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Patent Committee Presenters

ECU Patent Committee Presentation Guidelines

Each presenter will be given 15 minutes to present (No exceptions). If you feel you cannot fit your presentation into a 15 minute time limit, we strongly encourage you to create a document with supplemental information that can be handed out to patent committee members. Additional slides may be prepared for the question and answer session that will follow the presentation. During your presentation please make sure you address the following topics: Invention overview, proof of concept, funding for the project, collaborators, research and development, future plans, target market and overview of current competition. Each topic should be presented to the committee in a clear and concise manner.

Remember that the majority of patent committee members will not be experts in your field. Therefore, your presentation should be presented in a way that the significance and complexity of your invention can be understood by a lay person. All slide sets should be submitted to the Office of Technology Transfer at least 2 weeks in advance of the patent committee meeting date.

Below is a detailed guide on what your slide set should contain:

Slide 1: Title Page. List the title of your presentation, lead inventors name, other inventors and purpose for visiting the committee. For purpose, please put that this is a new invention and you are asking to have a patent filed.

Slide 2: Invention Overview. Provide an overview of what the invention does. The summary should be written in such a way that is can be easily delivered to a lay audience without losing the significance and importance of the invention. Easy to understand images and diagrams are encouraged.

Slide 3: Proof of Concept. Present data that highlights your proof of concept. You may add more Data slides, but you must remain in the 15 minute time limit. You will be asked to stop presenting once the 15 minute time limit is up.

Slide 4: Prior Art Overview. Please list how your invention/idea is different from existing prior art. You do not need to discuss all found prior art just the items that are most relevant.

Slide 5: Research Activity. Please list all funding and publications that will be used to support the development of this project (This can include present funding as well as funding you plan to apply for). Funding sources should include both internal and external funding. External funding should be denoted with a "*". Please list your most recent research publications, recent collaborations and conferences attended in the past 3 years. University collaborations both internal and external as well as companies should be listed.

Slide 6: Research and Development. Please list all research and development that is planned for the next year. Also provide any potential hurdles or obstacles that may occur as you move forward. Please list all future plans over the next year. Include planned experiments, publications, conferences, collaborations and other efforts that may help to move this technology into the commercialization phase. Also put emphasis on barriers that may prevent commercialization. Also, please list technicians or students that are currently working on the project. In addition to a review of the next year, give the committee an idea of how long you expect it to take before a commercial ready prototype will be available.

Slide 7: Target Market. Please describe the market that is being targeted. If any additional markets are applicable list those markets as well. List Companies that have the largest market share and if they have any products currently in this space. In consideration of filing broad patent protection, list all the countries and/or regions that would benefit from your product and provide a projected number of customers.

Slide 8: Overview of Competition. An analysis of competition should be provided. A list of advantages, disadvantages and description of each technology should be delivered in an easy to read table format.

 


Patent Committee Members

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East Carolina University

CONFIDENTIAL DISCLOSURE AGREEMENT

I understand that as a member of the East Carolina University ("ECU") Committee on Intellectual Property / Patents, I will be provided access to material by ECU that is considered confidential ("Confidential Information").I agree to maintain the confidentiality of such Confidential Information from disclosure to third parties without prior written permission from ECU.Confidential Information is any information relating directly or indirectly to information that is not generally known to the public and considered non-releasable without prior written approval that is provided to me in written, graphic, oral, or physical form including but not limited to specifications, scientific knowledge, know-how, processes, inventions, techniques, formulae, products, data, (materials) or other records.Confidential Information consists of, but is not limited to, any innovative concepts/ideas or trade secrets, disclosure of which outside of the parties hereto would result in irreparable damage to the respective Party.Therefore, due to the sensitive nature of Confidential Information, dissemination of Confidential Information shall be restricted in accordance with the provisions of this Agreement.

Confidential Information does not include information which I can demonstrate and document in writing to ECU which:

a.was in my knowledge or possession prior to disclosure by ECU or its assigns/inventors;

b.was public knowledge or becomes public knowledge through no fault of me;

c.was properly provided to me by an independent third party who has no obligation of secrecy to ECU or its assigns;or

d.was independently developed by me without reference to the Confidential Information from ECU;

e.is disclosed by me under a valid court order, by law, or information provided that I provide written notice to the ECU of such obligation prior to any such disclosure.

The term of this Agreement and obligation of confidentiality shall continue for a period of five (5) years.


