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