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NCURA* Intellectual Property Seminar CASE STUDY NEGOTIATING INTELLECTUAL PROPERTY RIGHTS TO TRANSFER UNIVERSITY-OWNED TECHNOLOGIESBackground: Professor I.M. Kreatar (pronounced "creator") has been at the University for many years and is known as an expert in her field of wireless interconnect technology. She has had an active research program for many years and many of her graduates are well placed in several U.S. and international companies and universities. A recent article of Professor Kreatar’s appeared in Science. The National Science Foundation (NSF), the National Institutes of Health (NIH), the Department of Defense (DARPA), and several corporations have supported Professor Kreatar’s research program for over 15 years. Professor Kreatar visited the University’s technology transfer office and requested that several agreements and licenses be signed as soon as possible that would provide sponsored funding of $8 million dollars to her research program for the next year and royalty income that could exceed $3 million in the next several years.A month ago the technology transfer office received an invention disclosure and has been working with Professor Kreatar to exclusively license the technology to her start-up company. The disclosure did not identify any sponsors of the research. Technology: The invention disclosure describes Professor Kreatar’s technology as: Wireless interconnect technology, utilizing body tissue as a transmission line, which clearly transmits small electrochemical signals between devices located in different body parts (i.e. transmission from a tiny camera at the nape of the neck to a signal processor) and from the signal processor/computer to "on the cornea" visual (contact lens size monitors). The tiny camera transmits signals through body skin and tissue (as a conductor to the signal processor, which can be worn externally on the body (like a watch or necklace) which in turn utilizes a software algorithm to convert the signal into a processed signal that can be "understood" by the contact lens visual screen. Additionally, it has been found that injections of a brand new chemical, a previously unknown serotonin derivative, greatly enhances the conduction of the signals through the body. In fact, the serotonin derivative increases the transmitted image signal to a quality even greater than 20/20 vision. Sponsors: Professor Kreatar has received notice of awards from the following organizations/corporations which would provide support for Professor Kreatar’s research beginning September 1, 2000. NIH: for the general applications of increasing the field of vision, quality of vision for individuals with vision impediments. Agreement: Standard NIH R01 DOD: for the potential intelligence activities, e.g. the camera at the nape of the neck for "behind your back" viewing, etc. Agreement: DOD Contract Mega Device Corporation: has funded Professor Kreatar’s work for several years and wishes to increase the level of funding for the next year by making a simple amendment to the existing agreement. Agreement: Contract Pharmaceutical Corporation: has requested that the University sign a material transfer agreement so that it can test under commercial laboratory conditions the "newly found" serotonin derivative that Professor Kreatar had discussed at the recent industry meeting. Agreement: Material Transfer Agreement Small Device Corporation: has submitted a SBIR proposal which was submitted to the University through its sponsored program office and proposes to exclusively license the technology for all applications worldwide. Professor Kreatar is an equity owner of Small Device Corporation and is the corporation’s Scientific Advisor. Agreement: SBIR Subcontract *National Council of University Administartors |
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