ORIC Training Program
NUST
Presenters
Ms. Eram Zaidi
IP Manager, NUST
Publish or Perish Mindset
Select
Research
Topic
Study Existing
Literature
Develop your
Idea
RESEARCH PHASE
Conduct
Research
Work in lab (if
necessary)
Write Paper
PUBLICATION PHASE
Submit to a
Journal
Review
Process
Paper
Approved for
Publication
IDEA PHASE
COMMERCILIZATION ?
Publish and Patent Mindset
IDEA
PHASE
RESEARCH
PHASE
PUBLICATION
AND IP
PROTECTION
PHASE
Select
Research
Topic
Study Existing
Literature
Study Prior
Art
Develop your
Idea
Write Paper
Conduct
Research
Work in lab (if
necessary)
Submit to a
Journal
Review
Process
Paper
Published
File Patent
Patent
Granted
Invention
Disclosure
Draft Patent
Business
Plan
Technology
Transfer
Firms
$ 65.2 B
$29 B
$6.3 B
1.9 B Euros
$10.7 B
$26 B
$2 B
GB 5.3 B
$99.8 B
Faculty/Student Inventors
John Hennesy
MIPS
Sergey Brin and Larry Page
Google
John Livil
Transistors
Thomas J Fogarty
M.D.
William E. Spicer
Semiconductors
Minimally invasive surgery,
Invention and Innovation,
Robotic Surgery
Problem Discovery
Garden of Forking Paths
Learn from Prior Art
Aha Moment!
Develop the Innovative
Idea
Put idea in practice
Broad Adoption by Society
Novel
Non-Obvious
Utility
Two Different Belief Systems
• Innovation is a by-product of a proper
environment, therefore, influence and
control the environment:
– Examples: Sun, Google, Yahoo, Microsoft, Cisco
• I’ve a vision, I’ve the Money, and I am
in Control here
– Examples: Walt Disney, Sony, NTT Docomo,
Apple, Pixar, Facebook
Types of Intellectual Property
• Trade Secrets
• Copyrights
• Trademarks
• Patents
Trade Secrets
• Not known to public
• Provide economic benefit to its holder
• Reasonable effort being made to maintain its secrecy
“Merchandise 7X” Formula
Kentucky Fried Chicken Recipe
Copyrights
•
•
•
•
•
Original works of authorship
Exclusive rights to publish, distribute, and adapt
Rights are licensable and transferable
Durations: 50-70 Years after creator’s death
Fair Use Doctrine:
– Purpose/intent of use; nature of work; portion of the original work
used; and potential effect on market value of the original
Trademarks
• A Distinct sign:
– A name, word, phrase, logo, symbol, design, image, or a combination of these
elements.
• Used by an entity, e.g., a Business or organization
• Identifies either a product or a service
• Process for obtaining a trademark:
– Interstate Commerce
– Use in Commerce
– Difference between  and 
Patents
•
•
•
•
Patents encourage innovation
Bargain: Monopoly with duration vs. public good
Property rights to the inventor
Patent Types (Provisional vs. Non-Provisional):
– Utility Patent: product, machine, a process, or even composition of matter,
20 years from date of filing
– Design Patent: only appearance, only 1 claim, 14 years
– Plant Patent: only one claim, 20 years
• Writing a Patent:
– Abstract, Diagrams, References,
(Patents and other References),
Description (Background, Summary,
Brief Description of Diagrams,
Detailed Description of Preferred
Embodiments, Claims
NOVEL
NON-OBVIOUS
UTILITY
Class Assignment
The “Bayh-Dole Act”
• In order to motivate inventors and universities, in 1980 the
US Government passed The Bayh-Dole Act.
• This act enabled Universities to own inventions made with
government funds
• It also required that Universities share royalties with
inventors
• Universities were encouraged to collaborate with industry
– Preference in licensing to small business
• Exclusive licensing was allowed
– Preference for U.S. industry
Results of the Bayh-Dole
•
•
•
•
Numbers of University Technology Transfer offices increased
Numbers of patents increased
Level of licensing increased
Universities were forced to develop new policies, one of
which was “Revenue” sharing with inventors
Technology Transfer
• Technology Transfer is the process of facilitating the
relationship between academia and industry,
allowing ideas to flow or be transferred both ways
and resulting in the development of technologies.
• Technology Transfer is the process of taking an
invention from laboratory to industry
The Core Technology Transfer Documents
•
•
•
•
•
•
•
•
Invention Disclosure Form
Inventor Assignment Form
Confidentiality Agreements
Term Sheet
Inter-Institutional Agreements (Term Sheet)
License Agreements
Option Agreements
Patents
–
–
–
–
Provisional applications
PCT applications
National applications
Issued patents
Structure of A License Agreement
Introduction
Definition
Grant
Royalties
Representations and
Warranties
Term and Termination
Assignment and Transfer
Miscellaneous Terms
Signatures
Commercial Spin offs
• Company needs to register with the SECP
• Type of Companies:
•
•
•
•
•
Single Member Company
Private Company
Public Company
Holding Company
Association (Section 42 Non-Profit)
Thank You
• Contacts:
• shabbier@storagetree.com
• eramzaidipk@yahoo.com
View of University Technology Transfer
Transfer of Technology
EDC
IPO
Become an
entrepreneur
Develop skills for
entrepreneurship
Learn how to write
Business plans
Non-disclosure agreement
Disclosure of Invention
IP Filing
IP management
Researcher/
Inventor
Technology
Licensing
Pre-Marketing
Technology
Assessment
Commercialization
Funding
Opportunities
Industrial
Collaboration
Start up Company
Start an
Incubatee
company at
TIC
Market
Final Product In the
Market