Technology Transfer at CU-Boulder Responsibilities and Expectations

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2. Overview of the newly-reorganized CU Technology Transfer OfficeTechnology Transfer ProcessInvention DisclosurePatent PreparationMarketingLicensing. Agenda. 3. Technology TransferOffice of the Vice President of Academic Affairs and ResearchUniversity of Colorado. System OfficeDavid Allen

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Technology Transfer at CU-Boulder Responsibilities and Expectations

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1. Technology Transfer at CU-Boulder Responsibilities and Expectations Kate Tallman IP Manager Ken Porter Interim Director August 14, 2002

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7. 7 Invention Timeline: Conception to Patent Protection

8. 8 The Tech Transfer Process: Research Invention Evaluation Patent Market License Long-term Industry Partner Now I am going to tell you about how the technology transfer process works here at CU. The series of events is: you have an invention which comes out of your research. At that point, you submit an invention disclosure to our office. We work with you to evaluate commercial potential and patentability, then file a provisional patent, begin to market the invention and find a company to license the invention. At that point, we begin to develop a long-term industry partnership with the licensee that benefits you through continued engagement with your research. Royalties, research support, industry expertise. Now I am going to tell you about how the technology transfer process works here at CU. The series of events is: you have an invention which comes out of your research. At that point, you submit an invention disclosure to our office. We work with you to evaluate commercial potential and patentability, then file a provisional patent, begin to market the invention and find a company to license the invention. At that point, we begin to develop a long-term industry partnership with the licensee that benefits you through continued engagement with your research. Royalties, research support, industry expertise.

9. 9 The Tech Transfer Process Invention Disclosure www.cu.edu/techtransfer/campus/idf.html Inventors Confidential and Non-confidential Descriptions Evidence for Patent www.uspto.gov/patft/index.html Novelty, Non-obviousness, Utility Public Disclosure Sponsorship Here are the basics on an invention disclosure. This is for your reference, so I won’t go through it all in detail. You can find the disclosure form on our website. An important section is evidence for patent. In this section, we ask you to go through the three criteria that Tammy told you about novelty, non-obviousness and usefulness. We would also like you to do a search on the patent office website for prior art (or what else has been patented in this area which may prevent you from patenting it). Public disclosure asks if the work has been presented publicly. Sponsorship asks for any sponsors of the research. Here are the basics on an invention disclosure. This is for your reference, so I won’t go through it all in detail. You can find the disclosure form on our website. An important section is evidence for patent. In this section, we ask you to go through the three criteria that Tammy told you about novelty, non-obviousness and usefulness. We would also like you to do a search on the patent office website for prior art (or what else has been patented in this area which may prevent you from patenting it). Public disclosure asks if the work has been presented publicly. Sponsorship asks for any sponsors of the research.

10. 10 The Tech Transfer Process Patenting Background Inventor 1°, Attorney 2° Detailed Description Attorney 1°, Inventor 2° Examples Inventor Claims Attorney 1°, Inventor 2° This shows you what we need from you in order to file a patent. The background needs to be written by you, and then sent to the attorney to put into legal form. This is a description of all prior art that has lead up to your invention. It should illustrate the gap in knowledge that your invention fills by showing the limitations of other solutions. Detailed description is heavily in legal language, so the lawyer will take the lead on this section. However, it will involve conversations between you and the lawyer as well as your review of this section to make sure everything is captured. Examples are your responsibility. This is essentially your experiments and the results of your experiments. The claims are also in legal language so the lawyer will take the lead. However, they are the essence of your invention, and what it does that hasn’t been done before. It requires your knowledge of the technology and the prior art. The more work you do, the stronger the patent will be, and the more attractive it will be for a corporation to license.This shows you what we need from you in order to file a patent. The background needs to be written by you, and then sent to the attorney to put into legal form. This is a description of all prior art that has lead up to your invention. It should illustrate the gap in knowledge that your invention fills by showing the limitations of other solutions. Detailed description is heavily in legal language, so the lawyer will take the lead on this section. However, it will involve conversations between you and the lawyer as well as your review of this section to make sure everything is captured. Examples are your responsibility. This is essentially your experiments and the results of your experiments. The claims are also in legal language so the lawyer will take the lead. However, they are the essence of your invention, and what it does that hasn’t been done before. It requires your knowledge of the technology and the prior art. The more work you do, the stronger the patent will be, and the more attractive it will be for a corporation to license.

