the intellectual properties committee at the university of kentucky bruce webb ipc chair
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The Intellectual Properties Committee at the University of Kentucky
Bruce Webb
IPC Chair
Who/what is the IPC?– A faculty committee from Colleges producing
most IP disclosures at UK
– Members identified in consultation with college Deans of Research
– Ex Officio: Don Keach, Katherine Adams, Taunya Phillips
– Supporting Staff: Mariam Gorjian, Sabrina Darnell, Natasha Jones,
Current IPC Members (voting)
Czar Grofcheck – Biosystems and Agricultural Eng. Todd Hastings – Electrical EngineeringEric Munson –Pharmaceutical SciencesBrian Rymond - BiologyPeter Spielman – Molecular and Cellular BiochemistryBruce Walcott – Electrical and Computer EngineeringKaryn Esser – PhysiologyCraig Vander Kooi – Molecular and Cellular Biochemistry Bruce Webb – Entomology, Chair
Why do we have an IPC?
The University’s administrative regulations provide for the IPC
To protect the University’s interest in IP
To serve inventors and facilitate IP development
What does the IPC do?
Authorize UK Intellectual Properties Development Office (IPDO:Don Keach) to spend funds to protect UK IP
Decision based on patentability, commercial potential and UK ownership
The IPC provides periodic advice to the University administration in IP matters and a faculty voice in this area
IPC process - Assessment• Inventor discloses technology through
Inventor Portal – triggers assessment meeting
• Inventor contacted to schedule assessment meeting (Mariam Gorjian and IPC member)
• Objectives of assessment meeting are to:– Develop an understanding of the technology –
prepare a ‘lean assessment’– Explore commercialization potential and inventor
plans to commercialize – Answer inventor questions
IPC Process: Administrative ActionAdministrative Action used when a clear decision is evident
Positive recommendation1. IP related to IP already being protected by the
University2. IP protection that is being funded by another party
Negative recommendation3. IP has been disclosed by inventor and cannot be
protected under current law.4. IP that does not belong to the University
IP Process: Committee Review• IPC Chair contacts inventors to schedule
presentations (~1 week before meeting) and provide a ‘presentation template’
• Inventor presentations scheduled at 20 minute intervals– 15 minute inventor presentation and Q&A; 5 minute
deliberation and vote– Committee votes to
– Protect IP – Motion A – Release IP – Motion B– Come Back – Motion C
IPC Process: Motions
• Motion A. Protect. University has ownership and should seek appropriate IP protection (68%)
• Motion B. Release. University has ownership but should not protect IP; University does not have ownership; IP cannot be protected (28%)
• Motion C. University has ownership but the technology is not sufficiently developed to protect (4%)
IPC Process: the meaning of appropriate.
• It depends – Develop and file a patent– Seek a patentability opinion and then decide
whether or not to file
– Provisional patent• Immediate filing• Delay filing provisional• File and let provisional expire
IPC Process: Factors in IPC Decisions
• Patentability as perceived by the committee• Potential for cost recovery– Commitment of inventors to commercialization– Engagement of potential sponsors– External funds to cover patent costs– Market size and significance of IP
• Value to the University and/or faculty inventors
IPC: Post Meeting
– Letter sent to inventors informing of committee decision
– Letter contains standard language that protects any future IP by specifically stating that:• Inventor designation has a particular meaning• If released, the release applies only to the disclosed
technology• Informs the inventors that they will be contacted by a
patent attorney who will assist them with preparing the patent
– This normally marks the end of IPC role
The IPC has a dual role
• IPC members are sympathetic to inventors and supportive of commercialization of University IP
• The IPC serves the University interests by– Providing technical expertise to University IP
decisions– Protecting the University’s IP interests– Serving as stewards of University resources
Limitations of the IPC
• Administrative charge is to authorize University expenditures to protect IP– The IPC has no role in commercialization
• Faculty volunteers• Administrative engagement• Resources– Von Allman Center (Mariam Gorjian)– Intellectual Property Development Office
Questions?
Contact information
Bruce [email protected] Chair
Mariam [email protected] Commercialization Specialist
IPC ProcessInventor Disclosure
Assessment
Administrative Action or Committee Review
Protect (A) Release (B) Do More Work (C) (IPDO) (IPDO) (come back to IPC)
Communicate Decision to InventorContactBruce Webb ([email protected])859-257-7415
Mariam Gorjian ([email protected]) 859-218-9556