Discovery Patenting and Commercialization of CUA-Developed Technologies January

Discovery, Patenting and Commercialization of CUA-Developed Technologies January 9, 2003 The Catholic University of America Office of Technology Transfer

Agenda n n n n 10: 00 10: 05 10: 25 10: 35 11: 00 11: 25 11: 40 11: 55 Welcome and Introductions University Policies CUA Tech Transfer Policies Documenting the Invention U. S. Patent and Trademark Office Marketing of Technologies Question and Answer Session Wrap-up and Adjourn The Catholic University of America Office of Technology Transfer

Speakers n Ralph Albano – Director, Office of Technology Transfer n Kathryn Bender – Associate General Counsel n Steven Prewitt – Patent Attorney, Jagtiani + Guttag – Karlena Schwing, patent agent at J+G, CUA Mech. Eng & Law n Anita Gross – Administrative Appeals Judge, U. S. Patent and Trademark Office The Catholic University of America Office of Technology Transfer

Mission and Goals of Office of Technology Transfer n The Office of Technology Transfer (OTT) at the Catholic University of America assists the CUA faculty, staff and students with the management and commercialization of their intellectual property. Protect the university n Serve the faculty and staff n Facilitate research n Improve the human condition n The Catholic University of America Office of Technology Transfer

OTT Operational Objectives n Increase the number of invention disclosures submitted by university community, adding to the university’s intellectual property portfolio n Continue to manage the relationships with companies that have licensed university technologies n Find commercial partners and initiate license revenues for new technologies The Catholic University of America Office of Technology Transfer

Technology Transfer – Value to the University n Revenue stream from licensing n Increased research funding and collaborations n Increased visibility of university and researchers n Stimulating research and an entrepreneurial environment among faculty The Catholic University of America Office of Technology Transfer

Technology Transfer Procedures at CUA The Catholic University of America Office of Technology Transfer

Invention Disclosure and OTT Procedures n n n Inventor submits Invention Disclosure Form OTT works with OSP to ensure proper sponsor reporting OTT meets with inventors and makes initial patentability decision Inventor assigns rights to university OTT files Provisional Patent application OTT meets with inventors to begin marketing effort…. . The Catholic University of America Office of Technology Transfer

Invention Disclosure and OTT Procedures (cont. ) OTT produces “Commercialization Plan” n Approximately six months after filing the provisional patent, OTT convenes Patent Committee to report on the progress of the marketing effort, and to evaluate assignment and patenting options. n – Releases invention back to inventor, or… – Accept assignment, and file full patent application The Catholic University of America Office of Technology Transfer

Technology Evaluation Criteria n Corporate involvement (sponsored research) n Likelihood that patent claims will issue n Encumbrances (number of assignees) n Time-to-market The Catholic University of America Office of Technology Transfer

Marketing of Technologies The Catholic University of America Office of Technology Transfer

Realistic Expectations n Statistics form “leading” university tech transfer program – – – 400 technologies disclosed 120 technologies get market evaluations 40 technologies licensed, of those 20 technologies net positive royalties 1 technology brings in over $1 million in revenue The Catholic University of America Office of Technology Transfer

Marketing Starts with the Inventor n Importance of peer-reviewed publications – Publishing vs. Patenting n Inventors make the best technical sales people – Research sponsors – Contacts in the field (former students? ) – Spin-off or start-up? The Catholic University of America Office of Technology Transfer

Marketing of University Technologies n Methods to make industry aware of technology will also increase visibility with potential funders of additional research – – – – White papers Glossy brochures Targeted mailings Trade magazine articles Industry and technical conferences/trades shows Industry contacts Open House/Industry Days The Catholic University of America Office of Technology Transfer

Questions and Answers The Catholic University of America Office of Technology Transfer

Further Information Ralph Albano Director, Office of Technology Transfer x 6444 Currently in 114 Mc. Mahon, moving soon to 3 rd Floor Caldwell Our web site is http: //ott. cua. edu and we will soon have today’s charts and all necessary forms available online. We already have a a great deal of general information available. The Catholic University of America Office of Technology Transfer