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F.I.R.E. Series – December 8, 2011

The Offices of Technology Transfer, in cooperation with the Center for Entrepreneurship proudly present F.I.R.E. in December:

“The Basics of the Technology Transfer Process”

This month we will take a look at the Technology Transfer process, from the moment of invention through technology commercialization. Our presenter is Marjorie Hunter, Esq., Associate Vice-President of Technology Transfer at the University of Rochester Medical Center.

Where: the Class of ’62 Auditorium (G-9425 & 1-9425)

When: Thursday, 8 December 2011, 9:00 – 10:00 AM

Refreshments will be served. Please contact David Englert, or call 585.784.8856 for more information or to register for this event.

Although the F.I.R.E. Series continues to be free and open to the public, a small fee for parking may apply (between $4 and $6). Registration would be appreciated by noon Tuesday, 6 December2011.

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Happy Thanksgiving!!

November is the month of Thanksgiving – that amazing holiday that asks us all to slow down and appreciate all of the blessings in our lives. This year, I have joined with dozens of my friends on Facebook to share one thing every day for which I’m thankful. This has gotten me thinking about some things in our daily lives that have become so commonplace that we often take them for granted. However, they did not always exist. Somebody discovered, invented, or created them; and in their early days they were magical.

#8  Coffee – I’m not addicted. I could stop any time I want. However, I do enjoy a daily cup, or two, of coffee. Commonly believed to have been discovered in Ethiopia, perhaps as early as the Tenth Century, the first record of coffee appears in 1671. By that time, however, the beverage had clearly been around for a few hundred years, at least. Coffee drinking spread to Arabia and Persia in the Seventeenth Century, and from there to India and Europe, and eventually the rest of the world. Often used in religious ceremonies, secular coffee drinking was banned in Ethiopia until the Nineteenth Century.[i]

#7 Indoor Plumbing – The idea of bringing potable water into the home and taking waste water away from the home took hold in America and Europe in the last quarter of the Nineteenth Century. Before that, people had to collect water from nearby springs, streams, and wells and dispose of waste however they could. This made city living quite . . . pungent, to say the least. The thought of bundling up for a nighttime winter trek to the outhouse is not appealing on any level, either. As surprising as it may sound, the concept of indoor plumbing was well-known in the Ancient World. Aqueducts and lead pipes were cleverly used both to bring water into and out of Roman homes. There is evidence that similar pipes were employed in Egypt and Mesopotamia, as early as 3000 BC![ii]

#6 Antibiotics – Just coming off a bad cold that had settled into sinus and ear infections, I am particularly thankful for the discovery of antibiotics. Before the role of microbes in disease was fully understood, countless people lost their lives to infections. The development of the microscope (probably deserving of an entry in its own right) made it possible for the pioneers of antibiotics, such as Louis Pasteur, Alexander Fleming, Robert Koch, and Paul Ehrlich to isolate and develop medical interventions to combat harmful bacteria.[iii]

#5 Vaccines – First developed a century before antibiotics, the first successful vaccine is believed to have been Edward Jenner’s work to provide resistance to small pox – a disease that had afflicted humanity for centuries. Pasteur used Jenner’s techniques to develop a vaccine against rabies, and Jonas Salk developed a vaccine that has nearly eradicated polio. Today, vaccines are offered to prevent mumps, measles, whooping-cough, diphtheria, tetanus, chicken pox, typhoid, tuberculosis, cholera, influenza, pneumococcal meningitis, HPV, and many other diseases that have killed untold millions throughout the ages.[iv]

#4 The Printed Page – Hundreds of years ago, information was mostly passed by word of mouth. Literacy was not widespread. Records were chiseled in stone, or painstakingly scribed (and perhaps beautifully illuminated) by hand. Books were far too expensive for anyone but the very wealthy. Then along came Johannes Gutenberg, who developed the first successful movable type printing press in the early Fifteenth Century. This has led to books, magazines, newspapers, Wikipedia, e-books, and Twitter. Without these things, life would be dull and information would still be in the hands of a very elite few.[v]

#3 Smart Phones – Telephones are no longer just for making calls any more. We can use our phones to find a nearby restaurant and make reservations for 7:00. We can take pictures and instantly share them with 400 of our closest friends. We can listen to our entire CD collection (if we still have CDs). We can arm our home security systems, turn off the lights, and adjust the thermostat from the airport. And we can catapult an irate avian through a brick wall. We can hold more computing power in our palm than Neil Armstrong and Buzz Aldrin had aboard Apollo 11! Far too many people and parts have had a hand in the development of the smart phone, but we can probably  thank Steve Jobs and Apple for our purposes today.[vi]

