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Translating UNCG Research to Benefit an Aging Society The Role of the UNCG Office of Innovation Commercialization Gerontology Research Network September 21, 2011 Presented by Staton Noel Licensing Assistant
The Convergence of Issues = Opportunities Our Aging society is putting increasing pressures on the economy. 76 million persons born in the “baby boom” years from 1946 through 1964 will be reaching retirement age in the following two decades* Great Recession Political and Economic push to get more innovations out of the Universities 21st century Universities are going to play a larger role in commercialization than 20th century Universities. More Public-Private partnerships being formed to solve societal problems. TigerPlace (University of Missouri/Americare) *National Academy of Social Insurance http://www.nasi.org/learn/socialsecurity/boomers
Innovation Commercialization at UNCG Who we are. What we do. Why we do it. Examples and Evangelizing.
Office of Innovation Commercialization at UNCG Lisa Goble (Director) Vacant (Licensing Associate) Carlos Johnson (Licensing Assistant) Staton Noel (Licensing Assistant) Kay Canady (Business Manager) Jenna Berasa (Assistant to Manager) Jeremy Tyson ( IT/WEB Technician) Located in 1603 Moore Humanitiesand Research Administration Building
OIC Mission Statement The Office of Innovation Commercialization supports UNCG’s effort to encourage innovation and continued economic development in the Piedmont Triad Region by: Serving the University and the public by helping faculty, students and staff protect and realize the full commercial potential of their innovations. Supporting the formation of small businesses aimed at getting academic innovations into products and services for the benefit of society. Facilitating and fostering collaborative, reciprocal relationships between faculty members, entrepreneurs, other research institutions, and regional as well as global industry partners
The Bayh-Dole Act Enacted in 1980, placed patent ownership of federally funded research at universities in the hands of the university and enabled universities to out- license technologies for commercialization. Creation of more than more than 7200 companies (including nearly 600 last year despite the national recession) and over 8800 new products were made available to patients and other consumers. * University derived start-ups have contributed at least $187 billion to the U.S. Gross National Product.* During a nine year period created a minimum of 279,000 jobs* *http://www.autm.net/Bayh_Dole_Act.htm
Alignment of OIC Goals with Federal, State and University Goals“In September 2009, President Obama released his national innovation strategy, which is designedto promote sustainable growth and the creation of quality jobs. Two key parts of this strategy areto increase support for both the fundamental research at our nations universities and theeffective commercialization of promising technologies.”(Federal Register Volume 75, Number 57)“The University of North Carolina and its constituent institutions will engage in high-value researchand commercialization partnerships, with both public and private sector partners, to worktogether to pioneer new ways to innovate and commercialize technologies –” Innovate-Collaborate-Accelerate!
Benefits and Opportunities of Innovation Commercialization• Turns knowledge into practice• Attracts sponsored research• Develops closer ties with industry• Provides faculty consulting opportunities• Opportunities for graduates• Protection of intellectual assets• Generation of income for university and researchers• Public good, societal expectation, Public relations• New technologies benefit regional and national economies
UNCG Patent & Invention Policy One of the highest across the nation! 50% Royalty Sharing Rate with Inventors Inventor(s) Dept. School UNCG (or College) First $500,000 50% 15% 10% 25% $500,001 - 50% 10% 5% 35% $1,000,000 Above 50% - - 50% $1,000,000 Promotion and Tenure guidelines now incorporate outreach, engagement and innovative activities ◦ Metrics currently being developed ◦ Policy website :http://www.uncg.edu/innovate/documents/uncgFPP.pdf
Commercialization Process AssessmentResearch • Commercial/Valueproducing Disclosure • Intellectual Property ideas to OIC • Sponsored Research Opportunities Develop a Commercialization Strategy Marketing to find or form licensee Form start up business Existing business Licensing Sponsored Commercialization Research Revenue 10
Elements of Innovation Development and TransferCampusIn-reach Invention Assessment & Triage Market PolicyDevelopment Evaluation Material Marketing/Sales Start-up & Transfer Entrepreneurial Accounting and Administration Support Confidentiality Intellectual Licensee Licensing property protection AUDITS strategy Development /Prototyping Intellectual Property Community Management Out-reachEnabling Assessment and Push-out ManagementCulture Opportunity
Types of Intellectual PropertyIntellectual Property Rights recognize the ownership of ideas generated by creative thinkers. • Trademark or Service Mark • Trade Secret • Copyright • Patent
Trademarks and Service Marks A “trademark” or “mark” refers to either a trademark or service mark. Both refer to words, names, symbols, or designs that indicate where the goods (trademark) or services (service mark) originate.• Purpose: Identify the source and quality of goods /services.• Standard: Priority of use and remove likelihood of confusion• Duration: Infinite life tied only to use
A trade secret protects business or technical information that derives actual or potential commercial value from not being generally known or readily ascertainable through independent development or reverse engineering, and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Infinite Protection as long as secret OR have tried to keep it that way Need to have a confidentiality procedure in place, and follow that procedure, before the trade secret is disclosed to ANYONE.
