Today’s Presentation:

Commercializing University Innovation in Engineering:

The Technology Transfer Process at UB

Presenter:

Welcome to the 2014-2015

Transportation Systems Programs’ Seminar Series

Institute for Sustainable Transportation and Logistics

University Transportation Center

TransINFO

Transportation Systems Programs’ Seminar Series Presented by: DEPARTMENT OF CIVIL, STRUCTURAL AND ENVIRONMENTAL ENGINEERING

Institute for Sustainable Transportation and Logistics

University Transportation Center

TransINFO

Friday, October 24th, 2-3 p.m., 140 Ketter Hall

Samer Madanat, Ph.D., Xenel Professor of Engineering, Department of Civil and Environmental Engineering, UC Berkeley - Incorporating Environmental Sustainability Objectives in the Planning, Operations and Maintenance of Transportation Systems

Monday, November 3rd, 1-2 p.m., 140 Ketter Hall

Linda Ng Boyle, Ph.D., Associate Professor, Departments of Industrial and Systems Engineering and Civil and Environmental Engineering, University of Washington

Friday, November 7th, 2-3 p.m., 140 Ketter Hall Student Seminar Presentations

Lei Lin: Exploring Novel Applications of Transportation Data Jinge Hu: Destination Choice Model of Commercial Vehicle in Urban Area

Transportation Systems Programs’ Seminar Series Presented by: DEPARTMENT OF CIVIL, STRUCTURAL AND ENVIRONMENTAL ENGINEERING

Institute for Sustainable Transportation and Logistics

University Transportation Center

TransINFO

Featured Presenter

Martin Casstevens is an accomplished scientist and has managed high-technology businesses prior to joining the University at Buffalo's (UB's) Office of Science, Technology Transfer, and Economic Outreach (STOR) where he manages a startup company initiative. Upon graduating Hamilton College, Casstevens did graduate work in UB's Department of Biophysical Sciences in nanostructured materials, laser photo dynamics, and engineered photosynthetic systems. Through a variety of technical and administrative corporate roles, he served as PI on more than $3M of R&D projects, launched several products, and co-authored more than 10 scientific papers. Casstevens currently assists UB faculty, staff & students and incubator clients in startup business formation and growth. Casstevens is Director of Directed Energy ,a NYSERDA funded incubator program serving WNY entrepreneurs and small businesses working in the renewable energy space the program serves > 20 clients in various technological areas, at different stages of growth, and receiving a range of services.

Martin Casstevens Business Formation and Commercialization Manager UB’s office of Science, Technology Transfer, and Economic Outreach

Transportation Systems Programs’ Seminar Series Presented by: DEPARTMENT OF CIVIL, STRUCTURAL AND ENVIRONMENTAL ENGINEERING

Institute for Sustainable Transportation and Logistics

University Transportation Center

TransINFO

Commercializing University Innovation in Engineering

The Technology Transfer Process at UB

Martin Casstevens Business Formation and Commercialization Manager

UB-STOR & Directed Energy

17 October 2014

Bold changes in transportation

What we will address

My hypothesis….

Most UB researchers will be better funded, accomplish more professional goals, and make stronger contributions to society if they smartly engage their industry peers.

1) Commercialization starts with you being well funded 2) Funding your Research (in an environment where impact counts) traditional and nontraditional sources 2) Industry (colleagues, advice, funding) 3) Commercialization of Your work – “handoffs”

http://www.coburn.senate.gov/public/index.cfm?a=Files.Serve&File_id=2dccf06d-65fe-4087-b58d-b43ff68987fa#page=1

Tom A. Coburn

“Dr. No”

The report’s opening letter…

…when Congress commits the nation to significant increases in spending, Congress owes it to the U.S. taxpayers to pay careful attention

to how those dollars are being spent.

Again, from the opening letter…

Taxpayers may also question the value of many of the projects NSF actually chose to fund, such as:

How to ride a bike; When did dogs became man’s best friend; If political views are genetically predetermined; How to improve the quality of wine; Do boys like to play with trucks and girls like to play with dolls; How rumors get started; If parents choose trendy baby names; How much housework does a husband create for a wife; and When is the best time to buy a ticket to a sold out sporting event.