#2 Star Trek – I was too young to enjoy this seminal science fiction television series when it first ran in the 1960s. By the time I discovered it, it had been in syndication for close to ten years. However, this show, created by Gene Roddenberry, has done more to advance technology and how we view technology than many people realize. To me, it represented a better future . . . one where mankind can settle our petty differences and unite for a cause that matters. It told me that anything was possible. Over the years, the Star Trek franchise has spun out no fewer than six television series and something like ten feature films. Obviously, this vision of a hopeful future has touched others, too.[vii]

#1 Toilet Paper – I don’t think I have to spell it out. I cannot imagine a world without it, nor do I want to.[viii]

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A Day in the Life of an OTT Licensing Manager

Technology Transfer Offices are sometimes mistakenly viewed as a hindrance when it comes to translating science from the lab to the community. Therefore, it is important to us at UR OTT that all of you are aware of what we do, and plan to do — now and into the future.   A licensing associate’s position involves many responsibilities and demands a strong understanding of several disciplines such as business operation and acceleration, academic research, U.S. and international patent law, governmental regulations, manufacturing, engineering, and science. Licensing associates monitor numerous portfolios that contain explicit requirements, all tailored in specific ways, to meet the demands of different technologies. No two technologies demand the same things, and as new tasks arise we must adapt, causing our daily routines to change as we take on the challenges that face us. It’s our job to work closely with our research community, so it’s important we’re well versed on a wide range of scientific and commercial topics.

Our routines consist of many different tasks, with priorities changing every day:

We address and respond to correspondence from a variety of sources in an effort to maintain relationships and market University technologies.

  • Examples include government agencies, individuals, companies, universities, etc.

We handle the evaluation of invention disclosures submitted to our office. It is our duty to review and assess each disclosure and ultimately make a decision on the patentability of the technology.

  • We evaluate each technology based on specific criteria; we assess technologies on their scientific, legal, and business merits.
    • Scientific: What stage of development are you in?
    • Legal: What form of IP protection is needed?
    • Business: What problem are you trying to solve? What is the addressable market? What is the product? Is it faster, better, or cheaper than existing solutions?

We partake in a number of patent application and prosecution activities.

  • We must work closely with both the patent agent responsible for the case and the inventor(s) involved with the technology to ensure the process advances smoothly, efficiently, and economically. We strongly encourage this teamwork to affirm that responses to the patent office are prepared and filed before specific deadlines, as well as to monitor decisions surrounding patent renewal and the payment of maintenance fees.
  • When necessary, we are responsible for making swift decisions concerning patent proceedings. These types of decisions are typically made on the spot, with or without a strong understanding of the invention’s market potential and/or commercial range.
    • Situations where this approach is necessary – an application researcher is about to make a public disclosure prior to a patent filing, or when the “first-to-file” system is launched, which will, in some cases, initiate a race to the patent office to file before a competitor.

We are heavily involved in the marketing of available technologies.

  • We use a wide range of resources to assure technologies reach all areas of industry.
    • Traditional marketing tools used include non-confidential summaries, identifying leads (direct direct mail/email, cold calls, networking), conferences and partnering events, websites (our OTT homepage), brochures, hosting events, etc.
    • Non-traditional marketing tools used include social media (Facebook, Twitter, Blog, and Linked-In), technology portals (iBridge), press releases/media, etc.

It is our job to identify potential commercial partners and address business opportunities promptly. Once we’ve identified potential licensees, we will initiate contact and provide non-confidential summaries of technologies to interested parties.

  • If continued interest is expressed, we will execute a confidential disclosure agreement, which allows a company to take a closer look at an invention while protecting the privacy of the research.
  • If a real interest in the technology is communicated, negotiation of a license begins.
    • A number of agreements exist to meet the specific demands of individual licensees (option agreements, license agreements, start-up agreements, etc.) 
  • These license negotiations typically involve numerous twists and turns to accommodate the market dynamics of a certain industry sector and/or to accommodate the specific needs of the commercial partner, the university, or the inventor.
  • We are accountable for negotiating agreements between academia and industry. It is our responsibility to keep our researchers involved in all on-going consults surrounding their portfolios.
  • No two license negotiations are ever the same. Flexibility and creativity are required to achieve agreement between parties. In this environment broad technical knowledge and responsiveness are critical to identifying, protecting, and commercializing a host of technologies from a range of disciplines.

Once a technology is licensed it’s our job to watch over the commercialization and development of the invention to ensure the product is being advanced in accordance to the terms of the license.

All-in-all, our days prove to be very unpredictable – an inventor may call looking for advice, an email may arrive inquiring about a licensing opportunity, senior administration may come looking for an update on how the university’s licensing activities are progressing, or a faculty inventor may inquire about starting up a new business based on a technology developed at the university. Whatever the case may be, it is vital that all of us continue to work together, each role is just as important as the last and without one another we would fall apart. We rely on the active participation of individuals from all corners of the community, both internally and externally, to continue to move science and technology forward.