September 1, 2006
Intellectual Property:
You, the University, and UTRF
Richard Magid, Ph.D.
Licensing Associate, UTRF Memphis
Types of Intellectual Property
• Trademark
• Copyright
• Trade secret
• Patent
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Trademark
A Trademark is a word, phrase, symbol, or design, that
identifies and distinguishes the source of the goods
(or services) of one party from those of others.
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Brand name or logo
Used in trade and is distinctive
Protection is perpetual by renewal
Protects against confusion in trade
Need to demonstrate use, or intent to use
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Copyright
Copyright protects “original works of authorship” that
are fixed in a tangible form of expression.
• Literary, artistic, musical, audiovisual, and graphic
works
• Original in expression
• Can include software
• Effective immediately upon completion of work
• Protection is for term of life + 70 years
• Protects against copying of expression
• Registration of copyright not required
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Trade Secret
A trade secret is any formula, pattern, device or
compilation of information which is used in one's business,
and which gives him an opportunity to obtain an advantage
over competitors who do not know or use it.
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Know-how of current or potential competitive value
Must be safeguarded by reasonable measures
Indefinite protection period (= life of secrecy)
Protects against unauthorized use and disclosure
Right to use can be licensed
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Patent
A patent for an invention is the grant, to the inventor, of
the right to exclude others from making, using, selling,
or importing the invention into the United States.
• Protected for a term of 20 years from filing date
• Does not guarantee the “freedom to operate”
– Patents are fences, not permission slips.
• Obtained by government grant after examination of
patent application
– US Patents only provide protection in the US
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Why does IP have to be disclosed
to the University?
To assure compliance with:
• Legal obligations under the Federal Bayh-Dole Act
(37 CFR 401)
• The University of Tennessee Intellectual Property
Policy (utrf.tennessee.edu/tto/policy.html)
• Contractual obligations with non-federal sponsors
and providers of proprietary materials
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The Bayh Dole Act Permits and Promotes
Technology Transfer from Academia
Permits commercialization of research results
funded by the federal government
Allows universities (and other non-profits) to:
• Retain title to inventions produced under federal
support
• Patent technologies
• License technologies
Requires universities (and other non-profits) to:
• Share royalties with inventors
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Opportunities Provided By Bayh-Dole Act
Universities can:
• Commercialize research for public good
– Products that may not otherwise exist
• Generate income for inventors and the university
• Foster collaborations with industry
– New sources of research support
– Expanded opportunities for graduate student training
• Promote economic growth
– Regional competitiveness and jobs for graduates
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What does the Act Require of the Inventors?
• Requires employees to assign rights to university
• Requires Investigators to report inventions to
university in writing and in a timely manner
• Investigator must list inventions in annual Progress
Reports and Competing Renewal applications
• Investigator must complete/verify accuracy of
information in Final Invention Statement at grant
closeout
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What does the Act Require of the University?
• Disclose inventions to government within 60 days
• Elect title within two years of disclosure or within
statutory bar period. If not filing, give government 60
day notice.
• Provide federal government with a non-exclusive
license to practice invention
• Share royalties with inventors when available
• Make preferences in licensing to U.S. industry and
small business where feasible (to facilitate product
manufacturing in U.S.)
• Provide reports to federal agency on utilization of
inventions
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Additional Rights and Obligations
Under Bayh-Dole
• Rights in inventions resulting, even in part,
from federal funding may not be assigned to a
third party without agency approval.
– The University retains the rights to inventions that
may result industry-sponsored Research
Agreements
– The first right to negotiate a license is offered to a
sponsoring company, not title to the IP
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What is a Patentable Invention?
1. Useful
2. Novel (new)
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U.S. PTO provides one year grace period after
public disclosure
Most foreign countries require application prior
to ANY public disclosure
3. Non-obvious
4. Reduced to Practice
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Actual
Conceptual (or constructive)
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Disclosure Filing Process
• Prepare Invention Disclosure Form
– Electronic copies available
• Signatures - Dept chair, College Dean, and Campus Research
Officer, PCL committee
• Assignment to UTRF for Management
• Disclosure Evaluation
– Local Prior Art Search
– Marketing and Technology Evaluation
• Patent Application Filing Decision
• Work with Patent Attorney to prepare application
• Submit to US Patent and Trademark Office
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Do’s and Don’ts For Researchers
• Publicizing your discovery prior to
protecting it may lose the monetary value
• Small items could have commercial value
• Keep accurate laboratory notebooks
– Best primary record of invention is numbered,
bound laboratory notebooks – documents date of
conception
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Do’s and Don’ts For Researchers (cont’d)
• Only transfer or receive materials from an
outside entity with the protection of a
Material Transfer Agreement
• Maintains confidentiality
• Defines intellectual property rights
• Only discuss the enabling aspects of your
research with the protection of a
Confidential Disclosure Agreement
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Public Disclosure
• Public disclosure can include:
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Publications in open literature
Poster Sessions & Abstracts
Presentations to open forum
Personal communications without expectation of
confidentiality
• Anything catalogued in a library
• Primary discriminators are:
• Good faith attempt to maintain secrecy
• Substantiality of material disclosed
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Considerations and Pitfalls
• Protection of Intellectual Property
– Invention/discovery review prior to public
disclosure
• Conflicting obligations
– MTAs
– Pre-existing IP
– Competing agreements
• Inability to publish
– Theses and dissertations
– Reasonable publication review period?
