Vanderbilt UniversityVanderbilt UniversityOffice of Technology TransferOffice of Technology Transferand Enterprise Developmentand Enterprise Development

VUSE - Senior Design CourseVUSE - Senior Design Course

Chris McKinneychris.mckinney@vanderbilt.edu

Bill Eadsbill.eads@vanderbilt.edu

September 8, 2004September 8, 2004

v2.2

OTTED brings three functions OTTED brings three functions together and together and multipliesmultiplies the the opportunities for Vanderbiltopportunities for Vanderbilt

Technology Transfer Enterprise Development

Business Incubation

Primary functions: OTTEDPrimary functions: OTTED Technology servicesTechnology services

IdentificationIdentification Protection Protection Marketing Marketing Licensing Licensing Management Management

New company start-ups / investment of $$$New company start-ups / investment of $$$ Bio-business incubationBio-business incubation Education and in-reachEducation and in-reach Materials transfer agreementsMaterials transfer agreements Compliance (federal, non-federal)Compliance (federal, non-federal) Clinical trials agreement servicesClinical trials agreement services Sponsored R&D agreement servicesSponsored R&D agreement services

Who are Vanderbilt’s Who are Vanderbilt’s partners?partners?

Large and mid-size companiesLarge and mid-size companies Existing small firmsExisting small firms Start-up enterprises (both local and Start-up enterprises (both local and

beyond our region)beyond our region) Local, state, regional, and national Local, state, regional, and national

not-for-profits and public sector not-for-profits and public sector entitiesentities

UniversitiesUniversities Investors (venture capitalists, angels)Investors (venture capitalists, angels)

Relationships Relationships matter…matter…

Association of University Technology Managers

Licensing Executives Society

Tennessee Technology Transfer Leadership Forum

Soon: Soon: Cool Springs Life Sciences Cool Springs Life Sciences CenterCenter

Bio-business in the GulchBio-business in the Gulch

Sample success storiesSample success stories

Read 180Read 180 – – teaching kids to readteaching kids to read

Highway crash cushionsHighway crash cushions – – saving saving liveslives

WizOrderWizOrder – – physician order entryphysician order entry

Vanderbilt stats (FY04)Vanderbilt stats (FY04)

Base revenue = Base revenue = $3.8 million$3.8 million

New licenses and options = New licenses and options = 2929 Total active licenses = Total active licenses = 212212

New technology disclosures = New technology disclosures = 131131 Total technologies managed = Total technologies managed = 694694

Principal Forms of IPPrincipal Forms of IP

PatentPatent

CopyrightCopyright

Trademark/Service MarkTrademark/Service Mark

Trade SecretTrade Secret

Why IP?Why IP?

IP is a form of property which is IP is a form of property which is intangibleintangible yet often quite yet often quite valuablevaluable

The “value capture” comes The “value capture” comes through leveraging IP in through leveraging IP in partnerships, joint ventures, partnerships, joint ventures, research collaborations, licenses, research collaborations, licenses, and the likeand the like

(Utility) Patent(Utility) Patent What?What?

- process- process- machine- machine- product- product- composition of matter- composition of matter (includes software) (includes software)

PatentabilityPatentability- novel- novel- useful- useful- non-obvious- non-obvious

ExclusiveExclusive right – not right – not an an affirmativeaffirmative one! one!

TermTerm- 20 years from filing- 20 years from filing

Challenges – Challenges – must file must file within within one yearone year of public of public use, offer for sale, sale, use, offer for sale, sale, or publication; enters or publication; enters public domainpublic domain after after expiration of patentexpiration of patent

VariationsVariations- - plant patentplant patent

(asexual reproduction)(asexual reproduction)- - design patentdesign patent

(ornamental - 14 years)(ornamental - 14 years)

CopyrightCopyright Original worksOriginal works of of

expression fixed in a expression fixed in a tangible form, tangible form, including literary, including literary, musical, pictorial, musical, pictorial, graphic, sculptural, graphic, sculptural, and audiovisual works and audiovisual works (includes software)(includes software)

