wyoming research products center technology transfer and licensing senator enzi’s inventors...

Wyoming Research Products CenterTechnology Transfer and Licensing

Senator Enzi’s Inventors Conference April 20, 2013Phillip Wulf, Intellectual Property Analyst

About Technology Transfer

University Industry

PURPOSE: further development and commercialization

Purpose

• Economic development

• Talented faculty and graduates

• Corporate research support

• Licensing revenue for research and education

• Public benefits from products that reach the market

Process

• Identify new intellectual property

• Protect new technologies

• Development and commercialization strategies

Steps

Invention/Idea

Protection/Patent

Market

License

Protection• Patenting by UW of discoveries from

research:– Protects the investment in the research– Ensures the technology has a chance

to reach the market

Measuring Success

• Numerical:

0

10

20

30

40

50

1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010

# of UW Disclosures by Year

Measuring Success

• Numerical:

0

10

20

30

40

50

1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010

# of UW Patents Filed by Year

Measuring Success

• Non-Numerical:– UW’s ability to retain innovative faculty– Attract great students– Contribute to UW’s reputation– Collaborations established

Licensing Revenues

• Reimburse UW’s patent expenses

• Shared between the creators and the university

• Individual inventors• Department and Colleges• Research Products Center

University of Wyoming Example

Research Products Center

• The office at UW is unique

• Funding from both the UW Research Office and the Wyoming Business Council

• We serve BOTH university and inventors statewide

Our Goals for Independent Inventors

• 1. Facilitate technology transfer

• 2. Assist Wyoming inventors and small businesses:– Identify, protect, and commercialize IP– Transfer Wyoming ideas to the market– Support the creation of new technology

start-ups in Wyoming– Encourage partnerships

Steps

Invention/Idea

Protection/Patent

Market

License

Disclosure

• Concerns regarding disclosure:1. Protect patentability

2. Misappropriation

3. University’s role

Disclosure is okay if done correctly

Confidentiality Agreement

• Proper disclosure demonstrates you are protecting the confidentiality of your idea

• To start working with us• Form found on our

website:http://uwadmnweb.uwyo.edu/RPC/

Evaluation

• The patenting process is long and expensive

• Do a good evaluation before wasting time and spending money

F ees$3 ,000

S earch$1 ,500

P rep & F ile$8 ,000

P ro secu te$4 ,000

Evaluation

• Biggest concern is novelty and non-obviousness

• Review:– Patent estate– Journal Articles– Product Databases– Internet

Marketing

• To technology transfer, marketing means finding a licensee to commercialize the product

• Get the idea in front of companies in specific industries

Marketing

• 1. Identify market• 2. Prepare technology description• 3. Develop mailing list• 4. Mail marketing package• 5. Wait for responses• 6. Add to website• 7. Share additional data if requested

– Under Confidentiality Agreement

Negotiation

• License = Permission for another to use your property

• Usually in return for money– Up-front fees– R & D funding– Royalties

If someone else uses your patented invention without your permission you can start legal action

Negotiation

• You get what you negotiate:Royalty rate Fees/Bonuses

Patent costs Liability/WarrantyNew inventions Exclusivity

Law and venue Technical reports

Diligence Length of time

Insurance Research funding

Technology Valuation

• Keep your perspective!!• Early stage technologies are worth

considerably less that those ready for immediate sale

• Example: UW has an early stage technology– Will require 10 years of development– Will address a $10,000,000 market

Technology Valuation

Year EventPercent Success

Annual Research Costs

Discounted Value

1  Discovery   $300,000 $138,687

2     $300,000 $473,782

3     $300,000 $835,684

4 Phase I Testing 50 $300,000 $1,226,539

5     $300,000 $2,973,325

6     $300,000 $3,535,191

7     $300,000 $4,142,006

8 Phase II Testing 60 $300,000 $4,797,366

9     $300,000 $8,959,259

10 Sales   $300,000 $10,000,000

Other Assistance

• Copyrights and Trademarks

• “Please keep in mind that the results of our services serve as a mere advisement and are by no means conclusive on the issue of whether you should pursue protection for your invention or not. Only an attorney can give you a formal patentability opinion.”

Thank you

• Director: Davona K. Douglass

• Wyoming Research Products Center

– Dept. 3672, 1000 E. University Ave., Laramie, WY 82071

– 307-766-2509 (office)

– 307-766-2530 (fax)

– 9th & Lewis Street, Room 207

– www.uwyo.edu/RPC

• Phillip Wulf

– pwulf@uwyo.edu

WyomingInvents.com