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Principals of Technology Transfer James A. Poulos, III Technology Transfer Coordinator Office Technology Transfer Beltsville, MD Grotto March 21, 2011 USDA Agencies Animal and Plant Health Inspection Service (APHIS) Center for Nutrition Policy and Promotion (CNPP) Economic Research Service (ERS) Farm Service Agency (FSA) Food and Nutrition Service (FNS) Food Safety Inspection Service (FSIS) Foreign Agricultural Service (FAS) Agricultural Research Service (ARS) Forest Service (FS) Grain Inspection, Packers and Stockyards Administration (GIPSA) National Agricultural Library (NAL) National Agricultural Statistics Service (NASS) National Institute of Food and Agricultural (NIFA) Natural Resources Conservation Service (NRCS) Risk Management Agency (RMA) Rural Development (RD) ARS/OTT manages the patenting and licensing of inventions made by USDA scientists. OTT has delegated authority to make such decisions for all of USDA. ARS Mission To conduct research to develop & transfer solutions to agricultural problems of high national priority and provide information access and dissemination to: ensure high-quality, safe food, and other agricultural products assess the nutritional needs of Americans sustain a competitive agricultural economy enhance the natural resource base and the environment provide economic opportunities for rural citizens, communities, and society as a whole ARS Research Priorities 1) Conserve and restore Agricultural and Water Resources 2) Help America promote agricultural production and biotechnology exports while ensuring food nutrition (health) and safety (security) 3) Assess the nutritional needs of America 4) Agriculture, feed stock to fuel America 5) A sustainable competitive Ag economy Richard Brenner Marketing Assistant Administrator (AA) Vacant AA Robert Griesbach Marketing Specialist Deputy Assistant Administrator (DAA) Vacant Technology Transfer Coordinator Staff Vic Chavez DAA NAA, Tech Tran Coordinator Marketing Technician Dolores Shilkitus Natasha Snuggs Tech Tran Assistant Marketing Assistant Executive Support Staff James Poulos DAA BA, Tech Tran Coordinator Kate Baker DAA CRADA Thomas Moreland Management Analyst DAA Program Analyst Melissa Repoza Paula Reed Program Support Asst. Executive Asst Patent Staff Licensing Staff Gail Poulos AA Supervisory Patent Advisor (SAA) June Blalock AA Tech Licensing Coordinator Brian Nakanishi Licensing Specialist Peoria, IL Albert Tsui Beltsville, MD Byron Stover Diana Tucker Patent Advisor (MWA & NPA) Patent Advisor (BA, ERRC & Chemical) Licensing Specialist Randy Deck Evelyn Rabin Patent Advisor (SPA & MWA) (NAA, Patent Advisor SA, & Biotech) Vacant Licensing Specialist John Gaudet Licensing Specialist Sheri Whitehurst Legal Instruments Examiner Foreign Patent Specialist Albany, CA Howard Owens Carla Boettinger Patent Advisor (PWA) Program Analyst Elizabeth Sampson Deborah Penot Gernard Little Patent Advisor (PWA) Legal Instruments Examiner Sonya Domingo Kim Melton Legal Instruments Examiner Licensing Assistant James McMurtrey Licensing Assistant Vacant Patent Assistant Robert Jones Patent Advisor (SAA) Robin McCormick Legal Instruments Examiner Kelli Gantt Patent Assistant Kim Garner Tech Tran Assistant Bryan Kaphammer DAA NPA/SPA, Tech Tran Coordinator Tara Marostica Tech Tran Assistant Don Nordlund DAA SAA Tech Tran Coordinator Jason Bray Tech Tran Assistant David Nicholson DAA PWA, Tech Tran Coordinator Vacant Assoc. Tech Tran Coord. Kristin Kimball Tech Tran Assistant Thomas Valco DAA MSA Tech Tran Coordinator; Cotton Joe Lipovsky SRRC, Assoc. Tech Tran Coord. Annetta Ebelhar Tech Tran Assistant Renee Wagner DAA MWA, Tech Tran Coordinator Babette Davis Tech Tran Assistant 5 Historic ARS Contributions Remarkable discoveries • ARS Scientist Dr. Theodore Diener working in Beltsville, Maryland discovered the viroid, a singledstranded, circular RNA molecule. • Robert W. Holley discovered a class of low molecular ribonucleic acids -transfer ribonucleic acids (tRNAs). These are carriers for amino acids during protein synthesis. • Robert Davis discovered spiroplasmas, a previously unrecognized life form. A form of bacteria without cell walls, spiroplasmas cause diseases of crop plants and of insects including honey bees and are suspected in some human maladies. He also discovered pathogens against this life form. Historic ARS Contributions creation of industries • USDA botanist Frederick Coville started the world’s first successful blueberry research program. Blueberries are the second most popular berry in the United States. A multi-million dollar industry • USDA Participated in restoring the flavor and aroma lost during vacuum evaporation of concentrated orange juice. This a multi-billion dollar industry. • USDA Scientist Bill Doane cross-linked starch and synthetic polymers creating industry based on super absorbency. -- A multiple billion dollar industry. ARS Contributions Future industry? • USDA scientists created economical methods for extracting latex from guayule plants. Yulex is based in