2015 RESEARCH & INNOVATION WEEK AT UMSL
INTELLECTUAL PROPERTY AND ITS ROLE IN
ATTRACTING FUNDING
IP CONSIDERATIONS AND VALUE PROPOSITION
PRESENTED BY
BANDHANA KATOCH
Marketing & Business Development Analyst
Office Of Intellectual Property Administration, UM System
ROADMAP
 What is Intellectual Property (IP)?
 IP Evaluation Flowchart
 Role of
IP in developing Exit Strategy
 Patent prosecution timeline and
Copyright
Registration
 Role of
IP in Research Funding
 Alternate sources of
funding
 Resources
2015 research & innovation week at UMSL
UNIVERSITY INTELLECTUAL PROPERTY
2015 research & innovation week at UMSL
“Intellectual property has been transformed from a
sleepy area of law and
business to one of the driving engines of a high technology economy.”
New York Times, April 5, 1999
2015 research & innovation week at UMSL
INTELLECTUAL PROPERTY
Products of creativity : Inventions, Software, Discoveries
or Creative or artistic works
e.g. – Machines, Devices, Instruments, Computer Programs,
Circuits, Biological Materials, Chemicals, Books, Videos,
Photographs, Paintings, Sculptures, or Songs
Intellectual Property can be protected through:
-
Patents
-
Copyright
-
Trademark
-
Trade Secrets
2015 research & innovation week at UMSL
INVENTION DISCLOSURE EVALUATION
Existing
Company
Further
Research
Invention
Disclosure
Invention
Disclosure
Receipt
Technology
Assessment
Waiver offer
to Inventors
Intellectual
Property
Protection
Business
Planning
Inventor(s)
$$$$$
Licensing
Royalty
Collection
University
University
Startup
Start-up
UM System
$$$$$
Inventor
Department
$$$$$
Campus
$$$$$
2015 research & innovation week at UMSL
PATENT PROSECUTION TIMELINE
2015 research & innovation week at UMSL
COPYRIGHTS 101
Products of creativity : literary, artistic and music works. e.g. – Gone with the Wind, Video
Games, software, etc.
Why is it important? Registration is required to bring lawsuit against infringers
Process for Copyright Registration:
 Step 1: Visit Library of
Congress
 Step 2: Three documents needed:
1) completed copyright application; 2) filing fee
(nonrefundable); and 3) deposit (nonreturnable), which means a copy or copies of your
material to be copyrighted.
 Step 3:
-
Registration methods:
Online Registration
Fill-in form CO
Paper forms
-
Time for Copyright Registration – up to 3 months
-
Cost Involved – approx. $200
2015 research & innovation week at UMSL
WHY PROTECT INTELLECTUAL PROPERTY?
 Boosts research and
innovation in various fields
 Spurs Innovative start-ups
 License technology to startups
 Increases Strategic Alliances especially with industries
 Supports public good
– Better World Project
 Brings goodwill to the name of
the institution
2015 research & innovation week at UMSL
ROLE OF IP CONSIDERATION IN EXIT STRATEGY
Three criteria to determine value proposition of IP portfolios:
 Ascertaining validity and enforcement potential of the IP portfolio
 Determination of technical strength and business utility
 Markets covered by IP portfolio
 For patents, right to use, patentability, blocking patents, infringement and validity.
 For copyright, examination the use of copyright notice
 For trademarks, examine opinions of trademarks including registration and infringement
2015 research & innovation week at UMSL
GOOD PRACTICES FOR DOCUMENTATION OF IP
 A good practice is to use bound
notebooks for records. Entries should be made on a daily basis.
 Use the notebook to record a conception,
laboratory data, drawings, or other observations on
successive pages.
 Entries in the notebook should
be made in ink.
 Any material that cannot be incorporated into the notebook should
 All entries in the notebook should
be glued in and referred.
be signed, dated, and witnessed (by at least two people).
 In the event that notes are kept on a computer,
be sure to make the appropriate entries into the
computer system at the end of each day.
 Identify a safe method for storing and
monitoring the records.
2015 research & innovation week at UMSL
IP CONSIDERATIONS FOR FUNDING RESEARCH
 Does
the company have intellectual property and, if so, how strong is it?
 What is
the intellectual property landscape position? Having numerous strong IP building
blocks is one thing, but how those IP building blocks are relatively positioned in the
broader intellectual property landscape is another factor.
 Are
the intellectual property rights being managed well? In other words, does the company
appear to have a consistent well executed strategy for the intellectual property?
2015 research & innovation week at UMSL
INTERESTING CORRELATION – FUNDING v. IP
 Across all sectors a significantly higher percentage of venture capital backed
companies that have been acquired or have gone public have patent
portfolios as opposed to companies that are out of business.
 Successful companies
are more likely to hold intellectual property than
companies who went out of business. Although the presence of intellectual
property portfolios is not perfectly correlated to success or failure, this
indication strongly support investor focus on the role of intellectual property
in their decisions and actions.
