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University Patent Process

University Patent Process. September 30, 2013 Mina W. Zion, J.D. Director. Agenda. Introduction. Commercialization and Patent Strategy. Industry Rationale. Conclusion/Appendix. Introduction. Office of Research Dr. Shreek Mandayam Vice President, Research.

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University Patent Process

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  1. University Patent Process September 30, 2013 Mina W. Zion, J.D. Director

  2. Agenda Introduction Commercialization and Patent Strategy Industry Rationale Conclusion/Appendix

  3. Introduction Office of Research Dr. ShreekMandayam Vice President, Research Technology Commercialization Mina Zion, J.D. Director Sponsored Programs Sarah Piddington Director Research Compliance Sreekant Murthy Compliance Officer Martin Kent IP Law Intern Stephanie Heiser Administrative Assistant Stephanie Lezotte Assistant Director Eric Gregory Contracts Specialist Kristy Carpenter Post-Award Specialist

  4. Mina Zion • Academic Technology Transfer • University of Delaware • Stevens Institute of Technology • $1.3M in deal origination over 3 years • Industry • Technology Scout at BASF Future Business • $45M in deal flow management, primarily with university tech transfer offices • M&A Project Manager at JPMorgan • Education • J.D., Rutgers University Law School – Newark • B.S. in Chemical and Biological Engineering, NYU Poly Introduction

  5. Why Patent? • Transferrable property interests • Sold • Licensed • Stolen • Subject to traditional Property • and Contract Laws • Develop industry partnerships that will • fund future research • Additional Recognition in the chosen field of art Introduction

  6. Agenda Introduction Commercialization and Patent Strategy Industry Rationale Conclusion/Appendix

  7. Bayh-Dole Act • 37 CFR 401.14(a) • Incorporated into all federal funding agreements • Mandate: BRING INNOVATION TO COMMERCIAL MARKETPLACE. • Requirements: • Report subject inventions to the sponsoring agency • Elect whether to retain title • Educate employees regarding the patenting process • Grant to the gov’t. irrevocable “march-in” rights • Share royalties with inventor • Use the balance of revenue after expenses to fund scientific research and education Strategy

  8. Rowan IP Policy Strategy

  9. Rowan Commercialization Strategy Commercialization Strategy

  10. Rowan Commercialization Strategy Commercialization Strategy

  11. Projected Disclosures, FY 2013 Commercialization Strategy

  12. Rowan Commercialization Strategy Commercialization Strategy

  13. Patent Costs Patent Strategy

  14. Rowan Commercialization Strategy Commercialization Strategy

  15. Balancing Innovation Produces Economic Value Patent Strategy COMMERICALLY RELEVANT

  16. Agenda Introduction Commercialization and Patent Strategy Industry Rationale Conclusion/Appendix

  17. Innovation Pipeline - Academia Industry Rationale The Demand The Innovation The Opportunity

  18. Innovation Pipeline - Industry Industry Rationale The Demand The Innovation The Opportunity

  19. Innovation Pipeline – Industry Collaboration with Rowan Industry Rationale

  20. Industry Business model - Strengths/Weaknesses. Industry Rationale

  21. Agenda Introduction Commercialization and Patent Strategy Industry Rationale Conclusion/Appendix

  22. Targeted Innovation Conclusion UNMET MARKET NEED To Create A Successful Product, Don’t Start With A Blank Piece of Paper – Start With A Customer Need.

  23. Conclusion Creativity is wonderful. But creativity that isn’t linked to making money is just a hobby. It isn’t a viable business concept. And the reason you are trying to come up with a new idea is, ultimately, to make money. -Paul Brown, Forbes Magazine 09/15/2013

  24. Conclusion • Starts With Marketable Research That Addresses A Valuable Business Objective

  25. Conclusion • Open Discussion

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