Transcript KUIC briefing on intellectual property

What is KU Innovation and Collaboration?
KU Innovation and Collaboration (KUIC) is the commercialization arm of the
University of Kansas (all campuses):
•
Intellectual property (IP)
•
Corporate partnerships
•
Industry Sponsored Research Agreements
Not affiliated with clinical trials
•
Entrepreneurship
Contact:
Aswini Betha, PhD; Licensing Associate – 913-588-5713; [email protected]
Matt Koenig, JD; Assistant Director – 913-588-1495; [email protected]
Shantanu Balkundi, PhD, Licensing Associate, 785-864-6397; [email protected]
Rajiv Kulkarni, PhD; Director – 785-864-6265; [email protected]
Julie Nagel, PhD; Interim Associate Vice Chancellor - 785-864-9004; [email protected]
www.kuic.ku.edu
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Intellectual Property Services
Invention Disclosure
Licensed Product
• Invention Disclosed
to KUIC and assigned
to a Licensing
Associate
DirectorRajiv Kulkarni –
[email protected]
Licensing AssociatesMatt [email protected]
Aswini [email protected]
Shantanu Balkundi
[email protected]
• Royalties received
• Revenue distributed
• License compliance
IP Protection
• Develop a strategy for
patent filing and
commercialization of
patentable inventions
Market & IP Evaluation
License Negotiations
• Market research to evaluate
commercial potential
• Work with KU Business
School, BTBC and others on
market evaluation
• Work with faculty in
evaluating the novelty and
non-obviousness of the
invention
• Create a strategy for patent
filing and commercialization
• Send draft license
agreement to company
• Negotiate an acceptable
deal
Images courtesy of Stuart Mills (2), Photokanock, pakorn, Cooldesign,
watiporn, smarnad / freedigitalphotos.net
KUIC - Copyright 2014
OWNERSHIP OF IP
The Bayh-Dole Act of 1980
Allows universities (and other non-profit contractors) to:
 Retain title to inventions produced under federal support
 Patent technologies
 License technologies
Requires universities (and other non-profit contractors) to:
 Share royalties with inventors
 Use royalties for laboratory purposes
Authorizes federal agencies to:
 Protect government-owned intellectual property
 Grant licenses for government-owned intellectual property
 Set restrictions on licensing
INTELLECTUAL PROPERTY
1. Trade Secrets
2. Trademarks™
3. Copyrights ©
4. Patents
Patenting
What is Patentable?
• Products
• Processes
• Plant varieties
• Designs
• Applications not just ideas
Requirements for Patentability
• First to file
• Novelty
• Non-obviousness
• Utility
• Enabled
Prior Art
• Information available to the public
• Any part of the world & in any form
• Before a given date relevant to patent claims
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Public Disclosure: Loss of patent rights
Public Disclosure
• Publication
• Poster
• Presentation
• Offer for sale
• Sale
• Known or used by public
• Web Posting
Prevent Public Disclosure
• Confidential Disclosure Agreement
• KUIC can help
• Contact KUIC well before
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Intellectual Property
Inventorship:
• Contribution to the conception of invention
• Contribution to at least one claim
• Not just reduction to practice
• Authorship is not inventorship
Ownership:
KU owns all intellectual property created by any KU employee in the performance of
employee duties at KU using KU facilities, equipment, or funds.
• Kansas Board of Regents Policy http://www.kansasregents.org/resources/PDF/2582-BoardPolicyManual.pdf
Lab Note Books:
• Complete, detailed records of first idea through commercial products
• Describe the invention clearly: words, photos, graphs, drawings, etc.
• Witness by a colleague “Read and understood by”, dates noted, & signed
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Faculty’s Invention Disclosure - Patent protection
KUIC needs
• Complete description of the invention. A draft manuscript, if available
• Reduction of the invention to practice (e.g. animal data, full prototype)
• Plans for further development of the technology
Provisional Patent Application
• Place holder to establish the date of patent filing
• Never examined and never published by the US Patent Office
• Expires one year from the date of filing
• $1500-5000
Non-provisional Patent Application
• Examined by Patent Office & sends an Office Action to the applicant
• Response to Office Action filed
• Issuance in 3-5 years from the date of filing
• $8,000 – 20,000
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University of Kansas
Revenue Distribution Policy
Royalty
After Deducting
Legal Costs
1/3rd to
Inventor(s)
1/3rd to
Inventor(s)
Department
1/3rd to KU
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Startup Support
• Market analysis
• Business planning support in coordination with
BTBC
– Investor presentation support
– Financial modeling
– Investor introduction
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SELECTION OF KU START-UPS
Crititech
Particle-size reduction
techniques for drugs
CyDex[Ligand Pharma.]
Cyclodextrins to improve
drug solubility
Echogen
Protein tag system for
targeted metal delivery
Nanopharm [Hylapharm]
Nanoconjugate drug delivery
system
Likarda
Islet cell implants, high
throughput screening
Flint Hills Scientific
Automated seizure detection
and prediction
IGX Bio Inc
Prevention/treatment of HIV
KC BioMedix [Innara Health]
Neonatal medical devices
NephroGenex [ipo 2014]
Treatment of end stage renal
disease (ESRD)
ProQuest
Developed prodrugs to reduce
delivery barriers
XenoTech
Develop pre-clinical safety
information
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www.kuic.ku.edu
Lawrence Campus
2029 Becker Drive
Suite 142
Lawrence, KS 66045
Tele: (785) 864-6401
Fax: (785) 864-5272
KU Medical Center
2002 W. 39th Ave.
Kansas City KS 66103
Phone: (913) 588-5721
Fax: (913) 588-8214
KUIC - Copyright 2014