Wyoming Research Products Center Technology Transfer and Licensing Senator Enzi’s Inventors Conference April 20, 2013 Phillip Wulf, Intellectual Property Analyst
Jan 21, 2016
Wyoming Research Products CenterTechnology Transfer and Licensing
Senator Enzi’s Inventors Conference April 20, 2013Phillip Wulf, Intellectual Property Analyst
About Technology Transfer
University Industry
PURPOSE: further development and commercialization
Purpose
• Economic development
• Talented faculty and graduates
• Corporate research support
• Licensing revenue for research and education
• Public benefits from products that reach the market
Process
• Identify new intellectual property
• Protect new technologies
• Development and commercialization strategies
Steps
Invention/Idea
Protection/Patent
Market
License
Protection• Patenting by UW of discoveries from
research:– Protects the investment in the research– Ensures the technology has a chance
to reach the market
Measuring Success
• Numerical:
0
10
20
30
40
50
1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010
# of UW Disclosures by Year
Measuring Success
• Numerical:
0
10
20
30
40
50
1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010
# of UW Patents Filed by Year
Measuring Success
• Non-Numerical:– UW’s ability to retain innovative faculty– Attract great students– Contribute to UW’s reputation– Collaborations established
Licensing Revenues
• Reimburse UW’s patent expenses
• Shared between the creators and the university
• Individual inventors• Department and Colleges• Research Products Center
University of Wyoming Example
Research Products Center
• The office at UW is unique
• Funding from both the UW Research Office and the Wyoming Business Council
• We serve BOTH university and inventors statewide
Our Goals for Independent Inventors
• 1. Facilitate technology transfer
• 2. Assist Wyoming inventors and small businesses:– Identify, protect, and commercialize IP– Transfer Wyoming ideas to the market– Support the creation of new technology
start-ups in Wyoming– Encourage partnerships
Steps
Invention/Idea
Protection/Patent
Market
License
Disclosure
• Concerns regarding disclosure:1. Protect patentability
2. Misappropriation
3. University’s role
Disclosure is okay if done correctly
Confidentiality Agreement
• Proper disclosure demonstrates you are protecting the confidentiality of your idea
• To start working with us• Form found on our
website:http://uwadmnweb.uwyo.edu/RPC/
Evaluation
• The patenting process is long and expensive
• Do a good evaluation before wasting time and spending money
F ees$3 ,000
S earch$1 ,500
P rep & F ile$8 ,000
P ro secu te$4 ,000
Evaluation
• Biggest concern is novelty and non-obviousness
• Review:– Patent estate– Journal Articles– Product Databases– Internet
Marketing
• To technology transfer, marketing means finding a licensee to commercialize the product
• Get the idea in front of companies in specific industries
Marketing
• 1. Identify market• 2. Prepare technology description• 3. Develop mailing list• 4. Mail marketing package• 5. Wait for responses• 6. Add to website• 7. Share additional data if requested
– Under Confidentiality Agreement
Negotiation
• License = Permission for another to use your property
• Usually in return for money– Up-front fees– R & D funding– Royalties
If someone else uses your patented invention without your permission you can start legal action
Negotiation
• You get what you negotiate:Royalty rate Fees/Bonuses
Patent costs Liability/WarrantyNew inventions Exclusivity
Law and venue Technical reports
Diligence Length of time
Insurance Research funding
Technology Valuation
• Keep your perspective!!• Early stage technologies are worth
considerably less that those ready for immediate sale
• Example: UW has an early stage technology– Will require 10 years of development– Will address a $10,000,000 market
Technology Valuation
Year EventPercent Success
Annual Research Costs
Discounted Value
1 Discovery $300,000 $138,687
2 $300,000 $473,782
3 $300,000 $835,684
4 Phase I Testing 50 $300,000 $1,226,539
5 $300,000 $2,973,325
6 $300,000 $3,535,191
7 $300,000 $4,142,006
8 Phase II Testing 60 $300,000 $4,797,366
9 $300,000 $8,959,259
10 Sales $300,000 $10,000,000
Other Assistance
• Copyrights and Trademarks
• “Please keep in mind that the results of our services serve as a mere advisement and are by no means conclusive on the issue of whether you should pursue protection for your invention or not. Only an attorney can give you a formal patentability opinion.”
Thank you
• Director: Davona K. Douglass
• Wyoming Research Products Center
– Dept. 3672, 1000 E. University Ave., Laramie, WY 82071
– 307-766-2509 (office)
– 307-766-2530 (fax)
– 9th & Lewis Street, Room 207
– www.uwyo.edu/RPC
• Phillip Wulf
WyomingInvents.com