with obtaining federal research grants through
the SBIR and STTR programs
Management of the intellectual property portfolio and disbursement of
royalties to inventors, academic units and various third parties
Services Provided by ISURF and
OIPTT
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Protecting the rights of our inventors and the university
Protecting our intellectual property from infringement
Answering questions and providing advice on intellectual property
Making presentations to faculty, staff and students on various
aspects of intellectual property and how it is managed at ISU
Providing confidential disclosure and material transfer agreements as
required
Working with the Office of Sponsored Programs Administration
(OSPA) to negotiate intellectual property terms in sponsored
research agreements
Ten-Year Track Record
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1196 invention disclosures received
395 technologies licensed
466 patent applications filed
293 patents issued (390 in portfolio)
1931 license and option agreements executed
Total license and royalty income $71 million
(Range $2.1M -$18.1M)
Benefits for the State of Iowa
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ISURF has licensed ISU technologies to 54 start-up companies since
1995, of which 40 were based in Iowa. Over half of these companies
are still active. They have contributed to the economic development
of the state through job creation, product sales and taxes.
Over one third of all ISURF’s present license and option agreements
are with Iowa-based companies (58% in FY07). Over the last 10
years, these companies have sold a total of $298 million worth of
products developed from inventions licensed to them by ISURF.
These sales represent 18% of all sales of products arising from
licenses by ISURF.
In FY08, Iowa growers planted over 27,000 bushels of specialty
soybean varieties developed at ISU.
Since July 1, 2005 assistance in proposal preparation for SBIR/STTR
grants has been provided to 42 Iowa businesses.
Benefits for Iowa State University,
Inventors and Faculty
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Over the last 10 years, ISURF has contributed a total of $42 million
from its earnings to the university. This includes $25million in royalty
sharing to ISU inventors and colleges, $2million to ISU inventors for
applied research projects to improve the commercial value of their
inventions and $6.5million to the office of the Vice President for
Research and Economic Development which has been used to
recruit and retain key faculty and to purchase lab equipment. In
FY06-08, these funds contributed to a total of 40 start-up and 6
retention packages for faculty.
Recently, ISURF has given $9.5M to establish a Research and
Economic Opportunities Fund in the VPR Office.
Since July 1, 2005 assistance in proposal preparation for SBIR/STTR
grants has been provided to 18 existing or potential faculty start-ups.
In addition, ISURF has provided funds for faculty to travel to investor
conferences in order to present selected technologies.
ISURF has also organized and sponsored five dinners to recognize
ISU inventors whose technologies have been commercialized.
Q-What Keeps OIPTT/ISURF Running?
A-Invention Disclosures
• The invention disclosure process is a vital first step to
protection and commercialization of University
inventions.
• Our process for evaluating inventions begins with a
disclosure (a record of your invention) to OIPTT. A
disclosure form can be obtained from OIPTT or
downloaded from our web site. We are always
available to assist with this process.
• Why disclose your inventions?
-It will help to ensure that the results of your research
will be used.
-It’s University policy.
-Extramural sponsors, including agencies of the
Federal Government require it.
When Should You Disclose Your
Inventions?
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Before you make a public disclosure
When you have an invention you think is novel
When you have evidence that it will work
If in doubt, disclose
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NOTE
• Greater than 90% of all patents filed are improvements
on existing technology
• Your invention does not have to be a breakthrough to
be of value
What Do We Do With Your Invention Disclosures?
(More detail on our web site)
• We hold weekly disclosure and marketing meetings
• Some key points that we consider during the review:
-Is the invention reduced to practice? (or just an idea at this
stage)
-Are there freedom to operate issues? (third party rights, joint
inventorship)
-Is there any prior art? (patents, publications, presentations)
-Do the economics look favorable? (great science is not always
commercial)
-Is there a market for this technology?
-Is filing a patent justified at this time? Obtaining a patent is
expensive and time-consuming; both for us and our inventors.
A patent is of no use to us if the invention is never
commercialized.
How do We Protect Your Inventions?
• In the case of inventions to be patented, ISURF hires
patent attorneys who have expertise in the field of the
invention. ISURF consults with the inventor on the
choice of attorney.
• Prior art issues are reviewed with the patent attorney.
• A prosecution strategy is determined in consultation
with the attorney and the inventor.
• It is critical that you as inventors update OIPTT/ISURF
on activity related to the invention such as planned
publications, research projects, new data, consulting,
and inquiries from industry.
• Some inventions such as software may not be patented
but rather copyrighted. Other inventions such as plant
germplasm are generally treated as proprietary tangible
material and licensed as such.
Commercializing Your Inventions
• We are very proactive in seeking out potential
licensees.
• Once a company expresses interest in licensing an
invention, negotiations begin.
• Business and development plans are requested from
the company, because it is important for us to
understand how the invention will be commercialized.
• OIPTT/ISURF is the only group at ISU that has the
authority to negotiate license and option agreements.
• A company may want to enter into an option agreement
so that it can evaluate the invention prior to committing
to a license.
Benefits of Protecting Your
Inventions
• Recognition and income for inventors and the university
• Contributions to economic development of the state
and nation through investment by companies and job
creation
• Placement of graduate students in rewarding jobs
• Stewardship of technology and fulfilling the obligations
of funding sources (e.g., reporting to the federal
government, sponsor rights in technology)
• Formation of relationships between sponsor and
inventor/university
• Consulting arrangements and other opportunities for
collaboration
Staffing of ISURF and OIPTT
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13 professional staff
-Executive Director Kenneth Kirkland
-Associate Director Nita Lovejoy
-IP Portfolio Manager and In-House Counsel Donna Johns
-Technology Licensing Managers Mary Kleis, Eddie Boylston
-Three Licensing Associates Dario Valenzuela, Renate
Hippen, Julie Minot
-SBIR/STTR Program Administrator Kristine Johansen
-Contract and Information Specialist Tenann Everly
-Disclosure and Database Manager Brian Tiffany
-Patent Administration Assistant Peter Gudlewski
-Accountant Marc Johnson