Innovation at The Ohio State University CFAES, Today and Tomorrow

LIZ LUCAS, CONTRACTS OFFICER C H A L O N D A H A N D Y, P O S T D O C T O R A L F E L L O W R AY AT I L A N O , P H . D . , D I R E C T O R

Technology Commercialization & Knowledge Transfer | The Ohio State University

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innovation
software

entrepreneurial

concept

successprototype
methods copyrights
know-how
Contact us @ 614.292.1315 or inventions@osu.edu

vision invention development

Dont let your ideas walk out the door

start-up

ideas

science

patents positive

research

Technology Commercialization & Knowledge Transfer | The Ohio State University

Intellectual Property is so much more than patents

1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12.

Formulations - Methods Designs Trade Secrets Trademarks Copyrights Tangible Property cell lines, mouse models, research tools Databases samples Software source code Equity deals for future rights Know-how Joint ventures Patents novel, inventive step (non-obvious) and industrial applicability
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Technology Commercialization & Knowledge Transfer | The Ohio State University

Ways to Protect Your IP

Confidential Disclosure Agreement (CDA): agreement that

protects proprietary information by prohibiting its disclosure to others.

Material Transfer Agreement (MTA): agreement that

defines the parameters under which material may be used by another party.

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Importance of CDAs & MTAs

Preserve your rights and avoid future disputes! CDA: Without a CDA, any discussion, demonstration, or handing
over of documents related to an invention or unpublished research can compromise the validity of any patent granted to that invention.
MTA: protect against unauthorized use and distribution of the material as well as ensuring the ability to conduct future research related to the material.

Terms of MTAs commonly address: publication of results, ownership of intellectual property, restrictions on sharing the material outside of your laboratory, ownership of modifications or derivatives.

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When to Use a CDA

1) Anytime you are disclosing detailed information about your

invention to someone else, especially if you have not yet filed a patent application. 2) If you have a new product in development, and you need to consult an expert for advice on how to proceed. 3) You want to consult with another researcher about unpublished research or an unpatented invention. 4) In the context of the collaboration agreement, a CDA should be in place so that both parties agree not to disclose or use information related to the other partys Intellectual Property.
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When to Use an MTA

It is necessary to use MTAs whenever a PI wants to share

research materials with someone else (whether it be within the public sector, or between the public and private sectors). MTAs are now ever-present because biological materials have gained commercial value.

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What Happens if I dont use an MTA?

If Receiving Materials:
You may be precluded from publishing research results if you received the material

directly from a colleague or other source without obtaining authorized permission from the entity that owns the material.

You may be subject to personal liability if you use materials from a colleague or other

source without obtaining authorized permission from the entity.

If Sending Material:
You may lose control over the material developed and its research use. The recipient

will have no legal restrictions on further transferring the material to other institutions, and the recipient or others may publish on the material before you do. restricts further transfer of the material, you may cause OSU to be in violation of the existing agreement and expose OSU or yourself to penalties or legal action.
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If you transfer a research material that is governed by an existing agreement that

Other Things to Consider

CDAs:
It is important to ensure that everyone who has access to confidential information is

well informed of the obligation to keep it confidential.

MTAs:
It is important to ensure that everyone who has access to Materials is well informed

of the obligations in regards to those Materials. You do not own the materials; they are owned either by the Provider or OSU. If you or a member of your laboratory group leave OSU, you may not take the materials with you without written permission. The single most significant delay in finalizing incoming MTAs from industry is negotiating acceptable terms. Most negotiations center on the companys desire to own inventions as well as data arising from research using the companys material. It is our intent to protect the best interests of both OSU and our faculty-inventors in these negotiations.

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Ideas, Invention & Innovation

What is the difference between an invention and an innovation?

