The Role of the NYS Science & Technology Law Center in

Technology Commercialization

Center for Engineered Polymeric MaterialsApril 21, 2006

Ted Hagelin, Board of Advisors Professor of Law

Director, NYS Science & Technology Law Center

Syracuse University College of Law

Introduction• NYS STLC Technology Commercialization

Support Activities– Conferences– Meetings with CATS– NYSTAR Reports– NYS STLC Resources

• Technology Commercialization Process• Technology Commercialization Research

Projects

Conferences – Lab to Market Series• “Building Sound Patent Practices”

– Buffalo – May 16-17, 2005

• “The Business Side of Patents”– CUNY Graduate Center – October 27-28, 2005

• “University-Industry Sponsored Research”– Welch Allyn Lodge – Skaneateles, NY – June 16, 2006– Speakers

• Carl Schramm – President, Kauffman Foundation• Mark Crowell – Vice Chancellor, Univ. North Carolina, Past AUTM President• Al Johnson – Senior Analyst, University Contracts, Corning, Inc.

– Register – LabtoMarket@syr.edu

Meetings with CATS• Topic, Format, Venue, Participants

– Determined by CAT

• Possible Topics– Intellectual Property; Business Development– Technology Commercialization Strategy

• Possible Formats– Presentation; Seminar; Roundtable Discussion

• Possible Venues– On-Site at CAT; Other On-Site; Teleconference

NYSTAR Reports• Two Reports Each Year• 2004-2005

– Experimental Use Exemption to Patent Infringement

– Patent Reform Legislation

• 2005-2006 (available 9/1/06)– Survey of University Sponsored Research

Policies– Survey of Industry Sponsored Research Policies

NYS STLC Resources• NYS STLC Web Page

– Many IP/Technology Commercialization Topics• http://nys-stlc.syr.edu

• Innovation E-Review (Monthly Newsletter)• http://nys-stlc.syr.edu/publications

• Technology Commercialization Internet Research Guide (80+ Hyperlinked Sites)

• http://technologycommercialization.syr.edu

Technology Commercialization Process

• Invention Different from Innovation– Invention

• Reduction to Practice• Patent Prosecution

– Innovation• Transforming Invention Into Commercially

Viable Product or Process• Set of Engineering, Business and Legal

Decisions that Guide Technology Development

Technology Commercialization Process

Fundamental Science

Basic Research

Applied Research *Conception *

Reduction to Practice *Alpha/Beta Testing *

Commercial Scale-Up *Manufacturing *

Sales/Distribution *Support *

Risk

High

Low

Investment

Low ($10)

High ($100)

*Decision Points

Engineers

Managers

Lawyers

Technology Commercialization Research Projects

• Technology Evaluation Projects

• Intellectual Property Policy Projects

Technology Evaluation Projects

• Background– Syracuse University Technology Commercialization

Research Center• Established in 1987• Over 100 Technology Evaluation Projects

– Large, Medium, Small, Start-Up Companies– Universities, Federal Laboratories, TDOs

• Some Past Clients– Eastman Kodak, Welch Allyn, OrthoSystems, SU, Cornell, RPI,

UR, RIT, Naval Research Laboratory, Lawrence Livermore National Laboratory

Technology Evaluation Projects - Continued

• Approx. 20 Students Enrolled in Research Center Each Year– Law, Business, Engineering, Public Policy,

Communications• 10 Teaching Assistants• 4 Faculty• Typical Research Team

– 5 Students– 2 Teaching Assistants– 2 Faculty (Primary and Secondary Supervisors)

Technology Evaluation Projects• Technology Research and Analysis

– Substitute Products in Market– Research and Development in Field– Patents Relevant to Technology

• Market Research and Analysis– Market Size, Trends, Structure– Competitor Firms, Potential Partners– Potential Licensees and Licensors

• Legal Research and Analysis– Patent Law Issues Related to Technology– Administrative Regulations

• Food and Drug Administration, Environmental Protection Agency, Export Control Requirements