• Inability to pursue future research
– Right to use subject IP
– Ability to attract other industry sponsors
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UT Research Foundation (UTRF)
An independent, not-for-profit corporation formed in
1934 to manage IP for The University of Tennessee
Sponsors
Researcher
Material
Providers
UTRF
Start
ups
Collaborators
Licensees
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UTRF Statistics
Fiscal Year 2005 Data (7/1/04-6/30/05)
• 66 Invention Disclosures
– 33 from UTHSC (Memphis)
• 17 Issued U.S. Patents
• 8 (New) Licenses Granted
– Over $1M in royalties and fees
• More than $300,000 of license or option-based
research awarded
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Technology Transfer Statistics - 2003
Association of University Technology Managers (AUTM)
Research
$34 billion
Discovery
13,475 Disclosures
(1 per $2.5 million)
Intellectual Assets
7,133 New U.S. Patent Applications
3,378 U.S. Patents Issued
Commercialization
3675 License and Option Agreements
339 Start up Companies
$950M Gross Revenue
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What do we do?
UTRF Mission
• Manage and commercialize UT inventions
– Seek optimal development of research for the good of the University,
the Inventors, and the Public
• Support the UT research enterprise
– Grow research enterprise as means of supporting all university
missions
• Contribute to state economic development through start ups and
job creation
– Grow and cultivate entrepreneurial education and business activities
within UT and the region
– Improve the quality of life for Tennessee citizens through technologybased economic development
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Conflicting Values - Common Interest
UNIVERSITY
INDUSTRY
Knowledge for
Knowledge’s Sake
Management of
Knowledge for Profit
Teaching
Research
Service
Profits
Commercialization
of New and Beneficial
Technologies
Economic
Development
Academic Freedom
Open Discourse
Product R&D
Confidentiality
Limited Public Disclosure
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Industry Perspective on Product Development
Path to commercialization is long and uncertain
Compensation based on risks and rewards
$
Idea generation and basic research
Development into concept
Process/manufacturing design
Product/service testing
Marketing/test marketing of product/service
Sale of product/service
Initial use of product/service
Product/service market acceptance
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University Tech Transfer is Complex
• We are between everyone & “serve many masters”
• Our technology is embryonic
• Typically, our technology is not developed to meet a
market need – we push technology (“door-to-door”)
• Development requires large risk from our partner
• Significant cultural gaps between academia &
industry
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Evaluating Disclosures
• Patentability
– Existing patent search
– Relevant literature search
– Prior public disclosures
• Marketability
– Commercial potential
– Stage of technology
– Useful and practical technology
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How Does UTRF Help Inventors?
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Determine patentability
Register copyrights
Prosecute patents
Locate potential licensees
Negotiate license agreements
Assist with faculty start-ups
– Finding entrepreneurs
– Finding capital
• Manage Existing Licenses
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Patent Filing
• US Provisional Application
– Relatively inexpensive
– Provides 12 month “grace period” to file full application
• US Patent Application
– One year to file from public disclosure date
– First to invent rule
– Expensive
• International Patent Application
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No publication or disclosure allowed
First to file rule
Very expensive
Industry partner required
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License Agreements
• Agreement with a partner
– Usually private industry, but could be university or
non-profit agency
• Grants certain rights to the technology
– Can be broad or narrow
• Establishes terms and options for each party
– Licensee gains right to use, make, and sell the
licensed technology
– Licensor receives defined compensation (fees,
royalties, equity…)
– Either or both parties may have obligations to meet
to keep license
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Material Transfer Agreements are Contracts
Governing Transfer & Use of Proprietary Materials
Providers of proprietary materials
want to protect their investment!
• Providers seek access to new information and
inventions made using the provided material
– regardless of whether the provider funds the research project
• Providers wish to limit the use and transfer of their
materials
• Providers wish to limit dissemination of information on
their timeline (publication)
• Providers wish to be rewarded for their contribution to
the advancement of information
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Material Transfer Agreements are Contracts
Governing Transfer & Use of Proprietary Materials
Recipients of Materials Want to
Protect Their Investment!
• Recipients usually want to use the material in a new
way of their own design
• Recipients want to protect their own rights and that of
funding sponsors and other partners
• Recipients wish to publish results on their own
timeline
• Recipients desire to be rewarded for their contribution
to the advancement of information
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The “Mousetrap” Myth
“If a man write a better book, preach a better
sermon, or make a better mousetrap than
his neighbor, though he build his house in
the woods, the world will make a beaten
path to his door.”
Ralph Waldo Emerson
University Tech Transfer Characteristics
• A secret – most licensees find you!
• Recent studies indicate that companies find
technology by:
– Scientist to scientist contact
– Screening of publications and issued patents
– Last and perhaps least: TLO marketing efforts
• There are few blockbusters!
– 43% of the active licenses/options generated any
revenue in 2000.
– 0.6% (114) of the active licenses/options
generated over $1 million in 2000.
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Summary
• Research and related discoveries present both
obligations and opportunities
• UTRF was formed to help University
– Enter into facilitating, not limiting, contracts
– Understand and manage discoveries
– Establish paths for discovery utilization and financial
benefit
– Establish and maintain an entrepreneurial culture
– Contribute to economic development through start ups
and job creation
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Questions?
UTRF Offices are located at 920 Madison, Suite 515
I can be reached at:
rmagid1@utmem.edu
Phone: 901-448-1562
More information is available online:
utrf.tennessee.edu/tto
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