Again, from the report…

Transformative research funded by the NSF

Internet

Cloud computing

Bar Codes

Magnetic Resonance Imaging

Buckeyballs

Vision Care

Bottom line…

• Funding agencies are under congressional pressure to “deliver results.”

• A strong technical proposal may benefit from

you helping your program manager.

How will your proposal

be discussed?

Research: which road to pick?

• Best funded?

• Most rewarding?

• Most strategic?

• Best match?

• Largest impact?

Strengthening your proposals (I)

A. “Pepper” your work with references to:

market sizes

market segments

industry trends

industry leaders

Breakthrough technical advances

relevant regulation (as appropriate)

Problems traditionally plaguing the industry

Strengthening your proposals (II)

B. Letters of Support

Interest, validation, donated materials/services

C. Industrial Advisory board ($$?)

D. IP Developed? Disclosed? Protected? Licensed?

Sample Letters of Support

are/will be available

Where do you get this information?

Michael Lavin

Business/Management

Librarian

SBIR and STTR programs

• $2.2B annually w/ 11 agencies

• 2 Phases ($150K, $1M)

• Likelihood about getting funded? (1/8 & 4/10)

• US companies must apply

• University subcontractors (up to 1/3 to 50% total award

• You can be proactive

SBIR and STTR programs

• $2.2B annually w/ 11 agencies

• 2 Phases ($150K, $1M)

• Likelihood about getting funded? 1/8 & 4/10

• US companies must apply

• University subcontractors (up to 1/3 to 50% total award

SBIR and STTR programs

What makes a good proposal?

Well written

Complementary team

Sincere intent to commercialize

Seeking help early on

Talking to POCs

Tenure considerations?

SBIR and STTR programs

• Where do I find a company?

• What gets funded?

www.sbir.gov

• Is it “business as usual?”

Examples of & lessons from corporate innovation

Perspectives on Open Innovation

Cuts to R&D Mindful of Time to market

Lets imagine You just “discovered” Teflon

• In 1938, Roy Plunkett was “playing with” refrigerants and found a vessel had polymerized into Teflon

Richard Drew (3M, 1925 invented masking tape as a solution to painting two tone cars)

Spencer Silver (3M, 1968 invented “Post Its” – making use of a “poor” glue)

Can you recognize pain?

Innovation at 3M “Happy accident” vs. problem

solving

Actively look for problems

and

develop innovative solutions

Current or 5 year prior support A good technology

3 member team 6 weeks (kickoff and closing weekends)

$50 K No science (well almost)

“Lean Startup” 100+ customer interviews

What is IP?

Patents first to file

Trademarks can be quite valuable

Copyrights registered?

trade secrets valuable when actually kept secret

History, a pact, post 1980, today?

What is patentable? What can be patented – utility patents are provided

for a new, nonobvious and useful:

Process Machine

Article of manufacture Composition of matter

Improvement of any of the above

There is constant reinterpretation!

“Good” patenting practices

• Big growing markets

• Several suitors

• Strong claims

• Sustained funding

• existing partners

• enforceable

Patents (continued)

Clearly Not

Patentable interpretations/conditions Patentable

• New chemicals genetic discoveries already described

• New ways to manufacture combinations of preexisting ideas public domain

• On 30 March 1858, Hymen Lipman received the first patent for attaching an eraser to the end of a pencil.[20]

• In 1862 Lipman sold his patent to Joseph Reckendorfer for $100,000, who went on to sue pencil manufacturer Faber-Castell for infringement.[21]

• In 1875, the Supreme Court of the US ruled against Reckendorfer declaring the patent invalid.[22]

• Wikipedia entry on “pencil”

• A combination, to be patentable, must produce a different force, effect, or result in the combined forces or processes from that given by their separate parts. There must be a new result produced by their union; otherwise it is only an aggregation of separate elements.

