Technology Transfer: Technology Transfer Wyoming Research Products Center Tony Nevshemal, Kelly Lynn Haigler Cornish, Davona Douglass, Peter Timbers


History: History UW and the WBC recognized the need to increase its transfer of Wyoming-generated technology into the marketplace to foster economic development The Research Products Center (RPC) was launched in October 1999 RPC jointly funded by UW and WBC RPC serves inventors statewide


RPC – What We Do: RPC – What We Do Work with Wyoming entrepreneurs and inventors to identify, protect and commercialize intellectual property. i.e. Facilitate technology transfer


Technology Transfer Process: Technology Transfer Process Research Intellectual Property Protection License Evaluation Disclosure Marketing Negotiation


Slide5: Invention Documentation The Research Notebook A record of ideas, experiments, and data A bound book with consecutively numbered pages Entries must be made in ink and in chronological order – rules apply to blank lines, results taped in book, etc. A complete notebook entry indicates what was done, when, who did it, and who knew about it. Countersigned and dated by disinterested, competent colleague Consider notary


What Can An Invention Be?: What Can An Invention Be? Process, machine, article of manufacture, or compositions of matters, or improvement thereof. "Anything Under the Sun that is Made by Man" (U.S. Supreme Court, 1980)


Technology Transfer Process: Technology Transfer Process Research Intellectual Property Protection License Evaluation Disclosure Marketing Negotiation


Considerations Regarding Disclosure: Considerations Regarding Disclosure Disclosure is OK if done correctly Concerns – protect patentability U.S. – allows one year grace period Other countries – require absolute novelty (patent office must be first to know)


Considerations Regarding Disclosure: Considerations Regarding Disclosure Proper disclosures demonstrate that you are protecting the confidentiality of your idea Confidentiality agreement


Technology Transfer Process: Technology Transfer Process Research Intellectual Property Protection License Evaluation Disclosure Marketing Negotiation


Evaluation - Is Invention Patentable?: Evaluation - Is Invention Patentable? Statutory – what type of invention Utility - is the invention useful; Enabled - is the invention disclosed and described by the inventor in such a way as to enable others to make and use it. Novel - is there public prior art (inventions) which preceded the invention in identical form; Nonobvious - does the invention represent a nontrivial extension of what was known;


Evaluation - Is Invention Patentable?: Evaluation - Is Invention Patentable? RPC’s evaluation – biggest concern is novelty/nonobviousness A question of what is in the prior art Survey USPTO patent database Review Internet Report results to inventor


The 7-Step Strategy: The 7-Step Strategy 1. Index to the U.S. Patent Classification (USPTO Web) Begin with this alphabetical subject index to the Manual of Classification. Look for common terms describing the invention and its function, effect, end-product, structure, and use. Manual of Classification Locate class and subclass numbers in the Manual. 3. Classification Definitions Read the definitions to establish the scope of class(es) and subclass(es) relevant to the search. 4. Browse Patent Titles and Abstracts Check if you are on the right path; retrieve and browse through titles of patents. 5. Retrieve Subclass Listing Once you have identified the relevant classes and subclasses, obtain a list of all patent numbers and all published applications for every class and subclass to be searched. 6. Official Gazette - Patent Section Go to the Gazette and look for exemplary claim(s) and a representative drawing for all patents on the list(s) to eliminate patents unrelated to the invention. 7. Complete Patent Document Search the complete text and drawing(s) of closely related patents to determine how different they are from the invention. (Years of coverage vary with format).


Professional Search Firm: Professional Search Firm


Slide24: We Can Help You Review Your Inventions


Mere advisement!: Mere advisement! “Please keep in mind that the results of our services serve as a mere advisement and are by no means conclusive on the issue of whether you should pursue protection for your invention or not. Only an attorney can give you a formal patentability opinion. We can provide contact information for patent attorneys, if you desire.”


Technology Transfer Process: Technology Transfer Process Research Intellectual Property Protection License Evaluation Disclosure Marketing Negotiation


Intellectual Property Protection : Intellectual Property Protection Patents (utility, design or plant) The right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States for 20 years. New and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.


Intellectual Property Protection : Per country patent cost average: $12,000 - $18,000 (more with translation fees) Intellectual Property Protection


Intellectual Property Protection : Copyrights The exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. “Original works of authorship” Literary works; musical works; dramatic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works. Intellectual Property Protection


Intellectual Property Protection : Trademark/Service Mark Word, symbol, design, or slogan, that identifies and distinguishes the source of the goods or services. Mark must be used in commerce. Can last indefinitely Symbols: TM, SM, or ® indicate ownership of the mark. Intellectual Property Protection


Technology Transfer Process: Technology Transfer Process Research Intellectual Property Protection License Evaluation Disclosure Marketing Negotiation


Technology Transfer Process: Technology Transfer Process Research Intellectual Property Protection License Evaluation Disclosure Marketing Negotiation


Technology Transfer Process: Technology Transfer Process Research Intellectual Property Protection License Evaluation Disclosure Marketing Negotiation


Technology and RPC - Making A Difference: Technology and RPC - Making A Difference


Slide36: Wyoming Stats


How can you work with us?: How can you work with us? Go to our website www.uwyo.edu/rpc Information there about: Recent news/success stories Confidentiality Agreement Invention Disclosure Form How to keep an Inventor’s Notebook Descriptions of intellectual property And more!


Thank You: Thank You Wyoming Research Products Center Department 3672 1000 E. University Ave. Laramie, WY 82071 www.uwyo.edu/rpc Tony Nevshemal – 307-766-2509 nevshema@uwyo.edu Kelly Lynn Haigler Cornish, Davona Douglass, and Peter Timbers