Technology Transfer

Karen RufusSr. Licensing Officer

Center for Technology Transfer

Unofficial Mission StatementIncrease Vanderbilt’s innovative capacity, commercialize its technology to benefit the public and generate economic return while operating at the highest standards of integrity.

BusinessCommercialize Vanderbilt technology through licensing and new venture creation, growing the innovation base.

CustomerPrimary: Vanderbilt InnovatorsSupporting: Administration, Investors, Entrepreneurs, Collaborators, Strategic Partners

Role of Center for Technology Transfer

Serve the Vanderbilt community by assisting inventors in bringing their innovations to practical application for the benefit of the public Our relationship with inventors is a PARTNERSHIP We patent ideas so that we have a transferrable asset, but

patenting is only a means to an end We negotiate licensing agreements with industry

counterparts for access to our technology We assist in building deeper relationships with industry, via

sponsored research, collaborations, investments, etc.

Other Services….Execute other Agreements:

• Material Transfer Agreements• Confidentiality Agreements• Inter-institutional Agreements• Review IP language in Sponsored

Research and Clinical Trial Agreements• Distribute royalty payments

CTTC Core Commercialization Process

• Evaluate technologies foroPatentabilityoMarket potentialoClinical Merit / need in marketplaceoExpertise in development

• Determine most effective commercialization routeoLicense outoCreate new venture

• Negotiate development agreementsoLicensesoVenture fundingoR&D agreements

How Do We Commercialize?Vanderbilt Commercialization Process

How Do Inventors Benefit?

Creates research opportunities via collaborations

Generates research revenue

Inventors share in revenues as personal income50% of revenues are shared among the inventors

Creates additional notoriety for research

Brings healthcare products to the marketplace for the benefit of patients

How Do Universities Benefit?

Creates opportunities for investment via collaborations

Additional sources for research revenues

Creates brand recognition

Increases Faculty recruitment

How do Taxpayers Benefit?

Vitamin D milk

Insulin

Streptomycin

Magnetic memory

Gatorade

LCDs

Coumadin

Polio vaccine

Cysplatin

Restasis

MRI scanner

TaxolEmtriva

PET/CT scanner

Rocket fuel

Plexiglas

Penicillin

Pap smear

Pacemakers

Fluoride toothpaste

Allegra• Hepatitis B vaccine

Saccharin

Electron microscope

Neupogen

Why should I disclose?

Federal Government requires reporting of Federally funded inventions

Vanderbilt requires disclosure as a condition of employment

Discoveries that can help people and make a difference will rot on the vine without disclosure, protection and commercialization

VU employees have a financial incentive – 50% of revenues from licensing inventions flow back to inventors

The Inventor’s Role……

Commercialization

Pre-disclosure• Keep good lab notes, and have them witnessed

periodicallyWill prove handy in the event of a patent interferenceProceeding

• Make sure that the contracts are in placeInter-institutional collaborations require a “Joint Development Agreement” to protect against loss of patentabilityContract researchers / programmers may require an obligation to assign in subcontract agreements

• Understand “invention” and engage CTT if you think you have a novel idea

Disclosure• Provide a detailed description of the invention

Remember “enablement” and “best mode”Proper patent searches and proper market analyses cannot be done without a full description

• Identify any companies that you have a relationship with or you know that are in the relevant industry70% of licensing leads come from inventors

• Identify the source of research funding used to conceive or develop the inventionWe need to fulfill all reporting / IP obligations to sponsor

• Specify plans for ongoing development efforts

Evaluation

• Discuss potential utilization of products (market size)• Help distinguish present invention from current products

– focus on novel features and advantages• Review prior art references identified and help

differentiate your invention from the prior art• Perform independent patent searches (www.uspto.gov)

and get a good feel for what products have been invented – DIFFERENT FROM WHAT IS BEING COMMERCIALIZED!

• Work with CTTC to describe the potential products that could result from the invention, as well as the relevant markets for such products

Marketing

• Help with reviewing and editing marketing documents

• Help with identifying and approaching potential industry partners

• Participate in in-depth discussions with parties showing interest

• Continue to refine and develop the technology, make use of product development funds when appropriate

• Help evaluate the fit and capabilities of potential licensees – not all willing partners are good partners

• Continue to publish, publish, publish

Patenting

• Review applications in a thorough and timely manner• Disclose ALL references that you believe in your own

judgment to be relevant to patentability (DUTY OF DISCLOSURE)

• Disclosure all embodiments of the invention• Assist in brainstorming ways to broaden patent

claims• Help with arguments to traverse rejections issued by

the US Patent Office• Engage counsel or a commercialization officer before

publishing patentable subject matter

Are there any resources available to help develop new ideas?

CTTC is starting a Prototyping Fund Applications are for prototyping of existing

technology, or proof of principal experimentation

Applications would be made through CTTC Cannot be used for capital purchases Would be used outside CTTC

What you should know about tech transfer as scientists….

Patents are a means to commercialization, not just another means for publications and lines on CVs

Just because there is a perceived medical need for an invention, doesn’t mean there is a market

Just because you can patent something doesn’t mean you should

You can’t patent something that’s been talked about publicly

Authorship ≠ Inventorship We are a service organization, so whenever you think you

have an invention, or have questions, our doors are open

Questions?

Email: karen.rufus@vanderbilt.eduPhone: 615-322-4295

CTTC: cttc@vanderbilt.eduPhone: 343-2430

Web: www.vanderbilt.edu/cttc