Group Title: Technology licensing news
Title: Technology licensing news. Vol. 1. Iss. 1
Full Citation
Permanent Link: http://ufdc.ufl.edu/UF00076672/00001
 Material Information
Title: Technology licensing news. Vol. 1. Iss. 1
Series Title: Technology licensing news
Physical Description: Serial
Language: English
Creator: Office of Patent, Copyright, and Technology Licensing, University of Florida
Publisher: Office of Patent, Copyright, and Technology Licensing, University of Florida
Publication Date: October 1994
Subject: University of Florida.   ( lcsh )
Spatial Coverage: North America -- United States of America -- Florida
 Record Information
Bibliographic ID: UF00076672
Volume ID: VID00001
Source Institution: University of Florida
Holding Location: University of Florida
Rights Management: All rights reserved, Board of Trustees of the University of Florida

Table of Contents
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        Page 2
        Page 3
        Page 4
        Page 5
        Page 6
Full Text

University of Florida's Office of Patent, Copyright and Technology Licensing

Dear Colleagues:

This is the inaugural Newsletter
about technology transfer and licens-
ing, published by the Office of Patent,
Copyright and Technology Licensing.
Many changes are occurring in technol-
ogy transfer across the country, as the
federal and state governments focus on
"strategic research," job creation and
economic development. The goal of this
newsletter will be to bring you, the Uni-
versity of Florida faculty member,
timely and succinct information on top-
ics related to technology transfer and
licensing. This issue of this newsletter
is being sent to all current principal in-
vestigators, deans, directors, and de-
partment chairs. Please distribute this
newsletter widely; we are pleased to
add anyone to our mailing list.

This will be a year of significant
challenges for the Office of Patent,
Copyright and Technology Licensing.
Although the output numbers for the UF
faculty and the office are still high (see
the related tables, page 3) the office is
still missing two full time licensing pro-
fessionals (A&P positions) and a full
time lawyer (an OPS position) that it
had back in 1992. Vice President
Karen Holbrook has decided to review
the job descriptions of these people and
the goals of the office in light of UF's
new role in local economic development
and the other, new goals being sug-
gested for technology licensing offices
in universities. A faculty committee is
reviewing these issues now, but it is
doubtful there will be rehires of any of
the three positions until spring of 1995.


So we will continue to "put out fires"
and manage by emergency. We realize
we cannot meet all the faculty needs at
this point, but I can promise we will
continue to give you the best service we

All is not gloom and doom far
from it! Two long-term licenses, first
executed approximately a decade ago,
will be producing significant royalty in-
come next year. Faculty collaboration
with industry, either through research
or consulting, continues to expand, so
we can expect more licensing and tech-
nology transfer in the future. Most im-
portantly, the research efforts and in-
ventive "sparks" continue to grow
among UF's research faculty, which are
the primary factors in creating new li-
censable technology.

We can all look forward to a great
academic year!


Susan D. Wray, D.D.S, J.D.

From The Director

i i "Record K g n om.
"The ABC' of Universit IcensIng" ..page
S A Key Str c P r wh th Uy of F .-

Much Ado About

Patents, Copyrights,
Trade Secrets and

By Gregory A. Nelson, Esq.
Quarles & Brady
West Palm Beach, Florida
Although technology licensing is
usually thought of in terms of patents,
other types of "intellectual property" are
often the subject of university license
agreements. This article will review the
fundamentals of intellectual property.

Patents are awarded to the first to
invent a particular technology. The
granting of a patent is the duty of the
United States Patent and Trademark
Office, which receives and reviews ap-
plications describing and claiming in-
ventions. The claimed inventions must
be-new, useful and not obvious in order
to be granted a patent. More recently,
copyright licensing, once largely the do-
main of the entertainment industry, has
become a significant part of technology
licensing because of the importance of
computer software. Copyright law pro-
tects the owner against the unautho-
rized copying of the work. Copyright
law does not extend to ideas, but only
to the expressions of those ideas. Al-
though patents can also be used to pro-
tect computer software, copyright and
trade secrets are the predominant mech-
anisms used by industry to protect soft-
ware. Other significant, but often over-
looked, forms of technology rights are

