Transcript Advice to UNC Inventors

ADVICE TO UNC INVENTORS
(Worth what you have paid for it)
Collin McKinney
UNC Department of Chemistry
Electronics Design Facility
Advantages of
Disclosure/Patenting
• Obvious:
• Royalties
40% to Inventor(s)
20% to OTD
40% to Inventor’s Department
Advantages of
Disclosure/Patenting
• Obvious:
• Royalties
• Protection of concept(s)/provides value
Advantages of
Disclosure/Patenting
• Obvious:
• Royalties
• Protection of concept(s)/provides value
• Fame
“Wall of Patents” Courtesy of
Dr. Joseph D. Simone
Advantages of
Disclosure/Patenting
•Non-Obvious:
• Controlled dissemination of new
technologies
• Ability to make technology available
to outside labs for validation
• Promotes industrial collaboration
Case Study: The Universal
Electrochemistry Instrument (UEI)
A Tale of Hardware,
Software, and Animals
The Mark Wightman Group
UEI Case Study
Things Done Wrong:
• Software IP (copyright) was released to student by University because it was
thought to have no value outside one or two research labs.
• Result: ESA – Magellan Bioscience purchased rights to software from
student. UNC Hardware useless without software!
• Result: UNC is funding a rewrite of the software in order to regain control.
Things Done Right:
• All hardware IP disclosed to OTD (many parts not patentable)
• Result: ESA licensed hardware “know-how” from UNC .
• OTD negotiated license that contained an abandonment clause that returns
IP rights to UNC.
• Result: When Magellan chose to change the strategic direction of ESA and
they partially abandoned the project, UNC could continue producing hardware
for other labs.
Case Study: FAIMS Power Supply
(Field Asymmetric Ion Mobility Spectroscopy)
Driver
circuits
10-60pf
variable
capacitors
Ferrite core
transformer
s
A Tale of Ions, Traps, High
Voltage, and NO Animals
(Thank goodness!)
The Gary Glish Group
FAIMS Case Study
Things Done Right (So Far):
• Hardware IP disclosed to OTD.
• Provisional Patent Filed.
• Result: Bruker Daltronics has funded the
construction of two more power supplies and has
an option to license if their experiments succeed.
Case Study: DRE
(Dynamic Range Extender for NMR)
Baseband FID
Overload
Detector
600 MHz FID
NMR System
Controller
Preamp
Summing
Junction
Attenuator
Amplifier
Amplifier
Mixer
Mixer
Amplifier
LP Filter
ADC
Probe
ADC
Mixer
Local
Oscillator
Local
Oscillator
Local
Oscillator
DSP
DAC
Trig
Trigger Out
The NMR Facility
DRE Case Study
Things Done Right (We Hope):
• Hardware IP disclosed to OTD – Basic Concept Only.
• Provisional Patent Filed.
• Result: Ability to talk more freely with potentially
interested parties and colleagues. Applying for UNC
internal funds for proof of concept. Undergraduate
student applied and obtained funding to work on
project. Will apply for SBIR/STTR funds if proof of
concept successful. Must file patent in one year.
Summary
• Disclose all concepts regardless of perceived
value at the time of inception.
• Update OTD file as changes or improvements
are made – keep good notes!
• Use non-disclosure agreements prior to patent
submission to protect concepts.
• Keep track of the market potential and
applications as the concept is refined.
• Develop contacts with potential collaborators
or customers as market develops.