University Intellectual Property and Technology Transfer

Vilnius Lithuania

2014

Kevin M. Reichelt

BSc.: BiochemistryNeuropsychology

J.D.: University of Oregon

LL.M.:University College London

Pacific Northwest National LaboratoryUniversity of Oregon Technology Transfer Office

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OVERVIEW:Background: Intellectual Property and Technology

Transfer Innovation v. InventionKnowledge Economy to the Innovation EconomyNational IP Strategy: law and policy Introduction to the United States’ innovation policy

and lawTechnology Transfer OfficesLicensing IP

Before we Get Started….

Arvydas Sabonis

Arvydas Sabonis

Arvydas Sabonis

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U.S. Constitution:Article 1, Section 8, Clause 8

The Congress shall have Power To...promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries....

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Innovation EconomyStarts with Knowledge GenerationThe “Culture of Innovation”Innovation Systems

National IP StrategyAn effective National IP Strategy is typically formulated to complement the nation’s existing strategic development plan. The plan should be integrated and aligned with Lithuania's development plan.

-Identifying the need

Having a well-integrated strategic plan ensures that resources are aligned and de-conflicted.

-Are the strategies of the Science Ministry aligned with the health ministry, and how does that work with funding decisions?

Goals of a National IP StrategyDevelop a innovation economy

Strengthen linkages between industry and research institutions.

Strengthens the country’s ability to generate economically valuable IP assets.

Builds natural bridges between researchers, universities, laboratories, investors and entrepreneurs.

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Patents & CopyrightUnderstanding the tools used to transfer

technology. PatentsCopyrightsDon’t worry about trademarks and trade

secrets, but don’t forget about them either.

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Innovation v. InventionSo many inventions and so few

innovations, and how to tell the difference.

The “Useful Arts.” What do you have? Identifying what is

useful. Get the best people in the room.

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Innovation EconomyFinancing Research – who?Scientific management

What research gets funded?

Technology protection and knowledge transfer is essential to making it workLicensing

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University ResearchWhere does the funding come from? Who owns what?Now what?

Bayh-Dole ActImpacts the ownership of inventions made with federal funding. Before the Bayh–Dole Act, federal research funding contracts and grants obligated inventors (wherever they worked) to assign inventions they made using federal funding to the federal government. Bayh-Dole permits a university, small business, or non-profit institution to elect to pursue ownership of an invention in preference to the government.Key Concepts:

• Encourage: creation, research & development.• Facilitate: management of IP assets and encourage licensing and

technology transfer.• Protection: enforcement with well-trained customs agents, police,

and competent judges who understand the value of IP.•  ownership of inventions made with federal funding. Before the

Bayh–Dole Act, federal research funding contracts and grants obligated inventors (where ever they worked) to assign inventions they made using federal funding to the federal government.[3]

 Bayh-Dole permits a university, small business, or non-profit institution to elect to pursue ownership of an invention in preference to the government

Bayh-Dole ActMajor Provisions:

Non-profits and universities may retain the title to the intellectual property developed under federally-funded research programs.

Universities are encouraged to collaborate with commercial firms.

Universities are expected to file for intellectual property protection (patents/copyrights) on inventions they elect to own.

Bayh-Dole ActMajor Provisions:

The Federal Government retains a non-exclusive license to practice the patent throughout the world.

March-in rightsTermination of licenceThe Bayh-Dole Act encourages universities to

participate in technology transfer activities.

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University Innovation CycleResearch and Development (R&D)InventionIP protectionUniversity IP managementLicensingPrivate commercial technology

developmentRoyalty development?

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Innovation CycleResearch and Development (R&D)Inventions

R&D can be cost intensive – but it is often not the case for universities to conduct R&D.

Strong links between universities and the private sector are essential.

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Innovation CycleIP protectionUniversity IP management

What is the appropriate IP: Patent or Copyright

Inovation OfficeStaffStructure

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Technology Transfer OfficeStructureInternal or externalProfessionalsMeasuring Success

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Innovation CycleLicensingPrivate commercial technology

developmentRoyalty development

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LicensingGranting the appropriate scope of rightsPermit research usesPreference for non or partial exclusivitySpecified field of useEnforceable milestones and benchmarksMaximize development of products for the

public goodEnsure appropriate return on the public

investment

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Factors Considered in LicensingStage of developmentType of productMarket value of productUniqueness of materialScope of patent coverageMarket timing

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Private commercial technology developmentStrong links to the private sector –

relationshipsCooperative research with a private

companyMutual trust

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Royalty development?“Public good”The problem with Google

Every research university began to want to create a Google

Be realistic

Arvydas Sabonis

Thank You