Educational Information

The Intellectual Property and Commercializing Technology Series

This series is intended for graduate students to professors (including lab scientists and technicians) and will provide a solid understanding of a broad set of topics related to intellectual property and the commercialization of technology. Whether someone is pursuing a career in academia or in the corporate world, these are topics that will be important to a successful career in any work environment. Each presentation will provide practical and helpful discussions that can be applied to both immediate and future work. The last 20 years have brought significant changes to the value of intellectual property in both the academic and commercial worlds. To be successful in those worlds, it is now a requirement to be able to protect, manage, grow, and capitalize on intellectual property. The goal of the series is to provide these skills to the University community.

#1. Fundamentals of Intellectual Property (23 September 2014, Reid Cunningham, JD presenting)

An overview of the four traditional areas of intellectual property; copyrights, patents, trademarks and trade secrets. The talk includes the importance of IP in today’s economy, detailed discussions on each of the four areas and how they relate one’s work at the university and for future careers. Attendees will leave an understanding of the scope of protection available, how protection is obtained, how the forms differ and overlap, and the uses of intellectual property to increase revenue and funding.

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#2. Patents and the Patenting Process (21 October 2014, Reid Cunningham, JD presenting)

A detailed presentation on the patenting process, including the UR evaluation process, what goes into a patent application, the US patent process, and potential non-US patent filings. There is a focus on the inventor’s role at each step in the process.

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#3. Technology Commercialization and UR (11 November 2014, Patrick Emmerling, Ph.D., MBA presenting)

This session will focus on the complex process of bringing innovative technologies from the “bench-top to the bedside”. In doing so, we will touch on a variety of important topics, including; reasons for an academic researcher to engage in the commercialization process, the transfer innovation from the University to Industry, and research innovation vs. commercial product. Additionally, we will discuss UR Ventures and how best to work with our team.

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#4. How to Find Inventions, Good Inventions, and Prior Art (9 December 2014, Reid Cunningham, JD presenting)

These are 3 related topics that together provide insight to the inventive process. The first topic is about finding inventions in the research and work you perform on a daily basis. The second is how to evaluate what makes a good invention and looks at various factors to consider (those that UR Ventures uses in its decision process). The last is about using the patent classification system to search for prior art and uses real examples to illustrate effective technical searching.

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#5. Assessing the Market Opportunity of New Technologies (20 January 2015, Patrick Emmerling, Ph.D., MBA presenting)

A more detailed discussion of the assessment of commercial value for University Innovations. Using a mixture of theory and concrete examples, this session will cover topics such as; the use of market research reports, identifying and assessing competing technologies, the Customer Discovery Process, and identifying the Minimum Viable Product for your technology.

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#6. Working with Third Parties (10 February 2015, Reid Cunningham, JD presenting)

A practical discussion on how to work with third parties (those outside the University) including the importance of confidential disclosure agreements (CDA’s or NDA’s), managing IP rights, avoiding commitments, University policy on these issues, etc. The lecture is focused on real world problems and issues that can arise and how to spot them, avoid them and to know when to ask for help.

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#7. Risk Assessment for Technology Investments (17 March 2015, Omar Bakht, Ph.D., MBA presenting)

This session will focus upon the thought process investors go through when evaluating an opportunity for investment in a technology. Scientific risk, technology risk, market risk, regulatory risk, etc. will be discussed. Through this understanding, we will be better prepared when approaching investors and may tailor our experiments and activities to minimize these risks.

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#8. Software and Open Source Software (14 April 2015, Reid Cunninghamn, JD presenting)

This is a very practical presentation on how to best use software, understanding licensing terms, avoiding infringement and other related issues. Along with more general issues there is coverage for those that write software, with a particular emphasis on open source software and the risks it can entail, including viral software licenses, limitations on use, etc. The presentation is intended for a much broader audience then just software engineers. Anyone that will encounter software in management or R&D will find useful insights.

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The F.I.R.E. Series

The F.I.R.E. Series (For Innovators, Researchers, and Entrepreneurs) began in 2003 as an educational program at which we discuss issues and topics pertaining to research, discovery, intellectual property, intellectual property protection, technology development, technology licensing, business formation, and economic development.

Meeting days and times will vary depending on room availability and anticipated audience size. Please check the event calendar for event locations and details. Upcoming events will also be advertised via our mailing list.

 

Future Topics Are Scheduled to Include:

There are no events scheduled at this time.

 

Previous Topics Have Included:

 

Research

  • “Find Funding in Your Freezer and Move Science Forward: The Investigator’s Annexe” (11 June 2013, Robert Bondaryk presenting)
    Mediasite Presentation
  •  “Corning and University Technology Collaborations” (9 April 2013, Charles Philip presenting)
    Slide Deck
  •  “The Center for Medical Technology & Innovation: a Pathway from Concept to Commercialization in Developing New Medical Technologies” (11 December 2012, Greg Gdowski, Ph.D. presenting)
    Mediasite Presentation
  • “First to Invent vs. First to File: The Importance of Keeping a Proper Laboratory Notebook” (8 September 2011, Carissa Childs, Ph.D., J.D. and Edwin Merkel, J.D. presenting)
    Please note that much of the information presented in this session has been obsoleted by the Leahy-Smith America Invents Act.

