Management of Intellectual Property
at Iowa State University
Contributing to Economic Development
Kenneth Kirkland, Ph.D.
Executive Director, Iowa State University Research Foundation, Inc.
Director, Office of Intellectual Property and Technology Transfer
kenk@iastate.edu
www.techtransfer.iastate.edu
Who we are & what we do
Iowa State University
Vice Provost for Research
ISU’s OIPTT (1990)
technology review,
marketing,
licensing, services
Iowa State University
Research Foundation, Inc..
Board of Directors
ISURF non-profit (1938)
protects, owns,
and manages assets
Iowa State University
Iowa State University
Office of Intellectual Property and Technology Transfer
and
Iowa State University Research Foundation, Inc.
Executive Director
Associate Director
Germplasm Licensing
Associate
Technology Licensing
Manager
Contract & Info.
Specialist
Receptionist
3 Licensing Associates
Marketing Secretary
Patent Administration
Assistant
Hourly Receptionist
Student Assistant
Student Assistant
Accountant
Hourly Assistant
IP Portfolio
Manager
Disclosure & Database
Manager
Trademark Licensing
Associate
Disclosure Secretary
Trademark Secretary
Iowa State University
Laws and guiding principles
Federal laws, regulations and guidelines
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Federal research funding requires significant reporting,
use for public good, preference for licensing to small
businesses when appropriate, and sharing income with
inventors
Federal guidelines on research tools state that the
technology must be accessible
Tax laws: ISU and ISURF must remain non-profit
Antitrust, export control, contract, and intellectual
property laws also apply
Iowa State University
Laws and guiding principles
ISU’s Mission Statement:
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ISU fosters the discovery and dissemination of
new knowledge…to address problems and issues
of concern to the State of Iowa in particular, as
well as to the national and global community…
conducted in an environment of open scientific
inquiry and academic freedom.
Iowa State University
Laws and guiding principles
Applying ISU’s mission to technology transfer
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Facilitate the commercialization of research for the
public good
Promote economic growth
Protect the right and freedom to future research,
publication, and public utilization
Protect students’ right to graduate
Policies: patent, germplasm, educational materials,
conflict of interest & royalty sharing
Iowa State University
Conflicting Values - Common Interest
University Values
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Knowledge for knowledge’s sake
Academic freedom/open discourse
Teaching, research, service, economic, development
Industry Values
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Management of knowledge for profit
Confidentiality/limited public disclosure
Profits, product R&D
Common Interest
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Commercialization of new and useful technologies
Iowa State University
What is intellectual property?
Creations of the mind protected by a field of
law conveying property rights
The laws include
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Patent
Copyright
Trademark
Trade Secret
Right of publicity
Iowa State University
What is protected?
Patents protect novel & useful inventive matter
(utility patent)
Copyrights protect expression of authorship
Trademarks-Service Marks protect identifying
symbols, words, or designs of goods or services
Trade Secrets protect confidential business information,
including proprietary materials
Rights of Publicity protect and individual’s right to
benefit from identity
Iowa State University
What is a patent?
A grant by the U.S. federal government to
new and useful machines, processes/methods,
articles of manufacture, compositions of
matter, or improvements thereof to exclude
others from
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Making
Using
Selling (or offering to sell)
Importing
Iowa State University
Requirements of a patent
Three key elements
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Novel (a new idea)
Non-obvious to someone skilled in the art
Useful (but not necessarily commercially useful)
Enablement: it must teach one skilled in the art
how to reproduce it
Formal review process and grant by the U.S.
Patent and Trademark Office (PTO)
Each country must formally grant patents
Iowa State University
The patent process
Preparation of patent application
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Patent attorney and inventor(s) prepare
PTO reviews and corresponds to applicant - we
answer
PTO sends a notice of allowance or final rejection
Average time to issue is 36 months; average cost
for U.S. patent is $13,000
Term of patent is now up to 20 years from filing
Iowa State University
From creation to license
Disclosure - formal written description of
the creation
Review and evaluation
Patenting decision
Marketing strategy
Licensing strategy
The license
Maintaining the relationship
Iowa State University
Review and Evaluation
Rights to invention
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Funding and other agreements
Collaboration internal & external
Proprietary material, techniques, information
used
Public disclosures
Patentability
Commercial potential
Iowa State University
Patenting decision
Has it been publicly disclosed?
What other protection is available?
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Tangible research property
Copyright
Trademark
Would infringement be difficult to detect?
Iowa State University
Marketing strategy
When do we start?
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Waiting for publication
Waiting for data
What is being made, used or sold?
What is the state of the art?
What other patents are needed to commercialize?
Who would use, make, and sell and why?
What are the industry’s biases to in-licensing?
Iowa State University
Marketing steps
Create marketing content
Create list of potential licensees
Contact potential licensees
Follow-up
Iowa State University
Licensing strategy
What kind of company do we license (startup, small or large company)?
What expertise would the licensee need?
Exclusive vs. non-exclusive
Field of use
Geographic areas
Iowa State University
Parameters of a license
Royalties
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License issue royalty
Annual minimum royalty
Earned royalty
Equity
Development milestones
Reimbursement of patent costs
Diligence provisions
Iowa State University
How to access our technologies
Licensing associates: 515-294-4740
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Todd Headley, Life Sciences - Biotechnology
Cheryl Kamman, Material Sciences - Chemistry
Eddie Boylston, Physical Sciences - Engineering
Julie Gustafson, Germplasm
Web search at:
www.techtransfer.iastate.edu
Iowa State University
How ISURF and OIPTT Contribute to
Economic Development
Direct Contributions
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481 technologies licensed in last 10 years
Sales of products from these licenses $363M, of which
$88M in Iowa
44 start-up companies formed since 1995, of which 32
based in Iowa
24 of these companies still active; 15 in Iowa
800 license agreements for plant germplasm
Iowa growers planted 167, 000 bushels of specialty
soybeans under license in last 10 years
Venture Fund of $200K per year for technology
enhancement
Iowa State University
How ISURF and OIPTT Contribute to
Economic Development
Indirect Contributions
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$3.7M of licensing income returned to ISU in
last 10 years
$3M donated to the Office of the Vice Provost
for Research since 1995
Iowa State University