Equity Transfer and Assignment Template - PowerPoint

							 Technology Transfer: Financial &
Career Opportunities for Researchers

          Phuong Kim Pham, Ph.D.
       Vietnam Education Foundation
     2006 Annual Conference of Fellows
          December 27 – 30, 2006
       University of Texas at Houston
Evolution of The Man
            IP career tracks
   Patents: Companies, law firms,
    universities, profit & non-profit
    organizations, … as patent attorneys or
    patent agents, experts, …
   Technology Transfer: Companies, law
    firms, universities, profit & non-profit
    organizations, … as patent attorneys or
    patent agents, coordinators, …
            Overview of the NIH
                         http://www.nih.gov/




                                  NIH Office of Director

                Institutes (20)
                                               NIH OTT         Centers (7)
                  and NLMI


Institute OTT             Contract to Inst. OTT            Contract to Inst. OTT
       Technology Transfer at
               NIH
• Office of Technology Transfer (Central)
   • Invention Review, Patenting, Licensing,
     Monitoring, Administration, Policy
• Offices in Institutes and Centers
   • Technology Development Coordinators

   •   Invention reporting, Agreements
     (MTAs, CDAs, CTAs, CRADAs, …)
• License Royalties flow back to ICs where the
  inventions were made, inventors are paid a share
It’s only human nature…




      We love to talk about our work !
Three Essential Elements of
          Patent

   Novelty
     

Non-Obvious

   Useful
    Why can’t we talk/publish?
   “Universal” Bar to Novelty
       Publication/talk – anywhere in the world
   Limited 6 month “grace period” in other
    jurisdictions: Canada, Australia, New
    Zealand, Taiwan, Japan
   1-year Grace Period: US
   Publication may destroy Foreign rights
          Novelty
   When Communications
    Between Collaborators
    can Become Prior Art,
    and What's Being Done
    About It?
Congress to the Rescue!
H.R. 2391 Cooperative Research and
Technology Enhancement (CREATE)
       Act passed on 3/10/04
   Defines “owned by the same person” in 103(c) to
    include parties to a joint research agreement,
    subject to:
      (1) the joint research agreement must have
       been in effect before the invention was made;
      (2) the invention was made as a result of
       activities within the scope of the agreement;
       and
      (3) the patent application discloses or is
       amended to disclose the names of the parties
       to the agreement.
    Joint Research Agreement
   a written contract, grant or
    cooperative agreement
   between 2 or more persons or
    entities;
   for experimental, developmental, or
    research work;
    in the field of the claimed invention.
..…to give nice nicknames
       Confidential Disclosure
         Agreement (CDA)

   Providing for the free exchange of
    confidential research information with an
    outside party while ensuring control over
    public disclosure
      The detailed information of the
       Disclosing Party and the Receiving Party
      What is disclosed & protected & for how
       long
      Purpose of the disclosure of the
       information
             Material Transfer
            Agreements (MTA)

Exchange research materials without losing your
  IP right:
 Who is the provider/recipient?

 What is transferred?

 Purpose of the transfer

 Disclaimer

 IP right/Disclosure

 Time limitation/Publication
               Cooperative Research and
               Development Agreements
                      (CRADA)
   CRADA is an agreement between one or more NIH
    laboratories and one or more non-Federal parties under
    which the NIH laboratory provides personnel, services,
    facilities, equipment, or other resources with or without
    reimbursement (but not funds to non-Federal parties)
   the non-Federal parties may provide funds, personnel,
    services, facilities, equipment, or other resources toward the
    conduct of specified research or development efforts which
    are consistent with the mission of the laboratory
   provide the CRADA partner with an option to license
    exclusively inventions made by the NIH investigators under
    the CRADA Research Plan.
    Employee Invention Report
              (EIR)


   Employees (including guest researchers
    and special volunteers) have a legal
    obligation to report inventions on EIRs
   Contact the Technology Transfer Office
         Who benefits what?
   Manufacture/Produce/Sell

   License to companies to
    manufacture/produce/sell
                   Licensing
   Exclusive
       Preliminary determination memo
       60 day Fed. Reg. announcement
       Final determination memo
       Review commercial development plan with
        TT and inventor
       Briefing after final if requested
   Nonexclusive
                           NIH portfolio
   2500 patents pending and issued
   More than 1300 active licenses
   Cooperative Research and Development Agreements (CRADAs)
     •   1612 CRADAs executed FY88-05
     •   350 Companies
     •   240 CRADAs still active
   About 200 products (including research tools) on the market, 25 FDA approved

   FY05 $98M royalties
   Since FY1995, 2577 licenses executed and
    $578M collected in royalties
       Patent my invention: must I?

   Yes, it is a part of your job
   Royalty to YOU (inventor) & your IC
   The public benefit when new
    medicine/technology is developed:
    health, quality of life, financial, …
   Development usually requires patent
    protection to enable companies to
    take the necessary financial risks & reap
    the rewards
        What do you (personally)
         receive as an inventor?
   As an employee at NIH
       15-100% with the $150,000 cap annually
   As an employee of a Company
       Kudos
       $1.00 (?) for assignment of invention to company
   As an employee of a University
       30-50% of aggregate licensing revenues (royalties
        and equity)
   Increase lab support
       Impact of Research
         Collaborations
   Major increase in number of
    inter-sector collaborations since
    early 1980s. (NSF Report, 1998)
   Product Sales Exceed $42 billion
    annually
   Licensing Revenue Exceeds $1.2
    billion annually
Lab Notebooks are Important
   Proof of “first to invent”
       Written records enable applicant to swear
        behind a reference to prove earlier invention
   Patent Interference
       Two or more parties file for the same invention
       Must provide evidence of
            Date of the conception of invention
            and Proof of diligence in its reduction to practice
       Best evidence is laboratory notebooks
    What does this mean for the
           researcher?
   Keep detailed log books of
       What was used – all reagents, chemicals, etc.
       Where was it done? Where the cells were cultured.
       Signatures and dates – who and when.
       If appropriate – identify the location.
       Storage system and temperature monitoring.
       Split location for critical items or cell lines.
   Confidentiality
    Technology Transfer Career
     Opportunities at NIH OTT
   Fellowship at NIH OTT
       Ph.D., M.D., D.D.S., D.O., Pharm.D., in
        biomedical, behavioral, or related science
       Postdoctoral with up to 5 years of res. exp.
       U.S. citizens or permanent residents
   Internship Opportunities
       B.S. & pursue advanced studies in law, business
        or life science, unpaid, 15-25 hrs/wk.
   http://ott.od.nih.gov/career.html
    Technology Transfer Career
       Opportunities at NCI
   Metrics Track:
       Degree or related exp. in business & economics
        required with degree or exp. in the life sciences
        desired.
   Marketing Track:
       Advanced degree in the life sciences required.
        Additional degrees or related exp. in marketing
        desired
   Degree no more than 8 years ago.
   http://ttb.nci.nih.gov/employment/
ADDITIONAL INFORMATION
  • FREE NIH ON Line Technology Transfer
    Training http://tttraining.od.nih.gov/
  • NIH Office of Technology Transfer
   http://ott.od.nih.gov
  • US Patent and Trademark Office
   http://www.uspto.gov/main/patents.htm
  • European Patent Office
   http://ep.espacenet.com/search97cgi/s97_cgi.e
   xe?Action=FormGen&Template=ep/EN/home.ht
   s
  Future contact
Phuong Kim Pham, Ph.D.
    301-594-4398 (P)
    301-443-1328 (F)
     pp64n@nih.gov
  kimpham9@cs.com