commercializing discoveries: disclosing your intellectual property by ryan n. fiorini, ph.d., mba,...
TRANSCRIPT
Commercializing Discoveries: Disclosing your Intellectual
Property
ByRyan N. Fiorini, Ph.D., MBA, MHA
Licensing and Commercialization ManagerMUSC Foundation for Research Development
Goal of Presentation
• How do I Commercialize my Technology?• What does the Foundation for Research
Development (FRD) do?• Where can I get more information?
• Why is it important to learn about technology transfer?
MUSC Foundation for Research Development909 Haborview Tower
876-1900http://frd.musc.edu
Who Works at FRD?
Chip Hood, J.D.Executive Director
Lisa BensonPatent Administrator
Karen Hallenbeck, J.D.Legal Council
Ryan Fiorini, Ph.D., MBATechnology and Marketing Manager
What does FRD do?
Manage Technology Transfer for MUSC
Bench BedsideIndustry
What does FRD do?
Manage Technology Transfer for MUSC
Where is the Information?
• FRD Website
http://frd.musc.edu
– Forms– Policies– Procedures– Links
Evaluation
Patent
Licensee
Release
ROI
Retain
Technology TransferIn
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Licensee
Invention Protection: Step 1
Document that you are the first one to come up with this ideaA. Write the idea down in your notebookB. Gather data to support your idea
A. Protocols and ExperimentsB. Data and Analysis
C. Keep accurate recordsA. If in doubt, write it down
Dateand
Witness
Eureka! You have an ideaEureka! You have an idea
At any time: Call us! 876-1900We’ll help do an early assessment of the
commercial potential of your invention
Why Date and Witness?
NASDAQ: MEND
Evaluation
Patent
Licensee
Release
ROI
Retain
Technology TransferIn
vent
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Dev
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Licensee
The disclosure
What to Report? Anything that is new (or improved) and may be useful:
e.g.• new use of known compounds• new chemical structures• devices• reagents• cell lines• software• diagnostic markers• copyright• etc.
When in doubt, CALL US! 876-1900
You CAN’T Patent
• Genes, Peptide, RNA, Long Protein, Novel Bacteria found on ground
• Can’t patent a natural occurring product
You CAN Patent
• Can patent its use or method to extract• Product by Process• Biomarker, Probe, Gene Modulator, Novel
Therapeutic, Probiotic
Why should I file an invention disclosure?
• High Publicity of Your Research
• Further Progress of Your Science– Sponsored Research
• Licensing of Technology– Royalties
Make it Big
Nature Reviews Molecular Cell Biology 5, 243-247 (March 2004)
taxol
Evaluation
Patent
Licensee
Release
ROI
Retain
Technology TransferIn
vent
orF
ound
atio
n fo
r R
esea
rch
Dev
elop
men
tO
utsi
de M
US
C
Licensee
Evaluation
What are we looking for? • What is the commercial potential? • Likelihood of obtaining Intellectual Property
= What is a company looking for?
Evaluation
• What is the commercial potential?– Is it better, cheaper, quicker?– How much development needed before
commercialization?– What is the Market size?– Potential for making a profit?– Is a company interested already?
Case Studies and Issues
**Further information available on website and at all departmental seminars
Most Common Mistakes
• Public Disclosure Prior to Protection
• Signing Rights– MTA
• Inadvertent COI
• Sponsored Research
Source: Council on Governmental Relations
The Disclosure
When to Report? Before public disclosure!
Including: – Publication of the paper– Poster in hallway– Student presentation– Departmental seminar– Discussion with colleague from other institution– Material Transfer Agreement (MTA)– Grants
If you think it might be a disclosure,
calll us! Confidentiality Agreement
876-1900 or http://frd.musc.edu
Cohen-Boyer
• Recombinant DNA– Stanford, UCSF
• Paper – November 1973
• Applied for Patent 1974
• Patent Issued December 2, 1980
The Outcome
• Still widely successful– Total loss of foreign rights
• Patent Expired in 1997– Licensing Revenue $255 million– From $35 billion in worldwide sales
Point: Send in your disclosures
Blockbuster Drugs from Patent
• Epogen (Amgen) -1989
• Procrit (Amgen)
• Humulin (Lilly)
• Novolin (Noro-Nordisk)
• In vitro HIV (Abbott)
• Recombinate (Genetic Institute-Baxter)
• Proleukin (Chiron)
• Intron A (Schering) - 1996
MTA
• Signatory Authority
• Loss of Rights
• Future Inventions
• Definition of Material
• Conflicts with Existing IP
• MUSC Example
Consider the Following…
• Post Doc develops 3 new novel targets in a pathway
• Pathway not patentable
• Info kept from IP office
• Unauthorized signed by Post-doc
• 4 years later targets and novel therapeutics sent to IP office
• ALL PATENT RIGHTS LOST
Conclusion
• Importance of technology transfer
• Role of Intellectual Property
• Be aware of public disclosure
• Call FRD with any questions 876-1900
• New Website
http://frd.musc.edu
Contact InformationW. Chip Hood, [email protected]
Ryan Fiorini, Ph.D. [email protected]
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Questions
http://frd.musc.edu