Technology Transfer at Rice
New Faculty Orientation
Science & Engineering
Luba Pacala
Manager, Business Development & Licensing
Agenda
• Intro to Office of Technology Transfer (OTT)
• IP Policy & Bayh-Dole Act
• OTT Activities
– Invention Reporting
– Licensing Process
– Materials Transfer Agreements
– Confidentiality Agreements
• OTT Contacts
• Questions?
Tech Transfer Objectives
OTT established in 1998 to:
 Provide Service to the Faculty
 Promote Economic Development
 Become a Self-Sustaining Entity
by
• Facilitating the development and commercialization
of technology
• Protecting traditional academic freedom and values
• Generating licensing revenues
• Attracting industrial support of research and
promoting industry/university interaction
OTT Responsibilities
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Invention Processing/Reporting
Intellectual Property (IP) Protection
Marketing & Licensing of Technology
IP Provisions in Sponsored Research Agreements
Materials Transfer Agreements
Confidentiality Agreements
Revenue Sharing
Option Agreements
Inter-institutional Agreements
IP Policy
Rice University Research Policy No. 333
Patents and Software
•
All patentable inventions conceived or first reduced
to practice in the conduct of University research by
faculty, postdoctoral researchers, staff and/or
students of Rice shall belong to Rice.
•
All potentially patentable inventions conceived or
first reduced to practice by University researchers
in the course of their University responsibilities
must be disclosed in a timely manner to the
University.
Bayh-Dole Act
Enacted in 1980
Objectives
• Encourage US economic development
• Improve US industry competitiveness
Result
• Allows universities, non-profits, and small
businesses to take title to and license inventions
coming from federally-funded research
Obligations under Bayh-Dole
• Inventions must be reported to funding agency
(done by OTT)
• Grant of non-exclusive, non-transferable,
irrevocable, paid-up license to government
• Promote commercialization of technology
(usually through licensing)
• Give preference to US industry and small
business
• Share royalties with inventor(s)
• Remaining income used for education and
research
Royalty Sharing Policy
Inventor(s)
Graduate Education
Department or Center/Institute
University
37.5%
18.5%
14%
30%
Distributions made after patenting/marketing costs are
recovered
Invention Reporting
Guidelines
• Complete invention disclosure form. A completed form
facilitates the processing of the disclosure within OTT.
http://ott.rice.edu/community/submit_innovation.cfm
• Be sure all inventors sign the disclosure
• Send completed form to techtran@rice.edu (not to an individual
in OTT)
• Timing is important; please give OTT sufficient time to address
your disclosure before you disclose publicly
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Once you put an invention into the public domain via publication, presentation, etc.,
you lose foreign patent rights AND put a 12 month bar date on filing of US patent
application)
If you have any questions on what constitutes a public disclosure, contact OTT
Licensing Process
Invention Disclosure Submitted
Technology Transfer Office
Evaluates Technology
Patent Committee Presentation (by Inventor)
Protects Technology (Outside Patent Counsel)
Markets Technology
Negotiates License Agreement
Manage License
To Patent or Not to Patent?
Considerations
• Intellectual Property Position
– Prior art
– Enablement
– Narrow vs. Broad Patent Claims
• Market
– Size, Time to Market, Minor Improvement vs.
Disruptive Technology
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Commercial Need
Inventor
Obligations to Sponsors
Potential Licensees
Material Transfer Agreements
•
A Material Transfer Agreement (MTA) must accompany all transfer of
materials outside the university
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Issues
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Export control (esp. with carbon nanotubes)
Liability/Indemnification
Disclaimer of warranties
Ownership of materials & related IP
Other contractual obligations
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MTAs accompanying incoming materials must also be reviewed and
approved by OTT
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Signature authority on MTAs rests with the Director of OTT
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If you need an MTA drafted or reviewed, please contact OTT
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Uniform Biological Materials Transfer Agreement / Simple Letter
Agreement available for transfer of biological materials to other
universities
Export Control
• Federal government controls export of certain goods and
technologies considered strategic to US security and economic
interests
• Export Administration Regulations (EAR), implemented by Dept.
of Commerce, apply to transfer of physical items and information
(technology) and provision of certain services to persons and
entities outside the US (exports) and to the disclosure of specific
information and provision of certain services to foreign nationals
inside the US (deemed exports)
• Violations may result in criminal penalties and civil sanctions
• Rice is committed to full compliance with all export control
regulations
• OTT takes such regulations into account when developing all
MTAs and NDAs, and has specific tools which are used to
ensure compliance
• All researchers should consult with OTT to assist in transfer of
materials or information outside the University
Confidentiality Agreements
• One-way and two-way confidentiality agreements
(CAs) available
• CAs limit disclosure and use of Rice’s confidential
information and preserve patentability of information
to be disclosed to third parties
• All Confidential Information must be in writing and
marked as confidential; confidential information first
disclosed orally must be put in writing and so marked
within 10 days of disclosure
• All CAs, whether drafted by Rice or coming from
another institution, must be reviewed and approved
by OTT
• Signature authority on CAs rests with the Director of
OTT
OTT Organization
Nila Bhakuni, Director
bhakuni@rice.edu
ext. 6231
Luba Pacala, Mgr. Bus. Dev. & Licensing (Chemistry & Nano)
lpacala@rice.edu
ext. 5590
Brian Phillips, Licensing Associate (Biological Sciences)
brian.j.phillips@rice.edu
ext. 6278
Dan Miller, Licensing Associate (Engineering & Comp. Science)
Dan.miller@rice.edu
ext. 5580
Joyce Galiette, Financial Manager
jgaliette@rice.edu
ext. 6201
Lydia Tkachenko, Patent Manager
ltkachenko@rice.edu
ext. 6125
Marie Perez, Administrative Assistant
marie.perez@rice.edu
ext. 6188
Resources
OTT Website
http://ott.rice.edu
Rice Policies
http://professor.rice.edu/professor/Policies.asp
Uniform Biological Materials Transfer Agreement
http://www.autm.net/aboutTT/aboutTT_umbta.cfm