An invention is a technical solution to a specific problem. Inventions are either products or processes. Product inventions include, for example, machines, chemical substances, electronic components, and often also microorganisms, plants and animals that have been made or modified by man. Process inventions include, for example, physical or chemical methods of manufacture, transformation, measurement, control or others useful in production. Only products or processes made or modified sufficiently by man can qualify as inventions. Products or processes already existing in nature are not inventions. An innovation is the development of a solution to a technical or organizational problem. It may consist of or include an invention, although many innovations, even if commercially valuable, will not qualify as inventions for the purposes of patent law.

Can you protect an idea?

An idea that does not materialize in an invention (i.e. a product or a process) cannot be protected by patent. Ideas may, of course, be kept secret. But secrets can only be protected against their illegal or unauthorized access, use or communication to third parties. If an idea is kept secret and the same idea is developed independently by another person, the fact that the first idea was kept secret will be of no avail to prevent the other person from using his idea. A secret idea is not an industrial property right; it is merely protected against its illegal appropriation or use. Taken from the World Intellectual Property Organization website: www.wipo.int/uipc/en/faq.html

Disclosing Your Invention

When is best time to file? What is to be included? How will I know the status? Why do it? Where to file?

(PI, pubs, idea, data) (cryptic or a lot) (if it is accepted, filed on, marketed, commercialized) (learn, add value, SRA, $)

inventions@osu.edu

Technology Commercialization & Knowledge Transfer | The Ohio State University

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Completing the Invention Disclosure

Inventors What constitutes inventorship? Sponsors What is the significance and impact? Research Identify who else is doing similar workwhy important? Technical Searches Identify papers and prior art through databaseswhy?

Patent searches: USPTO patft.uspto.gov Patent assignments: assignments.uspto.gov/assignments/?db=pat Research: PubMed www.pubmedcentral.nih.gov

Target Companies:
Business Sources Complete (EBSCO) Hoovers - premium.hoovers.com/subscribe

Technology Commercialization & Knowledge Transfer | The Ohio State University

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What Faculty Can Expect

ITACS* Roadmap

Invention Disclosure Form submitted to TCO

ILO Meeting

2
Confirmation in 48 hrs

TCO

Tech Triage

TCO Inventor Strategy Meeting

Market / Industry Interviews

External Tech Assessment

Tech Assessment
Strategy Meeting Request IP Analysis Shared w/ Inventor Inventor Company Contacts Market Feedback Biz Terms & Milestones

3
Tech Commercial Readiness & Strategy

Tech Development Plan

Tech Commercial Readiness Level & Plan Completed within 90 Days

*ITACS: Invention Triage, Assessment, & Commercial Readiness Strategy

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The College Boards External Advisory Board

THE PROCESS: Reviewer signs CDA

Invention disclosure is submitted to TCO Disclosure is logged and assigned to a

ECAB MEMBER SUBSEQUENT RESPONSIBILITIES:

Serve a 3-year rotating term Rank candidate Scientific Technologies.

licensing officer

Licensing officer recommends at least two

Board members to review invention.

Evaluate development of Technologies.

Evaluate strategic partner suitability. Ad hoc opinions and consultations.

Disclosure is sent to Board members with an

evaluation form prior to scheduled meeting.

Evaluations are discussed at monthly meeting

and inventors may be asked to present

regarding disclosure

Board recommends action to be taken Licensing officer follows up with inventor (on

Expert advice for an OSU legacy.

Lead in commercial entrepreneur

disclosure) with Boards recommendation.

activities.

Create a stronger Ohio through OSU

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Call to Action

Partnering Strategy

Build strategic partnerships with companies whose technology interests are aligned with the research growth goals of the college. College asset mapping and readiness Identify and organize college assets into clusters of research innovation Company identification and fit analysis We are also planning to evaluate existing company relationships with the college to identify areas for expansion Company awareness and engagement proactively engage target companies and their technology prospecting teams.

