Talking Technology TransferTalking Technology Transfer

Christopher D. McKinneyChristopher D. McKinney

DirectorDirector

Office of Technology Transfer and Enterprise Office of Technology Transfer and Enterprise DevelopmentDevelopment

LecturerLecturer

Department of Electrical Engineering and Computer Department of Electrical Engineering and Computer ScienceScience

September, 2003September, 2003

It’s all here… 

Technology transferSpin-offs and start-ups

Business incubationPre-seed and seed funding

 www.vanderbilt.edu/technology_transfer

Bringing the three functions Bringing the three functions together together multipliesmultiplies the the

opportunities for Vanderbiltopportunities for Vanderbilt

Technology Transfer Enterprise Development

Business Incubation

OTTED serves Vanderbilt in OTTED serves Vanderbilt in many waysmany ways

Technology servicesTechnology services IdentificationIdentification Protection Protection Marketing Marketing Licensing Licensing Management Management

Enterprise developmentEnterprise development Bio-business incubationBio-business incubation Education and in-reachEducation and in-reach Compliance (federal, non-federal)Compliance (federal, non-federal) Materials transfer agreementsMaterials transfer agreements Clinical trials agreement servicesClinical trials agreement services Sponsored R&D agreement servicesSponsored R&D agreement services

Relationships Relationships matter…matter…

Association of University Technology Managers

Licensing Executives Society

Tennessee Technology Transfer Leadership Forum

Principal Forms of IPPrincipal Forms of IP

PatentPatent

CopyrightCopyright

Trademark/Service MarkTrademark/Service Mark

Trade SecretTrade Secret

Why IP?Why IP?

IP is a form of property which is IP is a form of property which is intangibleintangible yet often quite yet often quite valuablevaluable

The “value capture” comes The “value capture” comes through leveraging IP in through leveraging IP in partnerships, joint ventures, partnerships, joint ventures, research collaborations, licenses, research collaborations, licenses, and the likeand the like

TrusoptTrusopt®®

                                      Trusopt® (dorzolamide

hydrochloride ophthalmic solution) is the first carbonic anhydrase inhibitor formulated for topical ophthalmic use. Trusopt® ophthalmic solution 2% is available in 5ml, 10ml and 3x5ml bottles. For more information, contact Merck & Co., Inc., P.O. Box 4, West Point, PA 19486-0004. Telephone (800) 672-6372.

http://www.revoptom.com/ps/Trusopt.htm

(Utility) Patent(Utility) Patent What?What?

- process- process- machine- machine- product- product- composition of matter- composition of matter (includes software) (includes software)

PatentabilityPatentability- novel- novel- useful- useful- non-obvious- non-obvious

ExclusiveExclusive right – not right – not an an affirmativeaffirmative one! one!

TermTerm- 20 years from filing- 20 years from filing

Challenges – Challenges – must file must file within within one yearone year of public of public use, offer for sale, sale, use, offer for sale, sale, or publication; enters or publication; enters public domainpublic domain after after expiration of patentexpiration of patent

VariationsVariations- - plant patentplant patent

(asexual reproduction)(asexual reproduction)- - design patentdesign patent

(ornamental - 14 years)(ornamental - 14 years)

READ 180 READ 180 ®®

                                                                          

                            

 

                   

         

 

   

                   

         

 

   

                        

          

 

   

                             

            

 

  

http://teacher.scholastic.com/read180/

CopyrightCopyright Original worksOriginal works of of

expression fixed in a expression fixed in a tangible form, tangible form, including literary, including literary, musical, pictorial, musical, pictorial, graphic, sculptural, graphic, sculptural, and audiovisual works and audiovisual works (includes software)(includes software)

RightRight to reproduce, to reproduce, make derivative works, make derivative works, publicly distribute, publicly distribute, perform, and display perform, and display workwork

RegistrationRegistration – – not not necessary but usefulnecessary but useful

Term – Term – life of author + life of author + 70 years 70 years oror if “work for if “work for hire,” shorter of 95 hire,” shorter of 95 years from publication years from publication or 100 years from or 100 years from creationcreation

But… But… only protects only protects expressionexpression, not , not ideasideas; ; does not limit does not limit independent creationindependent creation

Variation - Variation - mask worksmask works

SentriconSentricon®®

http://www.dowagro.com/sentricon/us/story/index.htm

Trademark/Service MarkTrademark/Service Mark Any markAny mark ( (e.g.e.g., ,

word, group of word, group of words, logo) that words, logo) that identifies the source identifies the source of goods or services of goods or services from those of from those of another when used another when used in commercein commerce

OwnerOwner can prevent can prevent others from using others from using confusingly similar confusingly similar marksmarks

Common lawCommon law rights rights – federal and state – federal and state registrationsregistrations availableavailable

If registered on a If registered on a federal basis, term federal basis, term can be extended can be extended foreverforever

““Use it or lose it”Use it or lose it” Avoid your mark Avoid your mark

becoming becoming genericgeneric!!

Gatorade Gatorade ®®

                                            

http://www.gatorade.com/#

Trade SecretTrade Secret Data, formulas, Data, formulas,

patterns, patterns, compilations, compilations, programs, devices, programs, devices, methods, lists of methods, lists of actual or potential actual or potential customers/suppliers customers/suppliers that derive economic that derive economic value from not being value from not being generally known or generally known or readily ascertainablereadily ascertainable

EnforcementEnforcement based based on proper safeguardingon proper safeguarding

Cannot be usedCannot be used to to protect matter that can protect matter that can be readily observed or be readily observed or reverse engineeredreverse engineered

Can be a Can be a valuablevaluable form of protection form of protection ifif relationships are relationships are managed effectivelymanaged effectively

REACT 350 REACT 350 ®®

http://www.energyabsorption.com/products/permanent/React350.htm

High PointsHigh Points PatentPatent

inventionsinventions

CopyrightCopyrightexpressionsexpressions

Trademark/service Trademark/service markmark good willgood will

Trade secretTrade secret secretssecrets

Bio-business in the GulchBio-business in the Gulch

Cumberland Emerging Technologies (CET)

INCUBATION IS A GROWING ACTIVITY

Vanderbilt UniversityVanderbilt Universityis a driver of the Cool Springs Life is a driver of the Cool Springs Life Sciences CenterSciences Center

Contact informationContact informationChristopher D. McKinneyChristopher D. McKinney

Office of Technology Transfer and Office of Technology Transfer and Enterprise DevelopmentEnterprise Development

Vanderbilt UniversityVanderbilt University

1207 171207 17thth Avenue South, Suite 105 Avenue South, Suite 105

Nashville, Tennessee 37212Nashville, Tennessee 37212

615/343-2430 (phone)615/343-2430 (phone)

615/343-4419 (fax)615/343-4419 (fax)chris.mckinney@vanderbilt.educhris.mckinney@vanderbilt.edu

www.vanderbilt.edu/technology_transferV2.11V2.11