(Continued on page 5)

Invention Tips: Record Keeping

Reprinted from Invention Tips by Research
Corporation Technologies, 101 North
Wilmot Road, Suite 600, Tucson, Arizona
85711-3335 (602/748-4400)

Records Can Win or Lose Patents

Disputes sometimes arise over who
first made an invention. This issue is
usually decided on the basis of records
kept by the parties to the dispute. But
for the lack of witnessed notebooks de-
scribing his device, the man known as
the inventor of the telephone would
have been a talented mechanic named
Daniel Drawbaugh. Although Draw-
baugh was able to testify that he had
talked over a crude telephone long be-
fore Alexander Graham Bell filed a
patent application in 1875, Drawbaugh
had not a scrap of paper dating and de-
scribing the invention. The Supreme
Court rejected Drawbaugh's claim of
prior inventorship in 1888 by a narrow
margin of four votes to three. Similar
disputes have raged over who invented
the automobile, the electric light and the
laser and, in all of them, records or the
lack thereof played a deciding role.

As the Drawbaugh case shows, U.S.
patent practice places a premium on
witnessed records when two or more
parties claim the same invention. The

But for the lack of witnessed
notebooks describing his
device, the man known as the
inventor of the telephone
would have been a talented
mechanic named Daniel

date the idea occurred, called concep-
tion, and the date it was put into prac-
tice form, called reduction to practice,
are vital. The U.S. Patent and Trade-
mark Office conducts proceedings,
called interference proceedings, to de-
termine who is the first inventor when
this is in dispute. Because the first in-
ventor must be able to prove his or her
case by means of appropriate evidence,

it is important to have good records of
conception and reduction to practice,
corroborated by witnesses other than in-
ventors. Equally important to the U.S.
Patent Office in such proceedings is the
diligence shown by a contending inven-
tor. Diligence refers to work done be-
tween the conception and reduction to
practice stages of invention. A contend-
ing inventor must show work was dili-
gently undertaken on the invention, i.e.,
the invention was not abandoned. Here
too, these efforts should be documented
on a day-by-day basis and witnessed by
a knowledgeable third party.

A Fictional Interference Proceeding

We describe a fictional interference
proceeding to illustrate how important
witnessed laboratory records can be.

Inventor "A" ("Andrews") had an
excellent idea for an improved building
material. After entering the conception
in his notebook and having it witnessed,
he diligently set about reducing it to
practice. After two years of work he ac-
tually made samples of the substance
and applied for a U.S. patent.

A fly in the ointment! Other pres-
sures prevented Andrews from main-
taining records on the invention in
more than cursory fashion. None of his
entries, after the first, was witnessed.
(Continued on page 4)

The ABC's of
University Licensing
Susan D. Wray, D.D. S., J.D.

The patenting and licensing pro-
cess is very different from the research
process. Here are some of the basics.

In order to make a product, compa-
nies must make a profit and having an
exclusive license to a critical technology

can give the company monopoly power
by which it can increase its profit. Uni-
versities often invent valuable technolo-
gies that a company does not want to
license because the profit potential is
not great (for example, the cost of man-
ufacturing may be too high). Thus, in
order to have a licensable technology, a
faculty member has to invent something
industry wants. This is the "A" of li-

Once you have invented it, how do
you market it? Duke Lehey, Director of
Washington University's Technology
Licensing Office and Past-President of
the Association of University Technol-
ogy Managers, has stated that nine out
of ten licenses are the result of the fac-
ulty inventor's personal connection with
someone in the industry. This connec-
tion can occur through a research agree-
ment, an unofficial scientific collabora-
tion, or a consulting arrangement.

UF's experience is similar al-
though the Office of Patent, Copyright
and Technology Licensing conducts tar-
geted marketing (by use of a company
database) and often conducts "cold
calls" on industry, our best licenses re-
sult from a faculty member with an on-
going research collaboration with a
company. Thus, faculty contact with in-
dustry is the "B" of licensing.

