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Vanderbilt University Office of Technology Transfer and Enterprise Development

Vanderbilt University Office of Technology Transfer and Enterprise Development. VUSE - Senior Design Course Chris McKinney chris.mckinney@vanderbilt.edu Bill Eads bill.eads@vanderbilt.edu September 8, 2004. v2.2.

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Vanderbilt University Office of Technology Transfer and Enterprise Development

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  1. Vanderbilt UniversityOffice of Technology Transferand Enterprise Development VUSE - Senior Design Course Chris McKinney chris.mckinney@vanderbilt.edu Bill Eads bill.eads@vanderbilt.edu September 8, 2004 v2.2

  2. OTTED brings three functions together and multiplies the opportunities for Vanderbilt Technology Transfer Enterprise Development Business Incubation

  3. Primary functions: OTTED • Technology services Identification Protection Marketing Licensing Management • New company start-ups / investment of $$$ • Bio-business incubation • Education and in-reach • Materials transfer agreements • Compliance (federal, non-federal) • Clinical trials agreement services • Sponsored R&D agreement services

  4. Who are Vanderbilt’s partners? • Large and mid-size companies • Existing small firms • Start-up enterprises (both local and beyond our region) • Local, state, regional, and national not-for-profits and public sector entities • Universities • Investors (venture capitalists, angels)

  5. Relationships matter… Association of University Technology Managers Tennessee Technology Transfer Leadership Forum Licensing Executives Society

  6. Soon: Cool Springs Life Sciences Center

  7. Bio-business in the Gulch

  8. Sample success stories • Read 180 – teaching kids to read • Highway crash cushions – saving lives • WizOrder – physician order entry

  9. Vanderbilt stats (FY04) • Base revenue = $3.8 million • New licenses and options = 29 • Total active licenses = 212 • New technology disclosures = 131 • Total technologies managed = 694

  10. Principal Forms of IP • Patent • Copyright • Trademark/Service Mark • Trade Secret

  11. Why IP? • IP is a form of property which is intangible yet often quite valuable • The “value capture” comes through leveraging IP in partnerships, joint ventures, research collaborations, licenses, and the like

  12. What?- process- machine- product- composition of matter (includes software) Patentability- novel- useful- non-obvious Exclusive right – not an affirmative one! Term- 20 years from filing Challenges – must file within one year of public use, offer for sale, sale, or publication; enters public domain after expiration of patent Variations- plant patent (asexual reproduction)- design patent (ornamental - 14 years) (Utility) Patent

  13. Original works of expression fixed in a tangible form, including literary, musical, pictorial, graphic, sculptural, and audiovisual works (includes software) Right to reproduce, make derivative works, publicly distribute, perform, and display work Registration – not necessary but useful Term – life of author + 70 years or if “work for hire,” shorter of 95 years from publication or 100 years from creation But… only protects expression, not ideas; does not limit independent creation Variation - mask works Copyright

  14. Any mark (e.g., word, group of words, logo) that identifies the source of goods or services from those of another when used in commerce Owner can prevent others from using confusingly similar marks Common law rights – federal and state registrations available If registered on a federal basis, term can be extended forever “Use it or lose it” Avoid your mark becoming generic! Trademark/Service Mark

  15. Data, formulas, patterns, compilations, programs, devices, methods, lists of actual or potential customers/suppliers that derive economic value from not being generally known or readily ascertainable Enforcement based on proper safeguarding Cannot be used to protect matter that can be readily observed or reverse engineered Can be a valuable form of protection if relationships are managed effectively Trade Secret

  16. High Points • Patentinventions • Copyrightexpressions • Trademark/service markgood will • Trade secretsecrets

  17. Food for thought…

  18. Takeaway message… “OTTED works with Vanderbilt inventors to drive the commercialization of new and exciting technologies.” Vanderbilt University Office of Technology Transfer and Enterprise Development 1207 17th Avenue South, Suite 105 Nashville, Tennessee 37212 Ph: 343-2430 • Fax: 343-4419 www.vanderbilt.edu/technology_transfer

  19. Sharing of licensing income(after patent expenses are reimbursed)

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