From Ideation to Product Solutions Managing Intellectual Property and Translating Science to Practical Applications

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1 From Ideation to Product Solutions Managing Intellectual Property and Translating Science to Practical Applications Joshua Nelson Program Manager, TREAT

2 Overview Introduce Simbex and the Center for Translation of Rehabilitation Engineering Advances and Technology (TREAT) Provide some perspective on intellectual property management as part of technology transfer in rehabilitation Use real-life product development examples to help provide insight

perspective on intellectual property management as part of technology

3 Simbex Lebanon, NH, USA

4 Simbex Mission Simbex is a research and product development company whose expertise is biomechanical feedback systems Our goal is to create marketable products and solutions for active life improvement in the areas of human performance, sports injury prevention and rehabilitation Simply Better Exercise

marketable products and solutions for active life improvement in the areas

5 CENTER FOR TRANSLATION OF REHABILITATION ENGINEERING ADVANCES AND TECHNOLOGY Fostering Advances in Rehabilitation Technology Funded by the National Center for Medical Rehabilitation Research Eunice Shriver National Institute of Child Health and Human Development National Institutes of Health Part of the R24 Rehabilitation Resources Network (

Rehabilitation Research Eunice Shriver National Institute of Child Health and Human

6 TREAT Mission Statement TREAT is a multidisciplinary, multi-institutional, collaborative consortium between corporate, educational and non-profit entities providing infrastructure support and expert consultation to researchers and innovators interested in the translation and commercialization of rehabilitation research applications. TREAT has the following mission: To provide research translation and commercialization expertise and education for rehabilitation researchers and bioengineers with product solutions for rehabilitation technology. To enable and encourage comparative effectiveness trials for rehabilitation technologies considered ready for clinical evaluation and use.

TREAT has the following mission: To provide research translation and commercialization expertise and education for rehabilitation researchers and bioengineers with product

7 How TREAT works TREAT provides market needs assessment, technology development, and development of comparative effectiveness research paradigms, to individual researchers through participation in our didactic programs, pilot programs, sabbatical programs, and where appropriate, on-line.

paradigms, to individual researchers through participation in our

8 Three Cores Technology Assessment (Includes Intellectual Property advisory) Prototyping & Development Comparative Effectiveness

9 TREAT Four partnering entities Simbex : Extensive experience bringing Rehabilitation Engineering to the Market. Inventor multiple products & patents RESNA : Non-profit entity with long track record of supporting Assistive Technology The Dartmouth Institute 30 years of clinical and medical research and evaluation experience. Thayer School of Engineering : World class facilities for engineering research.

Inventor multiple products & patents RESNA : Non-profit entity with long track record of supporting

10 Problem Statement What are specific issues related to Intellectual Property in rehabilitation technology transfer? Major challenge for Rehabilitation Engineers and Researchers to translate good ideas and technologies to the market How to cross the chasm?

Major challenge for Rehabilitation Engineers and Researchers to

11 Forms of Intellectual Property Copy right: the exclusive legal right to reproduce, publish, sell, or distribute the matter and form of something (as a literary, musical, or artistic work) Lasts 70 years Relatively inexpensive to register Trademark: a device (as a word) pointing distinctly to the origin or ownership of merchandise to which it is applied and legally reserved to the exclusive use of the owner as maker or seller Lasts forever as long as you keep it current Not too expensive to register Trade Secret: something (as a formula) which has economic value to a business because it is not generally known or easily discoverable by observation and for which efforts have been made to maintain secrecy Lasts as long as it doesn t become public No registration Patent: Protects an idea (more on this in a bit). Lasts 20 years Expensive and requires a significant amount of work

of the owner as maker or seller Lasts forever as long as you keep it current Not too expensive to register Trade Secret: something (as a formula) which has economic value to a business because it is

12 Patent Steps Basics Is my idea patentable? Disclosure Patent Search Provisional Patent Non Provisional (Full) Patent

13 Is my idea patentable? Must be a statutory subject matter Must be Novel Someone else cannot already have a patent on your idea Must be Non-Obvious Must be Useful

14 Should you Seek a Patent? Can the invention be reverse engineered? Can you afford patent drafting fees, filing fees, prosecution fees, issue fee and maintenance fees? Is the life of the protection desired for over 5 years? (Will it be obsolete?) Not publicly disclosed within one year?

15 Patent Search Using USPTO and key word search Using 3 rd party or lawyer

16 Disclosure Govt. Disclosure Forms if fed funded Technology Transfer Disclosure Why disclose? Sets the table for the communication with TTO or Patent Attorney to begin patent process. Grants and SBIR Foreign Bars to Patent

17 Provisional Patent What is it? Non examined, place holder Why File? Lower Cost ($125 or $250) Complexity Time to prepare for full Patent Good for 12 months Able to use Patent Pending

18 Non-provisional (full) patent A patent is granted by a government and allows you to stop others from making, using, selling or importing a patented invention Very verbose document 18 months from initial filing your patent application is published (unless you ask for non-publication) Utility Patent vs. Design Patent Parts of a Patent. Title Cross Reference to Related Applications Field of Invention Background Summary of the Invention Brief Description of the Drawings Detailed Description Claims Abstract Drawings

you ask for non-publication) Utility Patent vs. Design Patent Parts of a Patent.

19 Feels good! Lots of work and $$ leads to this:

20 What are the Practical Realities? You are a professor at a University and have never done this? (Tech Transfer office is a foreign concept) You are a small company fish in a big pond.

21 University Professor Technology Transfer Offices Office Policy and Experience varies widely AUTM and President s Tech Transfer Initiative, Big Push to Improve Different measures of success Financial considerations Changes in Patent Law First to File

22 Small Business Why Bother? Offensive Deter Competitors Marking/marketing Threat of Litigation Defensive Own different technologies Capital Asset Licensing/Cross-licensing A bargaining chip

23 Small Business Cont. A patent is only as good as your (financial) ability to defend it. Budget for patent/lawyer costs Approximate patent costs for a basic Utility Patent are about $10K - $15K. Don t forget cost of maintenance (3 ½ years, 7 ½ years, 11 ½ years.) Good reason to partner/license with a larger company

24 How does small business work with Universities? Partnering with the Researcher/Clinician Working with the Technology Transfer Office Technology Transfer Metrics President s Initiative on Research Commercialization, what does it mean? (NCET2.org Webinars)

Many people think that Ideas constitute an Invention. In this module, we make the distinction between an idea and an invention more clear.

Many people think that Ideas constitute an Invention. In this module, we make the distinction between an idea and an invention more clear. 1 2 The invention process for the successful inventor should start