The "C" of licensing is patenting
the invention and drafting the licensing
agreement. It's easy to imagine patent-
ing as the "Field of Dreams", that is, "If
you patent, They will come." This is
not so, because of factors A and B, listed
above. Patenting the technology is only
worthwhile if factors A and B have been

In this newsletter, one of our UF at-
torneys explains more about patenting
and other types of intellectual property
(see page 1). Future newsletters will
discuss licensing terms in greater depth.

P a g- 2.



ISSUED PATENTS FY 1985-86 to FY 1!

86 87 88 89 90 91

SPatents Issued


U Patent Applications

Q Inver

ABC Research, Inc.
Abela Laser Systems, Inc.
Advanced Therapies, Inc.
PPLIC., Animal Reference Pathology
Avigen, Inc.
BioControl, Inc.
Environmental Science &
Exactech, Inc.
Florida Probe, Inc.
Florida Sod Growers Coop.,
Food Peeling Technologies,
92 93 Gator Microbiologicals, Inc.
Geltech, Inc.

nation Disclos. General Imaging, Inc.
Gold Standard Multimedia, Inc.
Group 206 Technologies, Inc.
G.S.S.C., Inc.

Ixion Biotechnology
Landtechnic, Inc.
Meta Gene Corp.
Merlin Pharmaceutical
Nanoptics, Inc.
Oracle Diagnostics, Inc.
PC-AGE Systems, Inc.
PCR, Inc.
Pepgen Corp.
Pharmos, Inc.
Progress Research, Inc.
Phoenix Advanced
RTS Laboratories
Quadrex (formerly
Simpkins, Inc.
SunPharm Corp.
Targeted Genetics Corp.
Theragen, Inc.
U.S. Biomaterials

FY 1983-84 to FY 1992-93

Income (Millions)

m 1111. .......H

84 85 88 87

88 89 90

91 92 93

Office of Patent, Copyright
and Technology Licensing

Office Staff:

Bruce Clary
Administrative Assistant

Genell Bond
Administrative Assistant

Marilyn Ritter

Elaine Burnham
Secretary, Editor

Chris McKinney, Ph.D.
Licensing Specialist


Invention Tips: Record Keeping
(Continued from page 2)

Meanwhile, the identical idea had
occurred to inventor "B" ("Baker").
She was equally diligent, followed the
same trail and created the same mate-
rial shortly after Andrews. Baker,
however, filed her U.S. patent applica-
tion first.

Needless to say, Andrews was
placed at a serious disadvantage by
this action. To win the patent now, he
would have to provoke an interference
in the Patent Office by copying into his
patent application, in exact detail, at
least one of Baker's claims for the
building materials and then shoulder
the entire burden of proving his prior-

Since the materials were the same,
there was no trouble in making identi-
cal claims. And Andrews did have the
idea first: a witness could testify to it
and support his statements with the
witnessed notebook entry.

"But what proof," the Patent Of-
fice asked, "did Andrews have that he
had diligently labored to reduce his
idea to practice?"

The First Inventor May ,ose

Here inventor "A" paid dearly for
poor records and lack of witnesses. He
could not prove, as the Patent Office
demanded, that he had been diligent;
that he had worked faithfully day in
and day out to produce the building

Still Andrews had made the new
material before Baker, even though his
notebook entries were unwitnessed.
Could others present in the laboratory
on those dates testify in his behalf?
Andrews' colleagues, eager to help,
did indeed swear they had seen him
prepare materials and place them in a
molding machine, but they were un-

able to name the ingredients used or
specify what pressures were involved in
molding. Andrews had even conducted
the strength tests himself, eliminating
the possibility of another valuable wit-

Without lifting a finger, Baker won
on the basis of her earlier filed patent ap-
plication. Her earlier filing date was all
that was required in the absence of cor-
roborating evidence showing Andrews'
diligence and prior reduction to practice.

Had Andrews, our first inventor,
maintained adequate, witnessed records
to establish his diligence, he would have
won the patent, and he might have won
even if he had been the last to reduce the
invention to practice rather than the first.

