Seminar:
“Introduction to Technology Transfer”
Presented by:
David Yee, Esq.
Patent Agent & Licensing Assistant
Office of Technology Transfer
February 7, 2008
Office of Technology Transfer (OTT) Staff
Jennifer Murphy
Director
Gloria Garcia
Admin. Asst.
David Grossman
Asst. Director
David Yee
Patent Agent & Licensing Asst.
Joseph Janda
Life Sciences Licensing Assoc.
Carolyn Klenner
Intellectual Property Paralegal
Office of Technology Transfer (OTT) Staff
In-house Technical Expertise
• Life Sciences
• Computer Science
• Electrical Engineering
• Chemistry
GMU OTT Goals
• Contribute to the image of a research university through
visibility of results
• Fulfill expectations of faculty, students, and political, business
and community leaders
• Facilitate application of university research to economic and
social development
• Facilitate strong corporate relations
• Satisfy obligations under Bayh-Dole Act of 1980 - grants
universities title to inventions conceived and developed with
federal research funding
• U.S. manufacturer for the U.S. market
• Government march-in-rights
• Governmental non-exclusive, royalty fee license
• Create revenue for the university
GMU OTT Roles
•
•
•
•
•
•
•
•
Develop and Administer Policies
Create an Environment to Foster Disclosure
Identify and Assess Intellectual Property (IP)
Protect IP
Market IP
License IP
Maintain License Relationships
Report and Disseminate Success Information
GMU OTT Constraints
• Expectation that Technology Transfer Offices will
fuel economic development
• Public institutions as stewards of taxpayer dollars
• State wants to see dollars stay in-state
• Issues Imposed by VA Attorney General’s Office
• Issues Imposed by VA Appropriation Committee
Solution to GMU OTT Constraints
• Pays for patent costs
• Conducts licensing
• Appears to be a complicated process but it allows
for flexibility
Tech Transfer Fundamentals
So, what is Tech Transfer?
•
A vehicle for delivering research and
innovations to the public that incorporates 2
major areas:
I. IP Protection
II. Commercialize ($$$)
I.
IP Protection
Protectable Subject Matter
• Patents
• Copyrights
• Trademarks
Brief Summary of Protectable Subject Matter
Patent (***Utility***)
Copyright
Trademark
What is
protected?
Device, Composition, or
Process
Expression, not ideas
Source-indicating word,
symbol
Criteria for
protection?
Utility, Novelty, Nonobviousness, and Enablement
Originality
Distinctiveness
To obtain
protection…
File patent appl’n with
USPTO
Fixate expression on a
tangible medium; file
application with Copyright
Office
Use in commerce; file
trademark appl’n with
USPTO
Protects
Against…
Manufacture, use, sale, offer
to sale, or import of claimed
subject matter
Unlawful copying
Confusing and/or
disparaging use
Duration of
Protection
20 years from filing patent
application subject to renewal
(Generally) Life of author +
70 years, not subject to
renewal
Continuous with use and
subject to renewal
Patents
The U.S. Constitution grants U.S. patent rights.
“Congress shall have the power …
to promote the progress of science and the useful
arts, by securing for limited times to authors and
inventors the exclusive right to their respective
inventions and discoveries.”
U.S. Const., Art. I, § 8
Public Policies Underlying Patent Law
Benefit the public by providing the prompt disclosure
of new inventions to the public
(in exchange for)
Provide inventors and businesses with an incentive to
innovate, by creating a legal right to exclude others
from making, using or selling an invention for a
limited time.
Patents
Types
• Utility
• Design
• Plant
Limitations of Patents
• Geographically
• U.S. patents are limited to the U.S. and its
territories
• U.S. patents cannot be enforced outside the U.S.
• Term
• Utility – 20 years as of the filing date
• Design – 14 years from the date the patent issues
• Plant – 20 years from the filing date
What is patentable?
• Any new and useful process, machine,
manufacture or composition of matter
• Any new and useful improvement thereof
What is not patentable?
• A mere idea (e.g. law of nature or principle)
without application.
• Pure mathematical algorithms (e.g., E = mc2).
• An inoperable device (e.g., perpetual motion
machine).
• An obvious improvement of an old device.
Some “interesting” patents
U.S. Pat. No. 4,809,435 – “Eating Utensil”
Date of Patent: Mar. 7, 1989
Inventor: Gerald L. Printz
Some “interesting” patents
U.S. Pat. No. 5,934,226 – “Bird Diaper”
Date of patent: Aug. 10, 1999
Inventors: Lorraine Moore, Mark Moore, Cely Giron
Ex. Shortest Chemistry Patent Claim
U.S. Pat. No. 3,156,523 – “Element 95 and Method of Producing Said
Element”
Date of patent: Nov. 10, 1964
Inventor: Glenn T. Seaborg
What is claimed is:
1. Element 95.
95
Am
243.0614
What are the requirements for a patent?
The invention must be:
1. Useful (35 U.S.C. § 101);
2. New (35 U.S.C. § 102);
3. Nonobvious (35 U.S.C. § 103); and
4. Enabling (35 U.S.C. § 112)
Useful (Utility)
The invention must contribute to society, a foundational
requirement of the patent system.
