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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?
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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.

Dec 20, 2015

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Page 1: 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.

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?

Page 2: 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.

Five Reasons to File an ROI

• It’s required

Page 3: 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.

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.

Page 4: 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.

Five Reasons to File an ROI

• It’s required

• Need to know what “it” is

Page 5: 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.

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.

Page 6: 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.

License by IP Type

0

20

40

60

80

100

120

140

1

Num

ber

Patent RightsCopyrightTangible Property

Page 7: 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.

Tangible Property License

Exclusive10

Non-Exclusive95

Page 8: 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.

Patent Right License

Exclusive65

Non-Exclusive36

ExclusiveStart-up

29

Non-ExclusiveStart-up

2

Page 9: 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.

Five Reasons to File an ROI

• It’s required

• Need to know what “it” is

• Make sure we get it right

Page 10: 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.

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

Page 11: 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.

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

Page 12: 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.

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

Page 13: 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.

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

Page 14: 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.

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

• $$$$$$$$$$

Page 15: 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.

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

received total of $13,303,870

Page 16: 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.

Invidual Income from UNC Licenses

0

50

100

150

200

250

300

350

400

$250

,000

$100

,000

$50,

000

$25,00

0

$10,

000

$5,0

00

$1,0

00$5

00

$100

$1

Income Greater than

Nu

mber

of In

div

idu

als

Page 17: 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.

Department Income from UNC License

0

5

10

15

20

25

30

35

40

45

50

$2,000,000 $1,000,000 $500,000 $250,000 $100,000 $50,000 $25,000 $10,000 $5,000

Income Greater than

Num

ber of

Dep

artm

ents

Page 18: 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.

Departments/Centers over $500,000

Pediatrics Total, $2,387,352.04

Computer Science Total,

$2,110,656.60 Pathology Total, $1,249,486.75

Chemistry Total, $966,302.38

Medicine Total, $870,192.49

Lineberger Cancer Center Total, $669,720.39

Microbiology Total, $654,902.74

Biology Total, $643,613.26

Page 19: 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.

UNC License Revenue

Start-up$3,562,060

All Other Companies$24,070,411

Page 20: 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.

Number of Active LicensesStart-up

31

All Other Companies

195

Page 21: 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.

Income from UNC Start-up Companies

A

B

C

DE

F G HI J K L M N O

$0

$200,000

$400,000

$600,000

$800,000

$1,000,000

$1,200,000