Patent Protection &          Technology Transfer                        By Todd L. Juneau                         Washingt...
What is a patent?   Grant of the right to prevent others from making,    using, selling, or importing the claimed inventi...
What is in a patent? Abstract Filing date Background How to make and use the invention Examples Claims              ...
Secrecy Confidentiality Agreement Determine amount to show and tell:    – First Meetings, only the abstract    – Due Dil...
Claims define the property                        5
What is claimable?   Compounds               DNA, RNA   Compositions            Proteins, Enzymes   Formulations     ...
Examples of Compounds   Amgen - EPO               Washington University                               Lens cell line   ...
Compounds …   Breast Cancer Genes      ‘492 patent claims                          – normal gene & mutated gene(s)   US...
Compositions, Formulations,         and Processes   Chakrabarty, bacteria      Bioinformatics    US 4,535,061and        ...
DiagnosticsCystic fibrosis gene patent US 5,776,677PsA Test for Prostate Cancer US 5,242,802Metastatin Pharmaceuticals, BP...
Surgical Devices Medical Needle U.S. Pat No. 6,001,084 Abdomino-Pelvic Lavage U.S. Pat. No.  5,336,171 Trans-cutaneous ...
Robotic Surgery   6,246,898    Method for carrying out a medical procedure using a thre   6,246,200    Manipulator posit...
Robotic Surgery …   6,223,100 Apparatus and method for performing    computer enhanced surgery with articulated    instru...
Claim define the Value   U.S. Patent No. 6,001,084 to Riek et al.    1. Medical needle    with a cannula tube whose dist...
Riek et al. …   and which is closed at its distal end by a    transparent, blunt protective surface that projects    in t...
Riek et al. …    there being inside the protective surface a dome-    shaped interior hollow cavity,   the lens of the o...
Technology Transfer   formal transferring of new discoveries and    innovations resulting from scientific research    con...
Tech Transfer Prior to 1980 - <250 patents per year 1999    – 3,914 new license agreements    – 417 new product introduc...
Bayh Dole Act, 1980   Royalties earned by academic institutions are    reinvested in the University   new opportunities ...
Technology Transfer   Drug Development    – $500 million/drug to develop    – 12-15 years from lab to approved drug in U....
Converting Information to            Advantage   Identifying the foundation    Securing IP rights.    technology.       ...
Raising Capital   Federal Grants                Incubator Facilities   Venture Capitalists,          Corporate Partner...
University Licensing   Name         R&D (millions) # of patents   # of start-ups   U of Washington     $528    34       ...
Product Stories                                                      •     NaturaTM Hearing Aid      8Mbps transmission ...
Big Winners   Michigan State University, $160 million, two    cancer-related patents (Blumenstyk 1999)   University of F...
Thank You            26
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Jhu erc patent