• Competitive Advantage Valuation of Technology

Technology Evaluation Projects - Continued

• Client Use of Research and Analysis– Decisions Regarding

• Future Direction of Technology Development• Strategic Alliances• Alternative Market Applications• Market Niches• Means to Overcome Legal and Regulatory Hurdles• Short-term and Long-term Commercialization Strategies

– Attracting Private Investment• Pre-seed, Angel and Venture Capital

• Win-Win Result– Client Obtains Relevant and Useful Information– Students Obtain Unique Learning Experience

Technology Evaluation Projects - Continued

• Sample Research Projects– New Matrix for Healing Chronic Wounds

Technology Evaluation Projects - Continued

• Sample Research Projects– New Matrix for Healing Chronic Wounds– Photonic Biopsy Pill

Technology Evaluation Projects - Continued

• Sample Research Projects– New Matrix for Healing Chronic Wounds– Photonic Biopsy Pill– Continuous Glucose Monitoring Device

Technology Evaluation Projects - Continued

• Sample Research Projects– New Matrix for Healing Chronic Wounds– Photonic Biopsy Pill– Continuous Glucose Monitoring Device– Natural Language Processing of Medical

Records– Ultrasound Osteoporosis Diagnosis

Device

Technology Evaluation Projects - Continued

• Sample Research Projects– New Matrix for Healing Chronic Wounds– Photonic Biopsy Pill– Continuous Glucose Monitoring Device– Natural Language Processing of Medical Records– Ultrasound Osteoporosis Diagnosis Device– Universal Wireless Driver Interface– Gold Nanoparticle DNA Assay

DNA Detection Technology Overview

Target Gene (~300bp)

Fluorescent Probe(~25 bases)

+

Melting; ssDNA

(-) Negative; no targetgene in sample

(+) Positive; target genepresent in sample

+

Gold nanoparticlePositive (+) ID = Sample IS fluorescent

Negative (-) ID = Sample IS NOT fluorescent

Excess probe quenched

Intellectual Property Policy Projects• Research and Analysis of IP Topics Relevant to

Technology Commercialization • Examples

– Managing IP in Complex Research Environments• IP Identification, Capture, Exploitation

– University-Industry Sponsored Research• Trends, New Initiatives, Points of Disagreement, Points of

Agreement

• Uses– Implement IP Management Policies– Reduce Sponsored Research Transaction Costs– Facilitate University-Industry Collaboration

Externally Initiated Projects Involving Third Party Technology in which CIMS and RIT Faculty, Staff and Students participate

Flow Chart “C”—Initial Project Phase

Step 1: Inventory IP an Knowledge/Technology Inputs

List all CIMS, RIT, or third party IP inputs and any non-protected technology to be utilized in this project

Step 2: Identify Ancillary IP Opportunities

Preliminarily attempt to identify ancillary IP arising during the course of this project

(Patent, copyright, business method, etc.)

Step 3: Review IP Recordation/Documentation Policy

Remind CIMS’ and RIT Personnel to adhere to established IP policies

-Lab notebook policy (update/witness)

-Technology disclosure

Step 4: Establish Monitoring Protocols

Determine project specific methods for monitoring IP documentation and reporting

-lab notebook audits (weekly/bi-weekly/per “phase”)

Step 5: Identify Party Responsible for Monitoring IP Documentation and Reporting Protocol

Step 6: Identify Likely Principle Inventors or Authors

Of all project participants, who are expected to be primarily responsible for inventing or creating

Proceed with next planned phase of the project

Step 7: Establish any parties other than CIMS/RIT who will have responsibility for securing IP protection

-Private sector

-TLO

-Federal (per Bayh-Dole, presumptively TLO)

Final Research Reports

• Approx. 150 Pages– 1000+ Footnotes

• Approx. 8 Drafts Before Final Report

• Approx. 2000-3000 Hours of Research, Analysis, Writing and Editing

Research Projects

• Four Projects Each Semester• Beginning to Plan Research Projects

for Fall 2006 Semester• If you are interested in discussing a

research project, please let me know• “thagelin@law.syr.edu

THANK YOU

QUESTIONS?