RightRight to reproduce, to reproduce, make derivative works, make derivative works, publicly distribute, publicly distribute, perform, and display perform, and display workwork

RegistrationRegistration – – not not necessary but usefulnecessary but useful

Term – Term – life of author + life of author + 70 years 70 years oror if “work for if “work for hire,” shorter of 95 hire,” shorter of 95 years from publication years from publication or 100 years from or 100 years from creationcreation

But… But… only protects only protects expressionexpression, not , not ideasideas; ; does not limit does not limit independent creationindependent creation

Variation - Variation - mask worksmask works

Trademark/Service MarkTrademark/Service Mark Any markAny mark ( (e.g.e.g., ,

word, group of word, group of words, logo) that words, logo) that identifies the source identifies the source of goods or services of goods or services from those of from those of another when used another when used in commercein commerce

OwnerOwner can prevent can prevent others from using others from using confusingly similar confusingly similar marksmarks

Common lawCommon law rights rights – federal and state – federal and state registrationsregistrations availableavailable

If registered on a If registered on a federal basis, term federal basis, term can be extended can be extended foreverforever

““Use it or lose it”Use it or lose it” Avoid your mark Avoid your mark

becoming becoming genericgeneric!!

Trade SecretTrade Secret Data, formulas, Data, formulas,

patterns, patterns, compilations, compilations, programs, devices, programs, devices, methods, lists of methods, lists of actual or potential actual or potential customers/suppliers customers/suppliers that derive economic that derive economic value from not being value from not being generally known or generally known or readily ascertainablereadily ascertainable

EnforcementEnforcement based based on proper safeguardingon proper safeguarding

Cannot be usedCannot be used to to protect matter that can protect matter that can be readily observed or be readily observed or reverse engineeredreverse engineered

Can be a Can be a valuablevaluable form of protection form of protection ifif relationships are relationships are managed effectivelymanaged effectively

High PointsHigh Points PatentPatent

inventionsinventions

CopyrightCopyrightexpressionsexpressions

Trademark/service Trademark/service markmark good willgood will

Trade secretTrade secret secretssecrets

Food for Food for thought…thought…

Takeaway message…Takeaway message…

““OTTED works with Vanderbilt OTTED works with Vanderbilt inventors to drive the inventors to drive the

commercialization of new and commercialization of new and exciting technologies.”exciting technologies.”

Vanderbilt UniversityVanderbilt University

Office of Technology TransferOffice of Technology Transfer

and Enterprise Developmentand Enterprise Development

1207 171207 17thth Avenue South, Suite 105 Avenue South, Suite 105

Nashville, Tennessee 37212Nashville, Tennessee 37212

Ph: 343-2430 • Fax: 343-4419Ph: 343-2430 • Fax: 343-4419

www.vanderbilt.edu/technology_transferwww.vanderbilt.edu/technology_transfer

Sharing of licensing incomeSharing of licensing income(after patent expenses are (after patent expenses are reimbursed)reimbursed)

Inventor/Inventor/

CreatorCreatorInventor’s Inventor’s LabLab

Inventor’s Inventor’s DeptDept

Inventor’s Inventor’s SchoolSchool

Tech Tech PromotioPromotion Fundn Fund

Tech Tech Research Research FundFund

U Central:U Central:

First First $100K $100K per yearper year

5050%% 1010%% 00%% 3030%% 1010%% 00%%

U Central:U Central:

Above Above $100K $100K per yearper year

4040%% 1010%% 1010%% 2525%% 55%% 1010%%

VUMC: VUMC: First First $100K $100K per yearper year

5050%% 00%% 2020%% 2020%% 1010%% 00%%

VUMC: VUMC: Above Above $100K $100K per yearper year

4040%% 00%% 2525%% 2020%% 55%% 1010%%