To accomplish this requirement, it must have a practical
application.
New (Novelty - Not previously known)
The invention must NOT have been :
• known or used by others;
• described in a printed publication;
• used in public; or
• on sale
Note: In the U.S., the inventor must NOT have disclosed his/her
own work for >1 year before the filing of the patent
application.
Nonobvious
A patent may not be obtained …
• if the differences between the subject matter
sought to be patented and the prior art are such
that the subject matter as a whole would have
been obvious at the time the invention was made
to a person having ordinary skill in the art to
which the subject matter pertains.
Example of Nonobvious
The Invention
A transgenic mouse (rodent/mammal) comprising Gene X
fused to Promoter A, wherein X is overexpressed and the
mouse (rodent/mammal) has a useful phenotype.
Reference 1
Discloses that when Gene X is fused to Promoter A, X is
overexpressed in cells in tissue culture.
Reference 2
Discloses a transgenic mouse comprising Gene S under the
control of Promoter A. The mouse has NO useful phenotype.
Arguments?
Enabling
• Enablement – must teach others how to make and
use the invention (consider it as a blueprint)
• Written Description – must describe the invention
• Best Mode – must disclose the best way of
making the invention
Foreign Patents
Patent Cooperation Treaty (PCT)
• provides central filing and searching of application but
examination is carried out by each country
• many countries have an “absolute novelty” requirement
– Public disclosure anywhere in the world (e.g., public
use, commercial sale, etc.) prior to the filing of the
patent application = no patent
Every country has a different patent system, but may share
priority date under Paris Convention
Foreign Patents
Advantages
• Protect local market
• Block competitor
Disadvantages
• Must have agent in each country to prosecute
• Can be costly and/or difficult to monitor
Inventorship v. Authorship
•
Inventorship
–
–
–
•
Defined as who conceived the idea
Not defined as who conducts experimentation or gathers data
under the direction of another
Applies mostly towards patents
Authorship
–
–
writing or information embedded on a tangible medium
(includes ideas, experimentation, data, results, photos, etc.)
Applies mostly towards copyrights
Technology Developed with Sponsored Funds
Federal Funds –
Bayh Dole Act of 1980
• Must be reported
• Absolute obligation to
disclose
• Obligation to patent &
commercialize
Industry Funds
• Contract clauses likely
to govern treatment of
patents
• Disclosure
Requirements
• Publication Review
• Joint Invention?
GMU Patent Policy
For GMU patent policy, please see:
http://www.gmu.edu/research/OSP/PolicyAndProcedure/PatentPolicy.html
II.
Commercialization
A. Technology Assessment
B. Marketing
C. Licensing
A.
Technology Assessment
Technology’s Developmental Stage
• More of a concept or more towards reality?
• Sufficient data?
• Prototyped?
Anticipated technological acceptance in the
marketplace?
• Faster or “better” is not always readily embraced
with open arms
B.
Marketing
Examples of OTT’s Efforts
•
•
•
•
•
•
Identify potential applications for the technology
Research the industry (e.g., major and minor players)
Presentations to potential licensees and entrepreneurs
Conferences/expos
Network
Post technology on websites
C.
Licensing
Mechanisms for Technology Transfer
• Non-Exclusive License
• Exclusive License
Note:
Generally OTT does NOT transfer title b/c:
1. We need to ensure that technology is used, not shelved
2. We need to maximize fields of use and markets served
3. For start-ups, we want to keep control in the event of
bankruptcy
C.
Licensing
Goals for License Deal
• Fields of use - apply technology in as many market sectors
as possible
• Diligence requirements in product development and sales
goals
• Create revenue
• Create jobs
• Make certain the technology is used
• Generate support for new research
• Educate the public with advanced technology
C.
Licensing
Forms of revenue
• License Fees (Upfront or Recurring)
• Due Diligence Fees
• Equity
• Milestone Payments
• Royalties
Royalties (after
reimbursable expenses)
Current Royalty Income
Allocation (as of 8/23/89)*
Inventors
50%
GMU
50%
* http://www.gmu.edu/facstaff/handbook/aF.html
Examples of GMU Startups
Mineral Sciences LLC
“Synthetic Nanoparticle Soil Materials”
Examples of GMU Startups
Global Water Systems
“An Iron Composition Based Water Filtration System for the
Removal of Chemical Species Containing Arsenic and Other
Metal Cations and Anions”
OTT Open House
Open House on Fridays, 9AM - 12PM
• Obtain and e-mail a completed Preliminary
Disclosure Form to David Yee or any other OTT
staff member
• http://www.gmu.edu/research/techtransfer/forms.html
• Set up appointment with Gloria Garcia
• Phone: (703) 993-8933
• E-mail: ggarcia3@gmu.edu
• Come in
OTT Location and Directions
Questions?
David Yee, Esq.
Office of Technology Transfer
George Mason University
4400 University Dr., MSN 5G5
Patriot Square, Suite #2406
Fairfax, VA 22030
Phone: (703) 993-3949
Fax: (703) 993-9710
E-mail: dyee@gmu.edu