The Research Disclosure Process at the

1
The Research Disclosure Processat the

• James R. Zanewicz, J.D.
• Director
• Office of Technology Development

2
OTD Staff

• James R Zanewicz, JD
• Director General Issues, Management, Overflow
• Melea East, JD
• Assistant Director Management, AS, Overflow
• Christopher Willson, Ph.D., MBA
• Technology Manager Medical Campus
• Cassie Carmichael
• Asst. Technology Manager Engineering
• Sandra Foster and Charlene Williams
• Support Staff Various duties include Intake, MTA
  routing, Docketing and Compliance, Financials

3
When Do I Disclose?

• Dont worry about whether or
• not you have an Invention.
• Disclose anything that you think may be a great
  research development, or just cool research, via
  the Research Disclosure Form.
• If the form is confusing, call the OTD
• Well help you fill it out!

4
Whats the Process

• Fill Out a Research Disclosure
• Turn in to OTD
• Confirmation of receipt within a few days via
  email
• Notification of case manager within a week
• Within a few weeks you will hear from the case
  manager about 1) either a meeting to get more
  details or 2) a communication with initial search
  results
• Evaluation on Patentability, Market, and Business
  Sense in moving forward is made by case manager
• Within 120 days, notification of status
• ELECTED, NONELECTED, or PENDING

5
Presenting and Publishing

• Is Your Right!
• OTD files a patent before disclosure when both
• Time allows
• It is economically viable to do so
• The more lead time you can give us, the more
  informed decision we can make about whether or
  not to file a patent prior to disclosure
• Talk to the OTD when you have a draft, before it
  is accepted for publication (or you are on the
  plane headed to give your talk).
• One Year from Public Disclosure to protect in
  U.S.
• Foreign Rights lost IMMEDIATELY

6
What do you getwhen we License?

• When Licensed
• Patent and Overhead expenses reimbursed 1st
• We try and recoup the patent costs separately in
  the license whenever possible
• Of the remaining Net
• 50 to the Inventor(s) -- No Cap!
• 12.5 to Inventor(s) Department(s) for Research
• 12.5 to Inventor(s) College(s) for Research
• 25 retained by VPR for Research
• If Inventors choose to put all of their share
  back into research, UofL will put an additional
  40 of the net in up to 300k

7
Want to Start a Company?

• The OTD will facilitate introductions to entities
  that can help you in this process
• LMCDC
• MetaCyte
• The Louisville ICC
• Your Company can License if
• It has qualified business management
• Can show us a viable business plan
• It negotiates an option or license from the OTD
  that contains proper diligence milestones

8
Other Services

• We handle the government reporting of inventions
  required under federal grants
• Implement Confidentiality/Secrecy/Non-Disclosure
  Agreements
• Material Transfer Agreements

9
Contact Info

• James R Zanewicz, JD
• Director, OTD
• University of Louisville
• LL02 Jouett Hall
• Louisville, KY 40292
• [phone]
• thinker.louisville.edu
• james.zanewicz_at_louisville.edu