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Jhu erc patent

  1. 1. Patent Protection & Technology Transfer By Todd L. Juneau Washington, D.C.Engineering Research Center for Computer Integrated Surgical Systems and Technology Seminar of 18 October 2001 1
  2. 2. What is a patent? Grant of the right to prevent others from making, using, selling, or importing the claimed invention for 20 years from filing an application for patent A technology asset recognized by the financial community and useful for raising capital A two year legal odyssey for inventors A new boat for patent lawyers ($10K to $40K) A tool for corporations to define markets A tool for Universities to raise money 2
  3. 3. What is in a patent? Abstract Filing date Background How to make and use the invention Examples Claims 3
  4. 4. Secrecy Confidentiality Agreement Determine amount to show and tell: – First Meetings, only the abstract – Due Diligence Meetings, entire application Disclosure to public: – General Rule: Disclosure Kills – Exception: 1 year Grace period in U.S. – Exception: 6 mo. EPO, JPO research 4
  5. 5. Claims define the property 5
  6. 6. What is claimable? Compounds  DNA, RNA Compositions  Proteins, Enzymes Formulations  Genes, vaccines Processes  Industrial processes Methods of Use in  Plants Treatment  Animals Diagnostic Methods and Kits 6
  7. 7. Examples of Compounds Amgen - EPO  Washington University Lens cell line Lilly - hGH, Humulin  Onco Mouse Scios – bradykinin – Harvard to DuPont, DuPont to antagonist peptides PHS for noncommercial use – http://ott.od.nih.gov/textonly/onc Erasmus Univ., omous.htm transgenic goat for – U.S. Pat. Nos. 4,736,866, enzyme deficiency, 5,087,571 and 5,925,803 proteins in milk 7
  8. 8. Compounds … Breast Cancer Genes  ‘492 patent claims – normal gene & mutated gene(s) US 5,747,282 which in general covers BRCA1, – a specific claim to gene with 39 chromosome 17 specifically defined mutations – cloning and expression vectors, US 5,837,492 which transformed cells, and methods covers BRCA2, of producing the BRCA2 polypeptides, PCR primers chromosome 13 8
  9. 9. Compositions, Formulations, and Processes Chakrabarty, bacteria  Bioinformatics US 4,535,061and  Celera Discovery US 4,259,444 System(TM) Lactobacillus  Compugen Doxil® (liposomal doxorubicin HCl - Alza) Engerix-B® (r-Hep B vaccine - SKB) 9
  10. 10. DiagnosticsCystic fibrosis gene patent US 5,776,677PsA Test for Prostate Cancer US 5,242,802Metastatin Pharmaceuticals, BPH Assay for Precursor to Prostate Cancer 6,054,320 10
  11. 11. Surgical Devices Medical Needle U.S. Pat No. 6,001,084 Abdomino-Pelvic Lavage U.S. Pat. No. 5,336,171 Trans-cutaneous Analyte Monitoring, U.S. Pat. No. 5,632,310 Syringe with Retractable Needle, U.S. Pat. No. 5,843,034 11
  12. 12. Robotic Surgery 6,246,898 Method for carrying out a medical procedure using a thre 6,246,200 Manipulator positioning linkage for robotic surgery 6,231,585 Device for stabilizing a treatment site and method of use 6,231,526 System and method for augmentation of surgery 12
  13. 13. Robotic Surgery … 6,223,100 Apparatus and method for performing computer enhanced surgery with articulated instrument 6,206,903 Surgical tool with mechanical advantage 6,201,984 System and method for augmentation of endoscopic surgery 6,198,794 Apparatus and method for planning a stereotactic surgical procedure using coordinated fluoroscopy 13
  14. 14. Claim define the Value U.S. Patent No. 6,001,084 to Riek et al. 1. Medical needle with a cannula tube whose distal end is cut obliquely to a sharp tip, with a coaxially mounted tubular protective element in the cannula tube which can be moved axially from a forward position against a spring force into a rear position 14
  15. 15. Riek et al. … and which is closed at its distal end by a transparent, blunt protective surface that projects in the forward position distally beyond the tip and in the rear position is behind the tip, and an optical system in the protective element having a distal lens for observation of the protective surface from the inside, characterized by the fact that the protective surface is arched forward at its distal end, that the protective element is hollow up to the arched area of the protective surface 15
  16. 16. Riek et al. … there being inside the protective surface a dome- shaped interior hollow cavity, the lens of the optical system inside the protective element being at an axial distance from the protective surface, and in the distal, front position of the protective element, the tip of the cannula tube lies in an area in which the arched protective surface makes a transition into the cylindrical, external casing surface of the protective element. 16
  17. 17. Technology Transfer formal transferring of new discoveries and innovations resulting from scientific research conducted at universities to the commercial sector 1) the disclosure of innovations; 2) patenting the innovation concurrent with publication of scientific research; and 3) licensing the rights to innovations to industry for commercial development 17
  18. 18. Tech Transfer Prior to 1980 - <250 patents per year 1999 – 3,914 new license agreements – 417 new product introductions – 18,617 active license agreements – $35 billion in sales of licensed items 18
  19. 19. Bayh Dole Act, 1980 Royalties earned by academic institutions are reinvested in the University new opportunities for graduate students, buy research equipment, or fund new research pay for a portion of the legal fees associated with patenting and licensing as well as technology management staff portion of the revenues is shared with the university inventor 19
  20. 20. Technology Transfer Drug Development – $500 million/drug to develop – 12-15 years from lab to approved drug in U.S – Drug Development failure rate is high (1 in 5-10,000) Medical Device, Diagnostic, Kit Development – Generally less expensive to develop – Faster to approval 20
  21. 21. Converting Information to Advantage Identifying the foundation  Securing IP rights. technology. – Domestic and international – Client interviews.  Converting rights to riches. Surveying the – Licensing, Enforcement of terrain/competitors. Market – Competitive monitoring – IPR searches Developing a strategy. – Identifying business goals 21
  22. 22. Raising Capital Federal Grants  Incubator Facilities Venture Capitalists,  Corporate Partnering – Usually require animal  Law Firm Funding data  Personal Checkbook Foundation Grants Friends and Family 22
  23. 23. University Licensing Name R&D (millions) # of patents # of start-ups U of Washington $528 34 25 MIT $713 134 17 Stanford $391 64 15 Univ of CA. System $1,580 206 13 Penn.State $353 19 9 Cal. Tech. $153 40 9 Rutgers $154 25 7 Univ of Minnesota $247 66 6 23
  24. 24. Product Stories  • NaturaTM Hearing Aid 8Mbps transmission in copper phone lines • NiAl Memory Material Cohn Cardiac Stabilizer • OXSILAN®: Non-Toxic Corrosion Prevention CyberMark Smart Card® • Panretin® Topical Treatment Fast ForWord® Training Program • Periostat® • Permeable Preactive Barrier FibreKor® Dental Material Wall Technologies Google Internet Search Engine • Pink Beauty Potentilla8. Green Steel • Quad 7TM Weed Control Lycos® Internet Search Engine • StormVisionTM Software10. MG98 Cancer Therapeutic • Taxol® Cancer Drug 24
  25. 25. Big Winners Michigan State University, $160 million, two cancer-related patents (Blumenstyk 1999) University of Florida $37 million, Gatorade Iowa State University $27 million, fax algorithm Stanford University, $143 million, recombinant DNA gene-splicing patent, Odza 1996 25
  26. 26. Thank You 26

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