INTELLECTUAL PROPERTY AND ITS ROLE IN ATTRACTING FUNDING

IP CONSIDERATIONS AND VALUE PROPOSITION

PRESENTED BY

BANDHANA KATOCH

Marketing & Business Development AnalystOffice Of Intellectual Property Administration, UM System

2015 RESEARCH & INNOVATION WEEK AT UMSL

ROADMAP What is Intellectual Property (IP)?

IP Evaluation Flowchart

Role of IP in developing Exit Strategy

Patent prosecution timeline and Copyright Registration

Role of IP in Research Funding

Alternate sources of funding

Resources

2015 research & innovation week at UMSL

UNIVERSITY INTELLECTUAL PROPERTY

2015 research & innovation week at UMSL

“Intellectual property has been transformed from a sleepy area of law and

business to one of the driving engines of a high - technology economy.”

New York Times, April 5, 1999

2015 research & innovation week at UMSL

INTELLECTUAL PROPERTYProducts of creativity : Inventions, Software, Discoveries or Creative or artistic works

e.g. – Machines, Devices, Instruments, Computer Programs, Circuits, Biological Materials, Chemicals, Books, Videos, Photographs, Paintings, Sculptures, or Songs

Intellectual Property can be protected through:

- Patents

- Copyright

- Trademark

- Trade Secrets

2015 research & innovation week at UMSL

INVENTION DISCLOSURE EVALUATION

Invention Disclosure

Invention Disclosure

Receipt

Intellectual

Property Protection

Business Planning

Licensing

InventorDepartment$$$$$

Royalty Collection

Further Research

Waiver offer to

InventorsUniversity

Startup

Inventor(s)

$$$$$

UM System$$$$$

Existing Company

Campus$$$$$University

Start-up

Technology

Assessment

2015 research & innovation week at UMSL

PATENT PROSECUTION TIMELINE

2015 research & innovation week at UMSL

COPYRIGHTS 101

2015 research & innovation week at UMSL

Products of creativity : literary, artistic and music works. e.g. – Gone with the Wind, Video Games, software, etc.

Why is it important? Registration is required to bring lawsuit against infringers

Process for Copyright Registration:

Step 1: Visit Library of Congress

Step 2: Three documents needed: 1) completed copyright application; 2) filing fee (nonrefundable); and 3) deposit (nonreturnable), which means a copy or copies of your material to be copyrighted.

Step 3: Registration methods:- Online Registration- Fill-in form CO- Paper forms

- Time for Copyright Registration – up to 3 months

- Cost Involved – approx. $200

WHY PROTECT INTELLECTUAL PROPERTY? Boosts research and innovation in various fields

Spurs Innovative start-ups

License technology to startups

Increases Strategic Alliances especially with industries

Supports public good – Better World Project

Brings goodwill to the name of the institution2015 research & innovation week at UMSL

ROLE OF IP CONSIDERATION IN EXIT STRATEGY

Three criteria to determine value proposition of IP portfolios:

Ascertaining validity and enforcement potential of the IP portfolio

Determination of technical strength and business utility

Markets covered by IP portfolio

For patents, right to use, patentability, blocking patents, infringement and validity.

For copyright, examination the use of copyright notice

For trademarks, examine opinions of trademarks including registration and infringement

2015 research & innovation week at UMSL

GOOD PRACTICES FOR DOCUMENTATION OF IP

A good practice is to use bound notebooks for records. Entries should be made on a daily basis.

Use the notebook to record a conception, laboratory data, drawings, or other observations on successive pages.

Entries in the notebook should be made in ink.

Any material that cannot be incorporated into the notebook should be glued in and referred.

All entries in the notebook should be signed, dated, and witnessed (by at least two people).

In the event that notes are kept on a computer, be sure to make the appropriate entries into the computer system at the end of each day.

Identify a safe method for storing and monitoring the records. 2015 research & innovation week at UMSL

IP CONSIDERATIONS FOR FUNDING RESEARCH

Does the company have intellectual property and, if so, how strong is it?

What is the intellectual property landscape position? Having numerous strong IP building blocks is one thing, but how those IP building blocks are relatively positioned in the broader intellectual property landscape is another factor.

Are the intellectual property rights being managed well? In other words, does the company appear to have a consistent well executed strategy for the intellectual property?

2015 research & innovation week at UMSL

INTERESTING CORRELATION – FUNDING v. IPAcross all sectors a significantly higher percentage of venture capital

backed companies that have been acquired or have gone public have patent portfolios as opposed to companies that are out of business.

Successful companies are more likely to hold intellectual property than companies who went out of business. Although the presence of intellectual property portfolios is not perfectly correlated to success or failure, this indication strongly support investor focus on the role of intellectual property in their decisions and actions.