• http://supreme.justia.com/cases/federal/us/92/347/case.html

Some ideas are ahead of their time The Bandsaw

• William Newberry received a British patent for the idea in 1809

• Anne Paulin Crepin devised a technique for welding a bandsaw blade 40 years later

Some UB specific information

• Nearly 100 disclosures/year

• ~40% life sciences, ~40% engineering, chemistry

• 1 in 4 disclosures receives a patent

• ~20 licenses annually (royalties and equity)

Our goal: commercialize UB inventions

and improve everyone’s quality of life

Commercialization Roadmap • Opportunity recognition

• Disclosure

• Meeting/Discussion/STOR led Research

• Provisional filing

• Startup vs. direct license

• Dual paths: IP and licensing/startup

National conversion & Foreign Filing

Licensing in different fields of use & geography

• 40% to inventors

Faculty specific advice

• Consult with STOR if unsure whether to disclose • Disclose to STOR as soon as possible before any public

disclosure - public disclosures jeopardize patentability • STOR will look for ways to broaden patent claims –

may ask for additional support data • We try very hard not to impede your scholarship • NDAs, MTAs protect you & must be reviewed – only

authorized persons may sign • Please do not take it too personally – we can not (& should not) patent everything

Recommended

uspto.gov or google patents (Do a key word search)

Edgar online (obtain a 10-K report on a company)

sbir.gov (key search for awards)

Speak to industry attendees at your next conference

learn to better recognize opportunity

Disclose any inventions – STOR is here to help!

View of Downtown Toronto from Ward’s Island

Thank You

mkc@buffalo.edu

Your first point of contact:

Rupal Desai

rdesai@buffalo.edu

The Henry A. Panasci Jr. Technology Entrepreneurship Competition

Fall 2014 to Spring 2015

Contact Info

• UB Center for Entrepreneurial Leadership

– 77 Goodell Street, Ste. 201, Buffalo, NY

– Tel: 716-885-5715

• Alex Cleary, Sr. Program Coordinator

– eacleary@buffalo.edu

• Rachel Stern, Student Assistant

– rachelst@buffalo.edu

Background

• Created by the UB School of Management and the UB Office of Science, Technology Transfer and Economic Outreach

• Funded with a $1 million endowment

• Designed to bring UB students from varying disciplines together to create viable businesses in WNY

Who Should Apply

• Undergraduate and graduate students with innovative ideas

– Full or part-time matriculating

• It is anticipated that the concepts will be at the earliest stages of development, yet embrace sound technologies and innovations

What’s Required

• To compete

– An application with a TEC20 form

– A 10-minute pitch on your idea (or 2)

• Semifinalists

– Written and video submission

• Finalists

– Live pitch

The Prize

• 1st Place – $25,000 seed funding plus in-kind services valued

at more than $27,000

• 2nd Place – $10,000 seed funding

• Other Benefits – Making connections in the business community

– Potential to be coached by an entrepreneur

– Great experience for future professional career

Application Process

• Attend an Info Session

– Sept. 16

– Oct. 10

• Training sessions and office hours to develop idea

• Application, schedule, resources and rules/guidelines available online

– Mgt.buffalo.edu/Panasci

E-lab

• A 3 credit course during the winter intercession

• Will help prepare you for Panasci and give you hands on learning experience for how to commercialize a business

• Fellowships awarded

• Partial scholarship available

AT&T WNY App Challenge

• Virtual hackathon for WNY’s most talented computer scientists, software developers and hardware engineers

• Apps to benefit local community

• Submissions due online by: – Mon., Nov. 10 at 11:59 p.m.

• 1st Place - $10,000

• 2nd Place - $5,000

• 3rd Place - $3,000

Why Start Your Own Business*

1. You Control Your Own Destiny

2. You Can Find Your Own Work/Life Balance

3. You Choose the People You Work With

4. You Take on the Risk – And Reap the Rewards

5. You Can Challenge Yourself

* http://www.inc.com/guides/201101/top-10-reasons-to-run-your-own-business.html

Why Start Your Own Business (continued)

6. You Can Follow Your Passion

7. You Can Get Things Done – Faster

8. You Can Connect With Your Clients

9. You Can Give Back to Your Community

10. You Feel Pride in Building Something of Your Own

“But what if I fail?”