The last statement seems paradoxi-
cal, but it reflects the intent of U.S.
patent laws to recognize the first inven-
tor: the one who originated the idea. Un-
der these U.S. laws, the first to conceive
and reduce to practice will receive the
patent if the records bear out his claims.
The first to conceive, even if last to re-
duce to practice, may win if the records
show diligence.

Rules For Record Keeping

The careful recording of ideas and
laboratory activity and data is a matter of
routine for industrial researchers. Each
entry is often complete and up-to-date,
signed and witnessed: a legal record of
the day's work. Record keeping is not
always so routine for academic investi-
gators, who may work at odd hours or on
weekends in a laboratory, an office or at
home, often lacking easy accessibility to
suitable witnesses. Still, the routine
maintenance of a witnessed laboratory
notebook is an important task. Addition-
ally such records can serve as valuable
repositories of new ideas.

* Ideal practice is to use bound note-
books for records, making entries
on a daily basis on consecutively
numbered pages. This diary for-
mat provides a day-to-day chronol-
* Use the notebook to record a con-
ception (a complete description of
a means to accomplish a particular
purpose or result), laboratory data
and drawings. Each entry should
be headed with a title and contin-
ued on successive pages.
* Make entries in ink and do not
erase; draw a line through text or
drawings to be deleted and enter
the material in corrected form.
Draw a line through blank spaces
on the page.
* Separate sheets and photographs
pasted to notebook pages should be
referred to in an entry. Material
that cannot be incorporated in the
notebook should be keyed to an en-
* Sign and date all entries at the
time they are made, and have them
signed and dated by a witness. A
witness must be someone who has
read the material and is capable of
understanding it, yet had nothing
to do with producing it. Secure
additional witnesses when some-
thing important or highly unusual
is discovered. Remember that an
inventor and co-inventors cannot
serve as their own witnesses.
* Set aside a time for making note-
book entries and faithfully observe
it. Arrange to have two or more
colleagues serve as witnesses on a
regular basis.

Records, when made routine, take
little time and effort, become an invalu-
able asset to work in progress, and ulti-
mately may protect those rights to
which the inventor is entitled.

Look for another Invention Tip from RCT
in our next issue.

I Pg 4

Much Ado About SOMETHING
(continued from page 1)

trade secrets and know-how. Trade secrets
are the secrets of a business that provide it
with a commercial advantage. Know-how
encompasses the collective knowledge and
skills that are helpful, if not necessary, to
implement technology.

A prospective intellectual property li-
censee will carefully consider the validity
and quality of the rights that are to be con-
veyed before entering into an agreement.
[Director's note: The licensorr" is the
party owning or holding the technology.
The "licensee" is the party seeking to ac-
quire rights to the technology by signing a
license agreement with the licensor.] The
value of a patent license will be ruined if
the underlying patent is held to be invalid,
or if the validity of the patent is so suspect
that potential infringers are inclined to test
the validity of the patent in court. Thus,
prior to agreeing to a license, a potential
licensee will assess the strength of the
patent(s) by, for example, conducting a
search of patents in the U.S. Patent and
Trademark Office, or in the technical liter-
ature, to determine if there are significant
disclosures of related technology which
were overlooked during the prosecution of
the patent application. A review of the
patent application file history will usually
be performed for each patent that is li-

Similar concepts apply to the valid-
ity and quality of trade secrets. Most
importantly, a trade secret must truly be
a "secret," and sometimes what are rep-
resented to be trade secrets are, in fact,
not "secrets" at all. For example, the
owner of a trade secret must have
strictly maintained the secrecy of the in-
formation, or risk a finding that the in-
formation has been injected into the
public domain and is no longer propri-
etary. Also, the information can some-
times be readily obtained from public
sources such as journals and reference
books, or the information is generally
known in the industry. An investiga-
tion into the background and mainte-
nance of the trade secret is therefore de-
sirable. This is of particular concern in
the university environment, where the
publication of research is seen as an im-
portant part of the mission of a univer-
sity. A difficult balance must some-
times be reached between the duties of
a scientific investigator to publish, and
the secrecy that will be required by one
seeking to commercialize the technol-

Trademarks do not protect underly-
ing technology, but rather only the
name by which a product or service em-
bodying that technology is held out to
the public (e.g. "Gatorade )." Trade-
marks are not searched for "prior art,"
but rather for the existence of confus-
ingly similar marks used on related
products or services.

