Seminar Introduction to Technology Transfer Presented by David

Seminar: “Introduction to Technology Transfer” Presented by: David Yee, Esq. Patent Agent & Licensing Assistant Office of Technology Transfer February 7, 2008

Office of Technology Transfer (OTT) Staff Jennifer Murphy Director Gloria Garcia Admin. Asst. David Grossman Asst. Director David Yee Patent Agent & Licensing Asst. Joseph Janda Life Sciences Licensing Assoc. Carolyn Klenner Intellectual Property Paralegal

Office of Technology Transfer (OTT) Staff In-house Technical Expertise • Life Sciences • Computer Science • Electrical Engineering • Chemistry

GMU OTT Goals • Contribute to the image of a research university through visibility of results • Fulfill expectations of faculty, students, and political, business and community leaders • Facilitate application of university research to economic and social development • Facilitate strong corporate relations • Satisfy obligations under Bayh-Dole Act of 1980 - grants universities title to inventions conceived and developed with federal research funding • U. S. manufacturer for the U. S. market • Government march-in-rights • Governmental non-exclusive, royalty fee license • Create revenue for the university

GMU OTT Roles • • Develop and Administer Policies Create an Environment to Foster Disclosure Identify and Assess Intellectual Property (IP) Protect IP Market IP License IP Maintain License Relationships Report and Disseminate Success Information

GMU OTT Constraints • Expectation that Technology Transfer Offices will fuel economic development • Public institutions as stewards of taxpayer dollars • State wants to see dollars stay in-state • Issues Imposed by VA Attorney General’s Office • Issues Imposed by VA Appropriation Committee

Solution to GMU OTT Constraints • Pays for patent costs • Conducts licensing • Appears to be a complicated process but it allows for flexibility

Tech Transfer Fundamentals So, what is Tech Transfer? • A vehicle for delivering research and innovations to the public that incorporates 2 major areas: I. IP Protection II. Commercialize ($$$)

I. IP Protection Protectable Subject Matter • Patents • Copyrights • Trademarks

Brief Summary of Protectable Subject Matter Patent (***Utility***) Copyright Trademark What is protected? Device, Composition, or Process Expression, not ideas Source-indicating word, symbol Criteria for protection? Utility, Novelty, Nonobviousness, and Enablement Originality Distinctiveness To obtain protection… File patent appl’n with USPTO Fixate expression on a tangible medium; file application with Copyright Office Use in commerce; file trademark appl’n with USPTO Protects Against… Manufacture, use, sale, offer to sale, or import of claimed subject matter Unlawful copying Confusing and/or disparaging use Duration of Protection 20 years from filing patent application subject to renewal (Generally) Life of author + 70 years, not subject to renewal Continuous with use and subject to renewal

Patents The U. S. Constitution grants U. S. patent rights. “Congress shall have the power … to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective inventions and discoveries. ” U. S. Const. , Art. I, § 8

Public Policies Underlying Patent Law Benefit the public by providing the prompt disclosure of new inventions to the public (in exchange for) Provide inventors and businesses with an incentive to innovate, by creating a legal right to exclude others from making, using or selling an invention for a limited time.

Patents Types • Utility • Design • Plant

Limitations of Patents • Geographically • U. S. patents are limited to the U. S. and its territories • U. S. patents cannot be enforced outside the U. S. • Term • Utility – 20 years as of the filing date • Design – 14 years from the date the patent issues • Plant – 20 years from the filing date

What is patentable? • Any new and useful process, machine, manufacture or composition of matter • Any new and useful improvement thereof

What is not patentable? • A mere idea (e. g. law of nature or principle) without application. • Pure mathematical algorithms (e. g. , E = mc 2). • An inoperable device (e. g. , perpetual motion machine). • An obvious improvement of an old device.

Some “interesting” patents U. S. Pat. No. 4, 809, 435 – “Eating Utensil” Date of Patent: Mar. 7, 1989 Inventor: Gerald L. Printz

Some “interesting” patents U. S. Pat. No. 5, 934, 226 – “Bird Diaper” Date of patent: Aug. 10, 1999 Inventors: Lorraine Moore, Mark Moore, Cely Giron

Ex. Shortest Chemistry Patent Claim U. S. Pat. No. 3, 156, 523 – “Element 95 and Method of Producing Said Element” Date of patent: Nov. 10, 1964 Inventor: Glenn T. Seaborg What is claimed is: 1. Element 95.

What are the requirements for a patent? The invention must be: 1. Useful (35 U. S. C. § 101); 2. New (35 U. S. C. § 102); 3. Nonobvious (35 U. S. C. § 103); and 4. Enabling (35 U. S. C. § 112)

Useful (Utility) The invention must contribute to society, a foundational requirement of the patent system. To accomplish this requirement, it must have a practical application.