While having intellectual property increases the probability of success, those who manage intellectual property well have an even higher probability of success.

iAM Issue # 40 (2011)

2015 research & innovation week at UMSL

FUNDAMENTALS OF FUNDING

Determine the amount of funding

Determine the best source of funding

Put together a business plan/ impact statement

Get information about various plans

2015 research & innovation week at UMSL

TRADITIONAL FUNDING SOURCES

DOD/DOE

USDA

NSFNIH

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SOURCES OF CONTRIBUTIONS

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Creative Commons Attribution 3.0 Unported License

RECIPIENT ORGANIZATIONS

2015 research & innovation week at UMSL

Creative Commons Attribution 3.0 Unported License

FUNDING PROGRAMS – UM SYSTEM The Research Board provides initial research funding for faculty to do applied

research in their specific area of work to leverage funds and enhance long-term quality and quantity of scholarship. 

The FastTrack program provides proof-of-concept or gap-funding for faculty members focused on development, testing, prototype construction, or market analysis of innovating technologies emerging from a UM campus. 

The Interdisciplinary Intercampus program was initiated to increase interdisciplinary, intercampus research collaborations to leverage the intellectual capital and resources at the four University of Missouri campuses. 

The Spinal Cord Injury Program provides research support for investigators at public or private educational, healthcare, or research institutions in Missouri to perform exploratory studies regarding spinal cord injury, as well as acquired or congenital disease processes that affect the spinal cord. 

2015 research & innovation week at UMSL

2015 research & innovation week at UMSL

FUNDING PROGRAMS - MISSOURIMissouri Technology Corporation

Missouri Foundation for Health Special Projects Grants - Grants to support community-based health improvement projects in Missouri.

Wal-Mart State Giving Program (Region 2) - Provides grants in the area of hunger and nutrition; career opportunity; education; health care access; and human services.

Anthem Foundation Grants - Supports health and wellness programs including prevention and education programs in the areas of healthy hearts, diabetes, cancer, maternal health, and active lifestyles.

Gannett Foundation Community Action Grants - Supports local organizations with funding priority given to programs that focus on education and neighborhood improvement, economic development, youth development, community problem-solving, assistance to disadvantaged people, environmental conservation, and cultural enrichment.

Sunderland Foundation Grants - Supports capital improvement projects in the areas of higher education, churches, youth serving agencies, health facilities, community buildings, museums, civic projects, and housing projects.

FOUNDATIONS/PRIVATE FUNDINGHow many independent foundations are there in US alone?

93,225

How many of such independent foundations are in Missouri?

1,560

Kinds of Foundation

- Corporate Foundations - Enterprise Holdings Foundation, Emerson Charitable Trust, Monsanto Fund

- Community Foundations - Greater Kansas City Community Foundation, Ewing Marion Kauffman Foundation, Hall Family Foundation

- Private Foundations - Burroughs Wellcome Fund, Pew Trusts, McDonnell Foundation, Foundation Center

2015 research & innovation week at UMSL

2015 research & innovation week at UMSL

CROWDFUNDINGCrowdfunding describes the collective effort of individuals who network and pool their money, usually via the Internet, to support efforts initiated by other people or organizations. Crowdfunding is used in support of a wide variety of activities, including startup company funding, invention development, scientific research, and support of artists by fans, etc.

Donation- based - A donation model where a project with a specific fund raising target is promoted on a website. There is usually a finite time period when donors may contribute. They are charged only if the fundraising target is met by this deadline. e.g. - KickStarter (creative and design projects) and Petridish (scientific research).

Pre-sale product - Funders buy a product that generally needs to be created. Funding is provided for design/manufacture and the funders expect delivery of a product.

Equity-based - Funders are usually financially motivated. Equity is given to funders and they expect a return on their investment. This model is currently approved only for accredited investors.

Microloans - A donor can loan a small amount of money to a microbusiness owner. These loans started in third-world countries where access to even tiny amounts of credit is limited for entrepreneurs. e.g. – Kiva.org

CROWDFUNDING FOR UNIVERSITY RESEARCH

Considerations for using crowdfunding for technology commercialization:

Clear commercialization objectives Protection of institutional brand image Clarification of Intellectual Property Standardization of fund flows: There are two possible mechanisms:

Research funding model – In this model, fund are directly transferred to a research account in the university department responsible for research funding administration.

Gift funding model-In this model, the funds are forwarded to the development office.

Integration with accounting and over-head allocation processes Tax deductibility Support of downstream commercialization objectives

University of Utah and Michigan Technology University have successfully used crowdfunding for funding research

2015 research & innovation week at UMSL

RESOURCES

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A. Technology Transfer Office – Tamara Wilgers, Craig Weilbaecher

B. Business Incubators

BEGIN New Venture Center - St. Louis T-REx Incubator - St. Louis Economic Development Center - St. Charles Midtown Enterprise Center - St. Louis South County Enterprise Center - St. Louis Wellston Enterprise Center - St. Louis West County Enterprise Center - St. Louis

C. Online Resources Accelerate St. Louis Innovate St. Louis St. Louis Regional Chamber

2015 research & innovation week at UMSL