The prospective licensee will want to
determine if the license of the technology
would conflict with any prior licenses or
transfers. An investigation within the
university will be made for any known
grants or licenses which are adverse to
these rights. Researchers who engage in
joint research efforts must be diligent in
sorting out the potential for conflicts
which can develop if technology from a
prior joint effort is subsequently licensed
to another entity. Similarly, the licensor
of a patent may be unaware of a conflict-
ing patent, even sharing a common in-
ventor, which could adversely affect the
use of the licensed technology. Copy-
righted software is sometimes developed
by programmers in a collective effort. In
order for the licensor to own the work of
all of the programmers, the programmers
must be either employees of the licensor,
or must be subject to "work for hire," or
these programmers must have executed
assignments of their copyright interest to
the licensor.

Director's Conclusion:
As Mr. Nelson has explained in this arti-
cle, a complete understanding and listing
of the technology to be licensed is impor-
tant to the successful completion of the
license agreement. The second part of
this article by Mr. Nelson will appear in
the next Technology Licensing News. and
will focus on the terms of the license

Research Corporation Technologies:
A Key Strategic Partner with the University of Florida
by Chris D. McKinney

With the new opportunities and challenges facing univer-
sity technology transfer offices today in transferring an increasingly
diverse variety of technologies, UF has taken an innovative approach
in managing the process. This has been done through a strategic
relationship with Research Corporation Technologies (RCT), an
Arizona-based firm specializing in the evaluation, protection, and
marketing of client-supplied technologies.

UF and RCT have established a program through which
UF may submit invention disclosures to RCT for evaluation. This
evaluation, which complements the efforts of the UF patent commit-
tees, includes considerations of technical feasibility, patentability,
and market analysis which may suggest further interest by RCT. If
RCT indicates such interest, it may pursue additional review for a
period of time with the payment of an option fee to UF. If the out-

come of this second evaluation is a "go," RCT may elect to take an
exclusive license to the technology.

When RCT licenses a technology from UF, it will then pur-
sue a wide range of commercial opportunities which may result in
one or more sublicense agreements. After RCT receives its share of
earned revenues from resulting licensing activities, the balance is re-
mitted to UF for distribution pursuant to the University of Florida
Patent Policy. According to Dr. Susan Wray, "RCT provides a valu-
able service to the University, in that it leverages UF's scarce re-
sources in enhancing the commercial position of new and emergent
technologies. Even as additional licensing professionals may join
UF's technology transfer effort, RCT will play a continuing role in
the quest for additional technology licensing opportunities."

PSag 5

1. "Analogs of Desferrioxamine B & Method for Systhesis Thereof' I
Inventor Raymond J. Bergeron Patent
Date of Issue: 6/1/94
2. "Dwarf Bahiagrass with a Limited Flowering Capacity and Short 1
Inventors Francis Marousky & Albert Dudeck
Date of Issue: 6/14/94

3. "Sharp Instrument Encasement System"
Inventors Richard Melker, Chris Batich & Gary Miller
Date of Issue: 6/21/94

4. "Artifact-Free Contrast Agent for MRI"
Inventors Richard Briggs, Thomas Liebig, Pablo Ros & Ray Ballinger
Date of Issue: 6/28/94

5. "Bacterial Plasmin Receptors as Fibrinolytic Agents"
Inventors Michael Boyle, Richard Lottenberg, Christopher Broder & Gregory Von Mering
Date of Issue: 7/12/94


Office of Patent, Copyright, and
Technology Licensing
186 Grinter Hall
P.O. Box 115500
Galnesvllle, Florida 32611


"Much Ado About SOMETHING: Patents, Copyrights,
Trade Secrets and Know-How" ... page 1
"Invention Tips: Record Keeping" ... page 2

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