What we ask in a ROI • What it is? • Is it related to another invention? • Who contributed to making the invention? • Who paid for the research? • When invention was made? • When will it be (or was it) published? • What could it be used for commercially? • Who would buy it?
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What we ask in a ROI What it is? Is it related to another invention? Who contributed to making the invention? Who paid for the research? When invention.
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What we ask in a ROI
• What it is?• Is it related to another invention?• Who contributed to making the
invention?• Who paid for the research?• When invention was made?• When will it be (or was it) published?• What could it be used for commercially?• Who would buy it?
Five Reasons to File an ROI
• It’s required
Five Reasons to File an ROI
• It’s required– By UNC Policy
• Must report invention whether patentable or not to OTD
– By funder• Federal grants-NSF, NIH, DOE, DOD, etc.• Non-profit grants-HHMI, Gates, CF Found., etc.• Industry-DuPont, GSK, Xintek, Liquidia, etc.
Five Reasons to File an ROI
• It’s required
• Need to know what “it” is
Five Reasons to File an ROI
• Need to know what “it” iswhat kind of intellectual property– Patent
• Compound, method, device, algorithm
– Tangible property• Mice, cell lines, reagents, antibodies, etc.
– Copyright• Software, multimedia, teaching materials, etc.
License by IP Type
0
20
40
60
80
100
120
140
1
Num
ber
Patent RightsCopyrightTangible Property
Tangible Property License
Exclusive10
Non-Exclusive95
Patent Right License
Exclusive65
Non-Exclusive36
ExclusiveStart-up
29
Non-ExclusiveStart-up
2
Five Reasons to File an ROI
• It’s required
• Need to know what “it” is
• Make sure we get it right
Five Reasons to File an ROI• Make sure we get it right
– Right inventors/authors• Inventorship and authorship are legal determination
– Right owners• Collaborators at other institutions• Sponsors and Material Providers
– IP Obligations• Material Transfer Agreements• Industry Sponsors• Government Sponsors• Non-profit Sponsors
Five Reasons to File an ROI• Make sure we get it right
– Patent Deadlines• Must file patent application
– For US Patent Rights, one year from disclosure– For Foreign Patent Rights, PRIOR to disclosure
– Reporting Obligations under Bayh-Dole
Five Reasons to File an ROI
• It’s required
• Need to know what “it” is
• Make sure we get it right
• Helps us find a commercial partner
Five Reasons to File an ROI• Helps us find a commercial partner
– Marketing summaries• Will be posted on new website
– Researcher identify companies• contacted by interested companies at meetings,
by email or phone calls after publication of research of particular commercial interest
OTD marketing…”cold calling” on companies has a VERY low success rate
Five Reasons to File an ROI
• It’s required
• Need to know what “it” is
• Make sure we get it right
• Helps us find a commercial partner
• $$$$$$$$$$
Five Reasons to File an ROI• $$$$$$$$$$
– Licensing Income from UNC’s licenses• 40% to individual “contributors”• 40% to “contributors’” department• 20% to OTD
– 392 individuals received total of $8,093,940 – 59 academic departments, schools, centers