Copyrights The purpose of copyrights is to protect “original works of authorship.” • Standard: Expression of idea in a tangible form • Duration: Life of author plus 70 years.Registration: Receive The Exclusive Right To: Protection is automatic but • Reproduce registration allows you to sue infringers • Create Derivative Works and receive statutory damages plus • Distribute attorneys’ fees • Perform Easy and Inexpensive • Display the Work Publicly
PatentsThe purpose of patents is to protect inventions.• Standard: Useful, Unique, and Unobvious• Duration: 20 years from date of filingWhat You Receive:The right to EXCLUDE others • President Obama signed thefrom making, using, selling, America Invents Act on Sept. 16th 2011.offering for sale, or importingin the U.S. the product orprocess of the claim • Changes some aspects of patent law and the patent process.What You Do NOT Receive:The right to make or use the • Changes US to a “first to file”product or process of the countryclaim, as other patents maycover aspects of the same item
Patentability Criteria Uniqueness/Novelty Not previously known to others Not in public use Un-Obviousness Not obvious to someone having ordinary skills in the relevant subject matter Usefulness/Utility Must have a useful purpose Must actually work Must not be frivolous or immoral (who decides?!)
Perpetual motion or anti-gravity Literary, dramatic, musical, and device; artistic works; Laws of nature or scientific Data structures or programs per se or principles; mere mathematical algorithms; Naturally occurring substances; Electromagnetic signals; Abstract ideas or mental Human beings; processes; Inoperative inventions; A mere change in size, form, or An invention which can only be used shape; for illegal purposes (torture device); Nonfunctional descriptive material;
Types of Patents Provisional Patent Applications 1 year placeholder Design Patents New original or ornamental design Plant Patents New variety of seed or plant Utility Patents (Functional or Mechanical ) Processes Machines Manufactured Items Compositions of Matter
Intellectual Property Protection not needed to commercialize!Desired OIC commercialization requirements; Innovation created with University Resources A Development Plan Has commercial value or social value to UNCG PLEASE CONTACT OIC IF YOU THINK YOU MAY HAVE AN INNOVATION THAT NEEDS INTELLECTUAL PROPERTY PROTECTION BEFORE YOU PUBLISH!
OIC outreach efforts
Growth at UNCG Partnerships with NCA&T ◦ Gateway University Research Park ◦ Joint School of Nano-Science and Nano-Engineering M.S. and Ph.D. in Nanoscience ◦ Joint Ph.D. Program in Social Work New Programs ◦ Center for Drug Discovery PhD Program in Medicinal BioChemistry ◦ Department of Mathematics and Statistics PhD in Computational Mathematics ◦ Department of Biology PhD in Environmental Health Sciences ◦ Bryan Business School B.S. in Entrepreneurship
Examples of UNCG Innovations Spinouts formed around education, performing arts, economics, biology, human health and nanotechnology. Nearly $800K of royalty revenue generated.