 While having intellectual property increases the
probability of success, those
who manage intellectual property well have an even higher probability of
success.
iAM Issue # 40 (2011)
2015 research & innovation week at UMSL
FUNDAMENTALS OF FUNDING
 Determine the amount of
funding
 Determine the best source of
funding
 Put together a business plan/
impact
statement
 Get information about various plans
2015 research & innovation week at UMSL
TRADITIONAL FUNDING SOURCES
NSF
NIH
USDA
DOD/DOE
2015 research & innovation week at UMSL
SOURCES OF CONTRIBUTIONS
Creative Commons Attribution 3.0 Unported License
2015 research & innovation week at UMSL
RECIPIENT ORGANIZATIONS
Creative Commons Attribution 3.0 Unported License
2015 research & innovation week at UMSL
FUNDING PROGRAMS – UM SYSTEM
 The Research Board provides initial research funding for faculty to do applied research in their
specific area of work to leverage funds and enhance long-term quality and quantity of
scholarship.
 The FastTrack program provides proof-of-concept or gap-funding for faculty members focused
on development, testing, prototype construction, or market analysis of innovating
technologies emerging from a UM campus.
 The Interdisciplinary Intercampus program was initiated to increase interdisciplinary,
intercampus research collaborations to leverage the intellectual capital and resources at the
four University of Missouri campuses.
 The Spinal Cord Injury Program provides research support for investigators at public or private
educational, healthcare, or research institutions in Missouri to perform exploratory studies
regarding spinal cord injury, as well as acquired or congenital disease processes that affect the
spinal cord.
2015 research & innovation week at UMSL
FUNDING PROGRAMS - MISSOURI
Missouri Technology Corporation
Missouri Foundation for Health Special Projects Grants - Grants to support community-based health
improvement projects in Missouri.
Wal-Mart State Giving Program (Region 2) - Provides grants in the area of hunger and nutrition; career
opportunity; education; health care access; and human services.
Anthem Foundation Grants - Supports health and wellness programs including prevention and education
programs in the areas of healthy hearts, diabetes, cancer, maternal health, and active lifestyles.
Gannett Foundation Community Action Grants - Supports local organizations with funding priority given to
programs that focus on education and neighborhood improvement, economic development, youth
development, community problem-solving, assistance to disadvantaged people, environmental
conservation, and cultural enrichment.
Sunderland Foundation Grants - Supports capital improvement projects in the areas of higher education,
churches, youth serving agencies, health facilities, community buildings, museums, civic projects, and
housing projects.
2015 research & innovation week at UMSL
FOUNDATIONS/PRIVATE FUNDING
How many independent foundations are there in US alone?
93,225
How many of such independent foundations are in Missouri?
1,560
Kinds of Foundation
-
Corporate Foundations - Enterprise Holdings Foundation, Emerson Charitable
Trust, Monsanto Fund
-
Community Foundations - Greater Kansas City Community Foundation, Ewing
Marion Kauffman Foundation, Hall Family Foundation
-
Private Foundations - Burroughs Wellcome Fund, Pew Trusts, McDonnell
Foundation,
Foundation Center
2015 research & innovation week at UMSL
CROWDFUNDING
Crowdfunding describes the collective effort of individuals who network and pool their money,
usually via the Internet, to support efforts initiated by other people or organizations.
Crowdfunding is used in support of a wide variety of activities, including startup company
funding, invention development, scientific research, and support of artists by fans, etc.
 Donation- based - A donation model where a project with a specific fund raising target is promoted on a
website. There is usually a finite time period when donors may contribute. They are charged only if the
fundraising target is met by this deadline. e.g. - KickStarter (creative and design projects) and Petridish
(scientific research).
 Pre-sale product - Funders buy a product that generally needs to be created. Funding is provided for
design/manufacture and the funders expect delivery of a product.
 Equity-based - Funders are usually financially motivated. Equity is given to funders and they expect a return on
their investment. This model is currently approved only for accredited investors.
 Microloans - A donor can loan a small amount of money to a microbusiness owner. These loans started in thirdworld countries where access to even tiny amounts of credit is limited for entrepreneurs. e.g. – Kiva.org
2015 research & innovation week at UMSL
CROWDFUNDING FOR UNIVERSITY RESEARCH
Considerations for using crowdfunding for technology commercialization:
 Clear commercialization objectives
 Protection of institutional brand image
 Clarification of Intellectual Property
 Standardization of fund flows: There are two possible mechanisms:
 Research funding model – In this model, fund are directly transferred to a research
account in the university department responsible for research funding administration.
 Gift funding model-In this model, the funds are forwarded to the development office.
 Integration with accounting and over-head allocation processes
 Tax deductibility
 Support of downstream commercialization objectives
University of Utah and Michigan Technology University have successfully used crowdfunding for
funding research
2015 research & innovation week at UMSL
RESOURCES
A. Technology Transfer Office – Tamara Wilgers, Craig Weilbaecher
B. Business Incubators







BEGIN New Venture Center - St. Louis
T-REx Incubator - St. Louis
Economic Development Center - St. Charles
Midtown Enterprise Center - St. Louis
South County Enterprise Center - St. Louis
Wellston Enterprise Center - St. Louis
West County Enterprise Center - St. Louis
C. Online Resources
 Accelerate St. Louis
 Innovate St. Louis
 St. Louis Regional Chamber
2015 research & innovation week at UMSL
2015 research & innovation week at UMSL