Slide 1 - Stevens Institute of Technology

					The OAE presents:


 IP Awareness Seminar
       Mechanical Engineering
        Senior Design Teams
           April 1, 2010


    Office of Academic Entrepreneurship
              Meet the OAE
• Dr. Christos Christodoulatos – Associate Provost for
  Academic Entrepreneurship
Staff / Support /Team
• Malcolm Kahn – Vice President for Enterprise Development
  and Licensing
• Sandra Furnbach – Coordinator of Academic
  Entrepreneurship Initiatives
• Dr. Thomas Lechler – Director of Academic Entrepreneurship
  Programs
• David Peacock – Director of Intellectual Property
  Management
• Ralph Selitto – Lead Patent Counsel, Greenberg Traurig, LLP



        Office of Academic Entrepreneurship
        OAE – Vision




Office of Academic Entrepreneurship
         Today’s Lesson




Office of Academic Entrepreneurship
       IP In The News




Office of Academic Entrepreneurship
 What is Intellectual
 Property?
       ♦   Patents
            ♦   Invention – any patentable device, product or
                process


       ♦   Copyrights
       ♦   Trademarks
       ♦   Trade Secrets


Office of Academic Entrepreneurship
Office of Academic Entrepreneurship
Requirements for Patentability

 Your Test for Each Requirement

  ♦ Useful       -   Can it be used? (It does not
                     have to be better)

  ♦ New      -       Was it ever done before in
                     its entirety? (Search/Search/Search)

  ♦ Non-obvious - Is it an obvious variation of
                   prior art?

   Office of Academic Entrepreneurship
     Patent Value Test

• Does it pass the “So What Test”?
• Must develop a Value Proposition
• Clearly articulating
     - Value e.g. reduce cost
     - Benefit e.g. faster, more efficient


Office of Academic Entrepreneurship
Relationship of IP Processes




              Pre-IP Process
                                           Great IP
                                           lives here


     Commercial          IP Process
       ization




     Office of Academic Entrepreneurship
IP/Patent Process at Stevens




     Office of Academic Entrepreneurship
IP/Patent Process at Stevens




     Office of Academic Entrepreneurship
IP/Patent Process at Stevens




     Office of Academic Entrepreneurship
          What Does a US Patent Cost?
Basic Fees                              Avg. Approx. Cost
   –  Filing/Basic National Fee               $1000
   –  Claims                                     500
   –  Examination                                500
   –  Issue Fee                                1500
   –  Appeal Fees/Office Actions               4000
   –  Maintenance
                             3 Year            1000
                             7 Year            2500
                             11 year           4000
Prosecution (Patent Attorney)                  10000
Total
                                              $25000

        Office of Academic Entrepreneurship
Time Requirements for filing a patent:

 ♦   Within 1 year of publication
 ♦   Within 1 year of public use
 ♦   Within 1 year from an “offer to sell”
      IF “ready for patenting;” i.e.,
        1. Reduced to practice , OR
        2. Described sufficiently to allow
           a person skilled in the art to
           practice the invention

     Office of Academic Entrepreneurship
             SIT- Patent Policy/Process
                Student Inventions
• Inventions made by student/s belongs to the student/s
      Exceptions:
        - Employed by Stevens
        - Research Project

• Office of Academic Research (OAE) will assist/ support
  student in seeking patent protection
     - Documentation & Patent Attorney
     - Preparation Invention Disclosure Form

• Student may assign invention to Stevens
      - Stevens Patent Committee – Accept / Reject
      - Stevens pays for patent prosecution
      - Students receive 33 % royalties

        Office of Academic Entrepreneurship
 OAE – Recognition / $ Incentives

• Recognition Awards
   – Patent Issuance
      • 1st Patent Issuance Plaque
      • 2nd Companion Board & Plates / subsequent
   – Annual Recognition Ceremony & “Inventors Wall of
     Fame”
• Inventor $ Incentive – (New 1/1/2009)
   – Provisional Application   $250/Inventor Team max $1000
   – Utility Application       $500/Inventor Team max $2000
   – Issue                     $1000/Inventor Team max $4000




        Office of Academic Entrepreneurship
              A Lexicon For
     University Development…
• An idea is not a product
• A university prototype is not a product
• Testing under ideal conditions doesn’t prove that
  the technology will work in the real-world
• Understanding customer needs doesn’t mean
  reading research papers
• Users want solutions, not technology
• Commercialization is not a bad word
• The true value of university technology is only
  realized when these issues are addressed