Carlsbad, Calif. It Just acquired $8 million in additional venture funding. Technology Transfer Goals of ARS • Transfer of technology is primary objective, not income • • • Facilitate research partnerships & adoption of federal research outcomes for broad U.S. public benefit Protect (patent) intellectual property primarily if it enhances technology transfer, Enhance U.S. economic development, global competition, and sustainable economic security Technology Transfer Mechanisms • Scientific publications, conferences, • • • • workshops, field days Public germplasm releases National Agricultural Library Information Staff - ARS public affairs, Ag Research Magazine, news releases, exhibits, web page. Transferring research materials to nonUSDA scientists • Research Partnerships • Patenting / Licensing CRADAs Cooperative Research and Development Agreement CRADA • partners a Govt. lab scientist with an outside partner • No Direct funding to Govt lab • Mutually beneficial research • Within goals of ARS • Expected outcome is intellectual property Cooperative Research and Development Agreement CRADA • Can lead to an exclusive license in technology • Confidentiality up to five years • A positive weighing factor in award of USDA SBIR • Patent expertise To partner with economic development entities to enhance the effectiveness & impact of technology transfer. To enhance the flow of ARS technologies to small businesses & encourage technology-based economic development. ATIP Network David Nicholson - PWA 510-559-5641 [email protected] Renee Wagner - MWA 309-681-6565 [email protected] Victor Chavez - NAA 215-233-6610 [email protected] James A. Poulos, III- BA 301-504-6421 [email protected] Donald Nordlund - SAA / MSA 706-546-3496 [email protected] Bryan Kaphammer - NPA / SPA 970-229-5528 [email protected] Thomas Valco - Cotton Technology 662-686-5255 [email protected] Victor Chavez - NAA 215-233-6610 [email protected] David Nicholson – PWA Renee Wagner - MWA 309-681-6565 [email protected] Bryan Kaphammer - NPA / SPA James A. Poulos, III BA Donald Nordlund - SAA / MSA Thomas Valco - Cotton Technology Goals of ATIP Provide complementary assets to ARS • • • • Guide local / regional business with research needs to the appropriate ARS scientist across ARS (CRADA opportunities) Triage business plans of private sector to seek well-qualified candidates for licensing / research partnerships with ARS Acquire marketing assessments on ARS technologies from 3rd party sources (business schools, entrepreneur programs, angel investors, etc.) for targeted marketing Coordinate “Technology Showcase” events to facilitate partnerships with private sector companies National Patent Committees Three “Subject Matter” Committees •Life Sciences •Chemical •Mechanical & Measurement Meet quarterly Patent Committee Criteria Q1: Is there current commercial interest in the invention or a high probability of commercialization in the future? Patent Committee Criteria Q1: Is there current commercial interest in the invention or a high probability of commercialization in the future? Q2: Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent? Patent Committee Criteria Q1: Is there current commercial interest in the invention or a high probability of commercialization in the future? Q2: Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent? Q3: Would the patent likely play a significant role in transferring the technology to the user? Patent Committee Criteria Q1: Is there current commercial interest in the invention or a high probability of commercialization in the future? Q2: Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent? Q3: Would the patent likely play a significant role in transferring the technology to the user? Q4: Would a patent be enforceable, i.e., is the invention drawn to, or does it employ a unique and readily identifiable material or device which could be bought or sold? Patent Committee Criteria Q1: Is there current commercial interest in the invention or a high probability of commercialization in the future? Q2: Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent? Q3: Would the patent likely play a significant role in transferring the technology to the user? Q4: Would a patent be enforceable, i.e., is the invention drawn to, or does it employ a unique and readily identifiable material or device which could be bought or sold? Q5: Is the invention of sufficient scope to justify patenting? Some FY 2008 Metrics Licenses (302 active) • • • • • Universities – 122 (40%) Non-profits – 16 (5%) Small Businesses – 100 (33%) Foreign businesses (no U.S. presence) – 8 (3%) Large businesses (includes foreign multinationals with major U.S. presence) – 56 (19%) CRADAs (232 active) • Small businesses – 127 (62%) • Outside state of researcher – 155 (72%) • Out of ARS Area of researcher – 129 (60%) Current Research of conducted at BARC • Pheromone extraction and identification • Honey bee protection • Agricultural plastics –PLA and keratin • Genomic Research –chickens, Cattle and pigs and plants • Food safety Questions ??? Thank you [email protected]