Management of Intellectual Property at Iowa State University

Contributing to Economic Development

Kenneth Kirkland, Ph.D.

Executive Director, Iowa State University Research Foundation, Inc.

Director, Office of Intellectual Property and Technology Transfer

kenk@iastate.edu

www.techtransfer.iastate.edu

Iowa State University

Who we are & what we do

Iowa State University

Vice Provost for Research

Iowa State University Research Foundation, Inc..

Board of Directors

ISU’s OIPTT (1990)technology review,

marketing,licensing, services

ISURF non-profit (1938)protects, owns,

and manages assets

Iowa State University

Iowa State UniversityOffice of Intellectual Property and Technology TransferandIowa State University Research Foundation, Inc.

Executive Director

Associate Director

Technology Licensing Contract & Info. Receptionist Accountant IP PortfolioManager Specialist Manager

Germplasm Licensing 3 Licensing Associates Marketing Secretary Patent Administration Disclosure & Database Trademark LicensingAssociate Assistant Manager Associate

Hourly Receptionist Student Assistant Student Assistant Hourly Assistant Disclosure Secretary Trademark Secretary

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Laws and guiding principles

Federal laws, regulations and guidelines Federal research funding requires significant reporting,

use for public good, preference for licensing to small businesses when appropriate, and sharing income with inventors

Federal guidelines on research tools state that the technology must be accessible

Tax laws: ISU and ISURF must remain non-profit Antitrust, export control, contract, and intellectual

property laws also apply

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Laws and guiding principles

ISU’s Mission Statement:ISU fosters the discovery and dissemination of new knowledge…to address problems and issues of concern to the State of Iowa in particular, as well as to the national and global community… conducted in an environment of open scientific inquiry and academic freedom.

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Laws and guiding principles

Applying ISU’s mission to technology transfer Facilitate the commercialization of research for the

public good Promote economic growth Protect the right and freedom to future research,

publication, and public utilization Protect students’ right to graduate

Policies: patent, germplasm, educational materials, conflict of interest & royalty sharing

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Conflicting Values - Common Interest

University Values Knowledge for knowledge’s sake Academic freedom/open discourse Teaching, research, service, economic, development

Industry Values Management of knowledge for profit Confidentiality/limited public disclosure Profits, product R&D

Common Interest Commercialization of new and useful technologies

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What is intellectual property?

Creations of the mind protected by a field of law conveying property rightsThe laws include Patent Copyright Trademark Trade Secret Right of publicity

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What is protected?

Patents protect novel & useful inventive matter (utility patent)

Copyrights protect expression of authorship

Trademarks-Service Marks protect identifying symbols, words, or designs of goods or services

Trade Secrets protect confidential business information, including proprietary materials

Rights of Publicity protect and individual’s right to benefit from identity

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What is a patent?

A grant by the U.S. federal government to new and useful machines, processes/methods, articles of manufacture, compositions of matter, or improvements thereof to exclude others from Making Using Selling (or offering to sell) Importing

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Requirements of a patent

Three key elements Novel (a new idea) Non-obvious to someone skilled in the art Useful (but not necessarily commercially useful)

Enablement: it must teach one skilled in the art how to reproduce itFormal review process and grant by the U.S. Patent and Trademark Office (PTO)Each country must formally grant patents

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The patent process

Preparation of patent application Patent attorney and inventor(s) prepare

PTO reviews and corresponds to applicant - we answer

PTO sends a notice of allowance or final rejection

Average time to issue is 36 months; average cost for U.S. patent is $13,000

Term of patent is now up to 20 years from filing

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From creation to license

Disclosure - formal written description of the creationReview and evaluationPatenting decisionMarketing strategyLicensing strategyThe licenseMaintaining the relationship

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Review and Evaluation

Rights to invention Funding and other agreements Collaboration internal & external Proprietary material, techniques, information

used Public disclosures

PatentabilityCommercial potential

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Patenting decision

Has it been publicly disclosed?

What other protection is available? Tangible research property Copyright Trademark

Would infringement be difficult to detect?

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Marketing strategy

When do we start? Waiting for publication Waiting for data

What is being made, used or sold?

What is the state of the art?

What other patents are needed to commercialize?

Who would use, make, and sell and why?

What are the industry’s biases to in-licensing?

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Marketing steps

Create marketing content

Create list of potential licensees

Contact potential licensees

Follow-up

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Licensing strategy

What kind of company do we license (start-up, small or large company)?

What expertise would the licensee need?

Exclusive vs. non-exclusive

Field of use

Geographic areas

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Parameters of a license

Royalties License issue royalty Annual minimum royalty Earned royalty Equity

Development milestonesReimbursement of patent costsDiligence provisions

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How to access our technologies

Licensing associates: 515-294-4740 Todd Headley, Life Sciences - Biotechnology Cheryl Kamman, Material Sciences - Chemistry Eddie Boylston, Physical Sciences - Engineering Julie Gustafson, Germplasm

Web search at:

www.techtransfer.iastate.edu

Iowa State University

How ISURF and OIPTT Contribute to Economic Development

Direct Contributions 481 technologies licensed in last 10 years Sales of products from these licenses $363M, of which $88M

in Iowa 44 start-up companies formed since 1995, of which 32 based

in Iowa 24 of these companies still active; 15 in Iowa 800 license agreements for plant germplasm Iowa growers planted 167, 000 bushels of specialty soybeans

under license in last 10 years Venture Fund of $200K per year for technology

enhancement

Iowa State University

How ISURF and OIPTT Contribute to Economic Development

Indirect Contributions $3.7M of licensing income returned to ISU in

last 10 years $3M donated to the Office of the Vice Provost

for Research since 1995