      Office of Academic Entrepreneurship             18
Stevens Invention Disclosure Form
http://www.stevens.edu/entrepreneurship/guide/forms.html

Definition – a written report describing an invention in sufficient detail to
permit the patentability and commercial prospects of the invention to be
evaluated

   •   Inventor Name(s)                     • Proof of Concept –
                                              experimental verification
   •   Date
                                            • Prototypes/Samples
   •   Title of Invention
                                            • Publications
   •   General Description of
       Invention                            • References
   •   Utility – useful purpose             • Sponsorship
   •   Novelty – difference from            • Possible means of
       known uses                             commercialization – markets &
                                              applications
   •   Advantages
                                            • Potential partners / licensees
   •   Limitations
                                            • Signatures

            Office of Academic Entrepreneurship
            Patent Search
• Google Patent Search
  – http://www.google.com/patents
• United States Patent & Trademark
  Office - USPTO
  – http://patft.uspto.gov/
• Literature and Patent Search
  – http://www.scopus.com/home.url


     Office of Academic Entrepreneurship
               Stevens
Total Disclosures to Patent Committee
    45
                                     41                        40
    40                                                                        39
    35
    30                                         *
                                          28
                                                                         *
    25                                                              23
                                                                                        *
    20                                             18                              19
            16          15
    15
                                                        11 *
    10
    5
    0
            FY05       FY06         FY07           FY08        FY09           FY10
                                                                             (9Mos)

         * Approved for Filing – FY07 68%, FY08 61%, FY09 58%, FY10 45% - AUTM Trend ~60%


    Office of Academic Entrepreneurship
              Stevens
      Patent Applications Filed

25
                           21
20                                       20
                                                19
             16
15
                                  13

10    10

                     6
5

0
     FY04   FY05   FY06   FY07   FY08   FY09    FY10
                                               9-Mos
 Office of Academic Entrepreneurship
                     Stevens
                  Issued Patents
5                                         5


4           4              4


3                    3             3


2     2                                         2


1


0
    FY04   FY05    FY06   FY07   FY08   FY09   FY10
    Office of Academic Entrepreneurship
                                                    IP PORTFOLIO
                                                REFLECTS Growth AREAS
    36                                                              33
    32                                                                                                    28
    28
    24                                                                                                                       21
    20
    16                                                                                 12
                                9                  7                                                                                             7
    12
     8
             6
     4
     0
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                su                Na              .(R                    Env                              Ma                       Co
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     Info                               Bi o
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Patent Statistics: Total IP 123 Items (61 Issued / 62 Pending)
Licensed – ( 33%)



                     Office of Academic Entrepreneurship
                                              Top 10 Companies
                                          2008 U.S. Patent Recipients
                                   528
                        U.S. Government
                        (ARMY/NAVY/NASA/H&HS)


          1             International Business Machines Corp                                                   4,169
          2             Matsushita Electric Industrial Co. Ltd.                                     3,502
          3             Canon Kabushiki Kaisha                              2,197
          4             Hewlett-Packard Dev. Corp. LP                      2,153
          Ranking
Ranking




          5             Micron Technology, Inc.                           2,043

          6             Samsung Electronics Co. Ltd.              1,772

          7             Intel Corporation                         1,760

          8             Hitachi, Ltd.                       1,575

          9             Toshiba Corporation               1,475

          10            Sony Corporation                  1,461

                    0       500         1,000     1,500       2,000         2,500   3,000   3,500      4,000   4,500

                                                          Number of Patents
                          Office of Academic Entrepreneurship
                           Top 10 Universities
                       2008 - U.S. Patent Recipients

  11
 1
  10         University of California, The Regents
 2
     9        Massachusetts Institute of Technology
 3
     8        Stanford University
 4
     7        California Institute of Technology
 5
     6         Wisconsin Alumni Research Foundation
 6
     5
               University of Texas
 7
               Institut Francais du Petrole
 84
               Johns Hopkins University
 93
             University of Michigan
10 2
             Columbia/Cornell/Florida
11 1

         0              50               100          150   200   250
                     Office of Academic Entrepreneurship
Oliver Wendell Holmes Jr.

 “ I wouldn’t give a fig for the
 simplicity on this side of complexity,
 but I would give my right arm for the
 simplicity on the other side”




 Office of Academic Entrepreneurship
Question/Answer Session with Speakers




     Office of Academic Entrepreneurship

				
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posted:9/24/2011
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