New (Novelty - Not previously known) The invention must NOT have been : • known or used by others; • described in a printed publication; • used in public; or • on sale Note: In the U. S. , the inventor must NOT have disclosed his/her own work for >1 year before the filing of the patent application.

Nonobvious A patent may not be obtained … • if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains.

Example of Nonobvious The Invention A transgenic mouse (rodent/mammal) comprising Gene X fused to Promoter A, wherein X is overexpressed and the mouse (rodent/mammal) has a useful phenotype. Reference 1 Discloses that when Gene X is fused to Promoter A, X is overexpressed in cells in tissue culture. Reference 2 Discloses a transgenic mouse comprising Gene S under the control of Promoter A. The mouse has NO useful phenotype. Arguments?

Enabling • Enablement – must teach others how to make and use the invention (consider it as a blueprint) • Written Description – must describe the invention • Best Mode – must disclose the best way of making the invention

Foreign Patents Patent Cooperation Treaty (PCT) • provides central filing and searching of application but examination is carried out by each country • many countries have an “absolute novelty” requirement – Public disclosure anywhere in the world (e. g. , public use, commercial sale, etc. ) prior to the filing of the patent application = no patent Every country has a different patent system, but may share priority date under Paris Convention

Foreign Patents Advantages • Protect local market • Block competitor Disadvantages • Must have agent in each country to prosecute • Can be costly and/or difficult to monitor

Inventorship v. Authorship • Inventorship – – – • Defined as who conceived the idea Not defined as who conducts experimentation or gathers data under the direction of another Applies mostly towards patents Authorship – – writing or information embedded on a tangible medium (includes ideas, experimentation, data, results, photos, etc. ) Applies mostly towards copyrights

Technology Developed with Sponsored Funds Federal Funds – Bayh Dole Act of 1980 • Must be reported • Absolute obligation to disclose • Obligation to patent & commercialize Industry Funds • Contract clauses likely to govern treatment of patents • Disclosure Requirements • Publication Review • Joint Invention?

GMU Patent Policy For GMU patent policy, please see: http: //www. gmu. edu/research/OSP/Policy. And. Procedure/Patent. Policy. html

II. Commercialization A. Technology Assessment B. Marketing C. Licensing

A. Technology Assessment Technology’s Developmental Stage • More of a concept or more towards reality? • Sufficient data? • Prototyped? Anticipated technological acceptance in the marketplace? • Faster or “better” is not always readily embraced with open arms

B. Marketing Examples of OTT’s Efforts • • • Identify potential applications for the technology Research the industry (e. g. , major and minor players) Presentations to potential licensees and entrepreneurs Conferences/expos Network Post technology on websites

C. Licensing Mechanisms for Technology Transfer • Non-Exclusive License • Exclusive License Note: Generally OTT does NOT transfer title b/c: 1. We need to ensure that technology is used, not shelved 2. We need to maximize fields of use and markets served 3. For start-ups, we want to keep control in the event of bankruptcy

C. Licensing Goals for License Deal • Fields of use - apply technology in as many market sectors as possible • Diligence requirements in product development and sales goals • Create revenue • Create jobs • Make certain the technology is used • Generate support for new research • Educate the public with advanced technology

C. Licensing Forms of revenue • License Fees (Upfront or Recurring) • Due Diligence Fees • Equity • Milestone Payments • Royalties (after reimbursable expenses) Current Royalty Income Allocation (as of 8/23/89)* Inventors 50% GMU 50% * http: //www. gmu. edu/facstaff/handbook/a. F. html

Examples of GMU Startups Mineral Sciences LLC “Synthetic Nanoparticle Soil Materials”

Examples of GMU Startups Global Water Systems “An Iron Composition Based Water Filtration System for the Removal of Chemical Species Containing Arsenic and Other Metal Cations and Anions”

OTT Open House on Fridays, 9 AM - 12 PM • Obtain and e-mail a completed Preliminary Disclosure Form to David Yee or any other OTT staff member • http: //www. gmu. edu/research/techtransfer/forms. html • Set up appointment with Gloria Garcia • Phone: (703) 993 -8933 • E-mail: ggarcia 3@gmu. edu • Come in

OTT Location and Directions

Questions? David Yee, Esq. Office of Technology Transfer George Mason University 4400 University Dr. , MSN 5 G 5 Patriot Square, Suite #2406 Fairfax, VA 22030 Phone: (703) 993 -3949 Fax: (703) 993 -9710 E-mail: dyee@gmu. edu