11. 11 The Tech Transfer Process Technology Transfer Team We have a limited budget for patents, so we can rarely patent a technology without first lining up a licensee. Decision to patent depends on the following questions: Is the inventor engaged in the process? This means spending time on the patent, providing industry contacts, talking to potential licensees. We will not be successful without you. Is there a market for the invention? Will the invention be a profitable product, or is there too much competition? To answer this, we use the contacts that you provide on your invention disclosure form. We call them for their opinion on the commercial feasibility of the technology. Is the invention patentable? To answer this question, we again count on you to do a search of the patent literature to find out if it meets the novelty standard. We count on you to tell us why it is not obvious and useful. We take that information and evaluate it based on our experience. The more work you do, the better our decision can be. Motivation of the inventor to participate Assessing patentability and technical feasibility (given the embryonic IP) Assessing value in the absence of a market for the technology Determining the development trajectory and cost Certainty over rights to the technology Continuous or discontinuous innovation We have a limited budget for patents, so we can rarely patent a technology without first lining up a licensee. Decision to patent depends on the following questions: Is the inventor engaged in the process? This means spending time on the patent, providing industry contacts, talking to potential licensees. We will not be successful without you. Is there a market for the invention? Will the invention be a profitable product, or is there too much competition? To answer this, we use the contacts that you provide on your invention disclosure form. We call them for their opinion on the commercial feasibility of the technology. Is the invention patentable? To answer this question, we again count on you to do a search of the patent literature to find out if it meets the novelty standard. We count on you to tell us why it is not obvious and useful. We take that information and evaluate it based on our experience. The more work you do, the better our decision can be. Motivation of the inventor to participate Assessing patentability and technical feasibility (given the embryonic IP) Assessing value in the absence of a market for the technology Determining the development trajectory and cost Certainty over rights to the technology Continuous or discontinuous innovation

12. 12 The Tech Transfer Process Marketing Identify application From inventor’s ideas and industry trends Identify companies Online news search Identify individuals Professional societies Conferences Industry publications Calling headquarters Package invention This is how the marketing process works. First we need an understanding of the 1 or 2 most likely commercial applications for your technology. This comes from your ideas about what the invention is useful for. We then start calling companies. We start with the industry contact s that you provided to us on the invention disclosure form and during our initial meetings. Even if these contacts are not interested in licensing themselves, they know their industry and they can point us to others who are interested. We continue to identify companies that are potential licensees and the individuals within the companies who are close to that technology. If we don’t get the contacts directly from you, we may find these people through professional societies such as the IEEE for electrical engineers. We look for them as speakers at conferences, or their research publications or industry publications. As a last ditch effort, we may call the company headquarters directly and see how far we get. Finally we present the invention to the company, using the non-confidential summary that you provided in the disclosure, and tailoring it to the particular needs of the company. This is how the marketing process works. First we need an understanding of the 1 or 2 most likely commercial applications for your technology. This comes from your ideas about what the invention is useful for. We then start calling companies. We start with the industry contact s that you provided to us on the invention disclosure form and during our initial meetings. Even if these contacts are not interested in licensing themselves, they know their industry and they can point us to others who are interested. We continue to identify companies that are potential licensees and the individuals within the companies who are close to that technology. If we don’t get the contacts directly from you, we may find these people through professional societies such as the IEEE for electrical engineers. We look for them as speakers at conferences, or their research publications or industry publications. As a last ditch effort, we may call the company headquarters directly and see how far we get. Finally we present the invention to the company, using the non-confidential summary that you provided in the disclosure, and tailoring it to the particular needs of the company.

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