Your SlideShare is downloading. ×
Virginia Tech E-Club: John Geikler on Intellectual Property
Upcoming SlideShare
Loading in...5

Thanks for flagging this SlideShare!

Oops! An error has occurred.

Saving this for later? Get the SlideShare app to save on your phone or tablet. Read anywhere, anytime – even offline.
Text the download link to your phone
Standard text messaging rates apply

Virginia Tech E-Club: John Geikler on Intellectual Property


Published on

Published in: Education

1 Comment
  • Bonjour
    Mon nom est Mlle merci hassan j'ai vu votre profil aujourd'hui et je
    est devenu intéressé à vous, je tiens également à vous en savez plus
    et je veux que vous envoyez un e-mail à mon adresse email afin que je puisse vous donner ma photo
    votre nouvel ami.


    My name is Miss mercy hassan I saw your profile today and i
    became interested in you, I will also want to know you more
    and I want you to send an email to my mailbox so that I can give you my picture
    yours new friend.
    Are you sure you want to  Yes  No
    Your message goes here
  • Be the first to like this

No Downloads
Total Views
On Slideshare
From Embeds
Number of Embeds
Embeds 0
No embeds

Report content
Flagged as inappropriate Flag as inappropriate
Flag as inappropriate

Select your reason for flagging this presentation as inappropriate.

No notes for slide
  • IP management–some generic background re IP, indicate broader applications but focus on licensing of VT technology
  • Returned to my alma mater after 29 years – in between: Westinghouse – International licensing & tech transfer – defense, nuclear & industrial systems Imaging & Sensing (W spin-off) – licensing, strategic & new product development & M&A Strategic Alternatives (start-up) - Tech transfer & other consulting for semiconductor consortium funding $60 M/yr university research VNI -Germany & UK as Manager for HPC software firm RTI – commercialization & tech scouting for NASA, intel community, university & corporate clients
  • From weaker to stronger
  • Example: recipe for Coca Cola Good to protect what can’t be reverse engineered
  • Example: Coca Cola scripted name Often linked with branding
  • Example: Coca Cola Polar Bear ad
  • Types Utility – Example: Coca Cola Bottle Sorter Design – Example: Coca Cola Bottle Design Cost of a patent over its life is ~ $30-$50k per country Strong but not long – protect what can be reverse engineered
  • Questions: How do you decide when to patent vs. keep as trade secret? Why protect Coke recipe with a trade secret? Why trademarks and design patents on Coca Cola bottle?
  • Societal benefit may sound corny but is a key cornerstone to commercialization decisions – e.g. releasing software as open source IP rights can provide the incentive to commercialize that allows a product/service to come to market without protection, good ideas may languish and never get commercialized Bayh-Dole – universities can own the IP from Federal research
  • Based on research revenue, VTIP has comparable licensing revenue Based on # disclosures, VTIP has ½ the staff & ¼ patent budget of other universities VTIP licensing professionals have significant experience
  • Patentability/Protectability(Can We?) – Most university licensing is strongly tied to patents – not so much other IP also software copyright, but much weaker Commercial potential (Should We?) Answering these questions is key to VTIP decision on moving forward with a technology VTIP is intended to generate revenue greater than its costs
  • Quick summary of VTIP’s other responsibilities - along with managing IP protection, VTIP conducts market research including discussions with experts in the target “value chain” develops and implements marketing campaigns facilitate interested companies’ discussions with the inventor & evaluation of the technology negotiates license agreements manages the distribution of royalty income. Realistically: From time we receive invention disclosure until product sales that generate royalties between 5-10 years, if ever. Most university tech transfer has a single technology that generates over 50% of their revenue
  • Many other factors
  • Many other factors
  • Many ways to put value on a technology 25% of operating margin is relatively well established fair value for inventor Comparables deals are very strong A few principles help guide negotiations
  • Transcript

    • 1. IP 101 and Technology Licensing VT E-Club October 11, 2010 Virginia Tech Intellectual Properties, Inc.
    • 2. Overview
      • Background
      • IP types
      • VTIP Licensing Process
      • Example Technologies
      IP 101/Technology Licensing
    • 3. Geikler Background
      • 30 years experience
        • Westinghouse, NASA, intelligence community, industry, universities, research consortia
      • Joined VTIP in 2008
        • Manage portfolio of 200+ physical sciences technologies
      • IP management
        • Technology in- & out-licensing, product management, research roadmaps, scouting, mergers & acquisitions
      IP Management
    • 4. IP Types
      • Trade Secrets
      • Trademarks
      • Copyrights
      • Patents
      IP Management
    • 5. Trade Secrets
      • Formula, pattern, process, method or know-how that provides competitive advantage
      • Term: perpetual, as long as kept secret
      • No public disclosure
        • Can disclose under confidentiality
      • Cost: no registration but cost to maintain secret
      IP Types
    • 6. Trademarks
      • Non-functional word, logo, symbol or design that distinguishes a product
      • Protection from copying or confusingly similar
      • Term: perpetual if worked, policed, & defended
      • Registration (by jurisdiction) recommended
      • Quality implications
      • Cost: Inexpensive to register – but multiple countries and maintain, work & defend
      IP Types
    • 7. Copyrights
      • Protects works of authorship from copying
        • Expression, not idea
      • Arises at creation in a tangible medium
        • Registration recommended
      • Term: ~ author's lifespan plus 70 years
      • Need not fully divulge – e.g. software
      IP Types
    • 8. Patents
      • Protects idea by excluding others from making, using, selling
      • 20 Years from filing (14 for design)
      • Must provide enabling description
      • First to invent vs. file
      • Expensive to register & maintain
      IP Types
    • 9. Comparisons of IP Types
      • What is protected
      • Strength of protection
      • Term
      • Territory
      • Registration
      • Maintenance
      • Other costs
      • Enabling competition
      IP Types
    • 10. VTIP Mission
      • Technologies become products that benefit society
      • Additional benefits
        • Sponsored research
        • Faculty start-ups
        • Complementary researchers
      • VT and inventors reap financial benefits
          • Inventors - 50%
          • Department - 10%
    • 11. VTIP FY10
      • $ 3.3 M Licensing Income
      • 44 Licenses/Options
      • 148 Invention Disclosures
      • Patents
        • 96 provisionals
        • 65 worldwide applications
        • 37 issued
      • 4 Associates
    • 12. Patentability & Commercial Potential
      • Patentability
        • Can an invention be patented?
        • How strong a patent?
      • Commercial Potential
        • Is there a market?
        • Is there a commercial partner?
      VTIP Decision Criteria
    • 13. Licensing
      • Market
      • Negotiate
      • Administer
      VTIP Commercialization Process
    • 14. Commercial Potential
      • Market size
      • Industry structure/Value chain
      • Barriers
      • Competition
      • Partner Evaluation
      Commercial Assessment
    • 15. Market Research/Marketing
      • Identify value chain
      • Interview experts
      • Develop marketing strategy
      • Making Contact
      • Evaluation
    • 16. License Valuation
      • Industry norms
        •,42,RoyaltySource® Transaction Analysis
        • Income modeling
        • 25% Rule
      • Comparables
      • Establish ranges to support negotiating strategy
      • Principles
        • Partnering - shared risk & reward
        • Recognize risks and contributions on both sides
        • Know walk-away
    • 17. Example Technologies
      • VTIP Available Technologies
      • Energy/Nano - e-ZLM
        • http://
      • Software/Medical – Ultrasound Cardiac Diagnostic
        • http://
      VTIP Portfolio
    • 18. Questions?
      • John Geikler
      • [email_address]
      • (540) 443-9228
      IP 101