Estimated Activity for 2011-2012 ~35 Innovation Disclosures ~13 Patent Applications ~5-6 Agreements and Options ~5-6 Material Transfer Agreements ~6-7 Confidentiality Agreements 1 start up company
Summary of OIC Services Consultation on intellectual property and technology transfer issues Determination of patentability, protection, and assessment of commercial potential of disclosed inventions Administration of the patent process Negotiation of licensing agreements, material transfer, confidentiality agreements. Guiding UNCG inventors through the process of establishing start- up companies to commercialize their innovations.DRAFT. DO NOT DISTRIBUTE
An Aging Society Presents Opportunities To Do Things Better! Is the AARPs video game lesson helpful or condescending? Its condescending. 70% Its helpful. 30%
Evidence based research is needed to make commercialization a success! Drugs, diagnostics, medical products, procedures, and services Aging-in-place technology Nutrition and supplements Recreation and games Communities
Should Universities Commercialize?
We seek to bridge the two cultures! Entrepreneurial Characteristics Strives for profit Takes risks to maximize profit Stresses protection of Intellectual Property Responds Quickly Academic Characteristics Strives to educate and serve Avoids risks to maintain mission Stresses free exchange of ideas Reaches decisions via lengthy committee meetings From “Technlogy commercialization through New Company Formation” Nanette Kalis
In the Public Interest: Nine Points to Consider in Licensing University Technology (AUTM)1. Universities should reserve the right to practice licensed inventions and to allow other non-profit and governmental organizations to do so.2. EXCLUSIVE LICENSES SHOULD BE STRUCTURED IN A MANNER THAT ENCOURAGES TECHNOLOGY DEVELOPMENT AND USE .3. Strive to minimize the licensing of “future improvements”4. Universities should anticipate and help to manage technology transfer related conflicts of interest.5. Ensure broad access to research tools6. Enforcement action should be carefully considered7. Be mindful of export regulations8. Be mindful of the implications of working with patent aggregators9. Consider including provisions that ADDRESS UNMET NEEDS, SUCH AS THOSE OF NEGLECTED PATIENT POPULATIONS OR GEOGRAPHIC AREAS, giving particular attention to improved therapeutics, diagnostics and agricultural technologies for the developing world
Two types socially responsible business models recognized in North Carolina
(L3C) Low Profit Limited Liability Company• The L3C brings the operating efficiencies of a for-profit company along with a reduced regulatory structure to achieve social benefits.• “Brings together foundations, trusts, endowment funds, pension funds, individuals, corporations, other for-profits and government entities into an organization designed to achieve social objectives while also operating according to for-profit metrics”*.• Examples of where L3C could be used. • Create affordable or elderly housing either in a new building or through the rehabilitation of an old one. • Act as an incubator for development of new drugs, alternative energy or a new business in an economically depressed area*http://americansforcommunitydevelopment.org/concept.php
Certified B Corporations are a new type of corporation which uses the power of business to solve social and environmental problems. B Corps are unlike traditional businesses because they: Meet comprehensive and transparent social and environmental performance standards; Meet higher legal accountability standards; Build business constituency for good businessDRAFT. DO NOT DISTRIBUTE
Bringing it all together for the benefit of society A need to help people as they grow old. A need to reduce to practice the knowledge generated at universities via commercialization. Knowledge economy needs to create jobs. New opportunities at UNCG via the JSNN, other departments, and increasing emphasis on entrepreneur activities. Changing culture in Universities encouraging outreach and commercialization. New socially responsible business models available
Thanks for your help Janice I. Wassel PhD, RFG Director, The UNCG Gerontology Program Sandra Crawford Leak, DrPH, MHA Visiting Assistant Professor UNCG Gerontology Program Ann Stringfield, M.S.L.S. Info/Communications Specialist UNCG Gerontology Program
Thanks for your time! Questions? Comments! Criticism! Suggestions!!!!!!