Vanderbilt University Vanderbilt University Office of Technology Office of Technology Transfer Transfer and Enterprise Development and Enterprise Development VUSE - Senior Design Course VUSE - Senior Design Course Chris McKinney [email protected]Bill Eads [email protected]September 8, 2004 September 8, 2004 v2.2
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Vanderbilt University Office of Technology Transfer and Enterprise Development VUSE - Senior Design Course Chris McKinney [email protected].
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Vanderbilt UniversityVanderbilt UniversityOffice of Technology TransferOffice of Technology Transferand Enterprise Developmentand Enterprise Development
OTTED brings three functions OTTED brings three functions together and together and multipliesmultiplies the the opportunities for Vanderbiltopportunities for Vanderbilt
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
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)
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
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
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