    Mediasite Presentation Slide Deck  

 

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Innovation

In order to view the video in slide #6 of Part III, you may need to install QuickTime 7 (or later) on your computer. If this doesn’t work, view the video clip here.

  • “The Future of Personalized Medicine Patents” (8 January 2013, Carissa Childs, Ph.D., J.D. and Ted Merkel, J.D. presenting)
    Mediasite Presentation
  • “The Center for Medical Technology & Innovation: a Pathway from Concept to Commercialization in Developing New Medical Technologies” (11 December 2012, Greg Gdowski, Ph.D. presenting)
    Mediasite Presentation    
  •  “What Is an Invention?” (13 October 2011, Kathryn Doyle, Ph.D., J.D. presenting)
    Mediasite Presentation    

 

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Intellectual Property Protection

In order to view the video in slide #6 of Part III, you may need to install QuickTime 7 (or later) on your computer. If this doesn’t work, view the video clip here.

  • “Patenting New Uses for Existing Compounds” (12 September 2013, Chris Curfman presenting)
    Slide Deck
  •  “The Myriad Controversy and the Patentability of Genes” (8 August 2013, Joanna Brougher presenting)
    Slide Deck
  •  “The Future of Personalized Medicine Patents” (8 January 2013, Carissa Childs, Ph.D., J.D. and Ted Merkel, J.D. presenting)
    Mediasite Presentation
  • “Drafting a Strong Provisional Patent Application” (13 November 2012, Ranjana Kadle, Ph.D., J.D. presenting)
    Mediasite Presentation
  • “Small Business and University Strategies for the Leahy-Smith America Invents Act” (10 May 2012, Gibson Lanier, Ph.D., J.D. and David Perryman, J.D. presenting)
    Mediasite Presentation
  • “Positive and Negative Data in Patent Procurement — When to Provide It and Why It Matters” (12 April 2012, Tina McKeon, Ph.D., J.D. presenting)
    Mediasite Presentation Slide Deck
  • “First to Invent vs. First to File: The Importance of Keeping a Proper Laboratory Notebook” (8 September 2011, Carissa Childs, Ph.D., J.D. and Edwin Merkel, J.D. presenting)
    Please note that much of the information presented in this session has been obsoleted by the Leahy-Smith America Invents Act.

    Mediasite Presentation Slide Deck  
  • “Intellectual Property Protection Beyond Patents — Trademarks and Copyrights” (12 May 2011, Michael Brown, Esq. presenting)
    Mediasite Presentation    
  • “Inequitable Conduct-Therasense, Inc. v. Beckton, Dickinson & Co.” (14 April 2011, Gibson Lanier, Ph.D., Esq. presenting)
    Mediasite Presentation Slide Deck  
  •  “Recent Trends at the U.S. Patent Office — Patent Strategies to Improve Your Outcome” (10 February 2011, Carissa Childs, Ph.D., Esq. and Edwin Merkel, Esq. presenting)
    Mediasite Presentation Slide Deck  

 

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Technology Commercialization & Licensing

In order to view the video in slide #6 of Part III, you may need to install QuickTime 7 (or later) on your computer. If this doesn’t work, view the video clip here.

  •  “The Center for Medical Technology & Innovation: a Pathway from Concept to Commercialization in Developing New Medical Technologies” (11 December 2012, Greg Gdowski, Ph.D. presenting)
    Mediasite Presentation
  • “Crossing the Development Gap” (9 October 2012, Michael Rusnak and Mikael Totterman presenting)
    Mediasite Presentation
  • “So You Want to Make a Deal…? Partnering and Licensing with Bio/Pharma and Others” (11 November 2010, Bruce Pratt presenting)
    Mediasite Presentation  

    Special thanks to the Clinical & Translational Science Institute and the Office of Research Alliances for making Dr. Pratt’s visit possible!

 

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Business Formation/Economic Development

In order to view the video in slide #6 of Part III, you may need to install QuickTime 7 (or later) on your computer. If this doesn’t work, view the video clip here.

  •  “The Keys to Bank Financing for Start-Up and Early-Stage Businesses – Debt as a Supplement to Venture Capital Funding” (12 March 2013, Carl Luger, Timothy Brown, & Jacqueline Lavoie presenting)
    Mediasite Presentation
    Slide Deck
     
  • “Crossing the Development Gap” (9 October 2012, Michael Rusnak and Mikael Totterman presenting)
    Mediasite Presentation  
  • “TEN and HTR — Entrepreneur Programs and Services in 2012” (9 February 2012, Jean Kase and Mike Riedlinger presenting)
    Mediasite Presentation Slide Deck  
  • “When and How to Form a Business: Practical Tips to Avoid Common Pitfalls” (14 October 2010, Daniel Kinel, Esq. presenting)
    Mediasite Presentation Slide Deck  

 

 

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Miscellaneous Presentations

In order to view the video in slide #6 of Part III, you may need to install QuickTime 7 (or later) on your computer. If this doesn’t work, view the video clip here.

  • “Corning and University Technology Collaborations” (9 April 2013, Charles Philip presenting)
    Slide Deck  
  • “The Center for Medical Technology & Innovation: a Pathway from Concept to Commercialization in Developing New Medical Technologies” (11 December 2012, Greg Gdowski, Ph.D. presenting)
    Mediasite Presentation  

 

 

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