Technology Commercialization & Knowledge Transfer | The Ohio State University

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Market Knowledge Management, Innovation, Technology Transfer & Commercialization

Conceptual Document for Discussion Purposes

ILO Supported Activities

Advanced Bioenergy & Biobased Products
Opportunities for Innovation Portfolio Developed and maintained by departments

TCO Supported Activities

Secure trade secrets and IP

license Exclusive license spinout Misc. approaches

Resource to support innovation

Grants Department

Food Security, Protection & Human Health

Operating and internal seed grants Sponsored research industry supported

Identify Commercial opportunities portfolio

Environmental Quality & Sustainability

Proof of concept
Prioritized Innovations Intellectual property opportunities

Technology Commercialization & Knowledge Transfer | The Ohio State University

Sample Template of the Non-confidential Tech Brief

Inventor College/Department

Title- Short, general

For more info First Last Name, Licensing Officer email@osu.edu | 614.###.####

Picture of the inventor

Applications

Add a relevant picture here.

A short description of the product or service. It should explicitly state if it is for the treatment of a disease, a new formulation for a specific therapeutic or a platform technology for the identification of disease biomarkers, etc.

Benefits & Features

Bullet the pros/benefits of this technology. Include things that are novel or would make it a successful product (easy to read 2-3 bullet points)

Market Potential

Description

The Ohio State University researchers, led by Dr. X have developed a novel ..Short paragraph or 2 describing the actual technology, how it works; go into the science details. DO NOT include the disease indications/patient population here unless its a unique therapeutic indication or orphan drug or for a niche market Discuss how this technology overcomes what is out there in the market (competitive advantage or why should I care about this product)

Provide an overview of the market(s) that the new invention might impact and to give an idea around the size of the market Address the pain (the market, segment, and specific problem that is in need of the solution) If possible, quantify the cost of the specific problem (the pain).

Developmental Stage

Describe the current developmental stage, including if it has been tested clinically, if its being used currently for research purposes, validated in vivo or in vitro, if its in clinical trials etc.

IP Status: Key Words: list 3-5 words that are relevant to the technology and could be used to search for the tech in the database

Reference Number: XXXX-XXX

Technology Commercialization and Knowledge Transfer Office | The Ohio State University

Contacts

Invention Disclosures & Licensing Erin Bender

Industry Liaisons Bryan Kinnamon

Tech Briefs Chalonda Handy Erin Bender

MTAs/CDAs Liz Lucas Darcy Schlaufman

Faculty Liaisons TBD

External Advisory TBD

Coordination with Faculty

Technology Commercialization & Knowledge Transfer | The Ohio State University

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Start-ups

The Problem:

Compelling problem(s) to be solved Whats the pain? revenues, costs, time, market research Faster, better, smaller, etc. are solutions, not problems

The Solution:

Describe your businessCompelling benefits- Must-haves not nice-to-haves So what? Who is the first Customer?
Market size and growth rate for five years Unique Competitive Advantages- how long will they last, IP? Current and potential competitors Key players, critical partners, pricing, sales cycle, value chain 5 year revenues and expenses by major categories, pretax profit (loss) Cash flow from operations, capital requirements, first revenues, cashflow positive The CEO is the most critical team member Milestones achieved to date and where you go from here

Whats the Opportunity?

Go To Market Strategy:

Financial Roadmap:

The Team:

Current Status:

Inventors IP Checklist

POSSIBLE INTELLECTUAL PROPERTY: Formulations Methods Designs Trade Secrets Trademarks Copyrights Tangible Property cell lines, mouse
models, research tools

THE PROCESS:
Get a CDA/MTA in place with people outside OSU Invention Disclosure is submitted to TCO Triage of Invention by TCO Strategy meeting with inventor IP Protection & Development Plan External Advisory Board members review

Databases samples
Software source code Equity deals for future rights Know-how

Advisory Board recommendations

Evaluations are discussed w/ inventor Target Company identified for marketing

Joint ventures
Technology Commercialization & Knowledge Transfer The Ohio State University

Patents

TCO: 614.292.1315 or inventions@osu.edu

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Thank You
LIZ LUCAS
lucas.238@osu.edu CHALONDA HANDY

handy.12@osu.edu
RAY ATILANO atilano.1@osu.edu
Technology Commercialization & Knowledge Transfer | The Ohio State University CONFIDENTIAL