TAR UC Licensing Technology Transfer Essay INSTRUCTIONS Given a scenario involving federal funding, identify and describe issues that researchers and adm

TAR UC Licensing Technology Transfer Essay INSTRUCTIONS

Given a scenario involving federal funding, identify and describe issues that researchers and administrators must address related to licensing technology created at a research institution, and formulate actions they can undertake to protect and maximize value of potential IP.

Your essay should include supporting explanations based on specific details in the hypothetical case (which are cumulative, so include necessary facts from previous module prompts). State assumptions or unmentioned facts as necessary, and identify the necessary facts. The essay should be less than 1 pg (500 words). It should be concise, but long enough to sufficiently support your answer.

SCENARIO

Building on the previous scenario (BELOW), describe the information that will be important to determine Medelectric’s ownership in the system and how that could affect a future license based on the sponsored research. As part of the agreement with Medelectric, Profs. G and CV test the device on several of Medelectric’s proprietary surgical models. The professors use the models to find technical errors and improve the device. These tests, along with testing with UMB’s residents, produces valuable data and improvements. UMB files another patent application based on these improvements.

What types of licensing terms may be important to the technology transfer offices (e.g., what is the licensed IP, what is Medelectric allowed to receive and restricted from doing, etc.)

PREVIOUS SCENARIO

The NIH awards the grant and the professors continue the research with a post-doctoral fellow at UMB. UMB and JHU form an agreement that UMB will lead patent prosecution (sharing patent prosecution costs equally) since Prof. G is the lead PI and UMB is receiving the NIH funding. Prof. G and Prof. CV also secure sponsored research funding from Medelectric to develop the technology with assistance from Medelectric’s engineers. In return, JHU and UMB grant a 2-year option to exclusively license the technology to Medelectric. UMB files a non-provisional application based on the provisional patent application and the subsequent developments. Simultaneously, UMB begins negotiating a license with Amped Health, a local medical device startup company, and Aceso, a multinational healthcare company based in Switzerland.