Summary Overview

Membership

A minimum of three members is required but for purposes of inclusivity the Committee consists of a primary and alternate representative from many Schools or Colleges on campus plus other key administrative units.Preferably, Committee members should have technical or scientific expertise that will contribute to the assessment of new inventions and technologies within their discipline.Knowledge of intellectual property matters and/or commercialization is desirable but not necessary.Training is provided to all new members.

Committee membership represents the following units:Division of Administration &Finance, College of Allied Health Sciences, Thomas Harriot College of Arts &Sciences, College of Business, School of Dental Medicine, College of Education, Faculty Senate, College of Fine Arts &Communications, College of Health & Human Performance, College of Human Ecology, College of Engineering and Technology, Information Technology and Computer Services (ITCS), Brody School of Medicine, College of Nursing, Office of Technology Transfer, and the Small Business Technology Development Center (SBTDC). The Office of the University Attorney shall serve as legal advisor, when necessary.Senior leadership for each unit is responsible for appointing primary and alternate representatives to the Committee.The Chair of the Faculty shall serve as primary member for the Faculty Senate and his/her delegate shall serve as the alternate.

Institutional Officer to Whom the Committee Reports

Associate Vice Chancellor, Innovation and Economic Development

Standard Meeting Time

Meetings are held the second Thursday of the month throughout the calendar year if timely subject matter review is required. Additional meetings may be called when necessary.

Term of Office

Members serve a twelve month appointment, renewable based on continued interest and ability to serve on the Committee.

Attendance

Meeting attendance is noted in the minutes.Repeated absences will result in notification to the appropriate Dean and dismissal from the Committee.

Meeting Minutes

Minutes are recorded for every meeting and are retained according to policy.

Committee Purpose and Responsibilities

Review and recommend to the Chancellor or his delegate the procedures for the implementation of the University Patent Policy;resolve questions of invention ownership that may arise between the Institution and its faculty, staff, students or volunteers, or among individuals;recommend to the Chancellor the expenditure of the patent royalty fund;and make such recommendations as are deemed appropriated to encourage disclosure and assure prompt and expeditious handling, evaluation, and prosecution of patent opportunities;and protect the interests of both the University and the public.

Patent Committee Procedures

Jurisdiction

The Patent Committee has exclusive jurisdiction of all matters related to University patents.

Accordingly, the Patent Committee shall review and consider Reports of Invention (ROIs) for evaluation of new inventions for possible patent protection based on criteria established by patent law and available resources. The Committee will also review and consider progress made in development of inventions requiring subsequent patent activity, such as filing of non-provisional, PCT or National Phase (international) patent applications.

Policy Review and Amendment

The Patent Committee will make written recommendations to the Institutional Officer regarding any aspect related to the Patent Policy PRR POL10.40.01, including without limitation distribution of revenues received as a result of licensing activities.Exceptions to the Policy may be approved by the Institutional Officer if deemed to be in the University's best interest and consistent with UNC policies and Federal and State law.

Federal and State Law Compliance

On an annual basis the Patent Committee shall review compliance reports prepared by the Office of Technology Transfer (OTT) in response to 37CFR401 (Bayh Dole Act).

Dispute Resolution

Instances in which questions of invention ownership arise between the University and its faculty, staff, students, volunteers or among individuals shall be resolved by review of written requests made to the Chair of the Committee. A five (5) member Dispute Resolution Panel shall be appointed by the Chair to address the dispute with at least three (3) panel members selected from membership of the Patent Committee and additional support provided by patent counsel or another patent expert.The Panel shall elect a chair from its membership.In the event the dispute involves the Chair of the Patent Committee, then the Institutional Officer or his/her superior officer shall appoint the Panel.

The Patent Committee may elect to conduct a hearing or may make a recommendation based on the written record, provided all the parties to the dispute are given an opportunity to present evidence and arguments in support of their respective positions.The hearing shall be conducted in accordance with the procedures adopted by the Chair of the Panel.A party may be accompanied at the hearing by a non-participating advisor.

Patent Committee Meetings

The Chair of the Patent Committee or his/her designee shall prepare the Committee agenda and distribute the relevant review materials to the Committee via secure server at least one full week prior to each meeting.Committee meetings shall consist of an open session to discuss matters of a non-confidential matter such as announcements and a closed session for discussion of confidential materials. Closed sessions must meet the criteria of NCGS143-318.11, generally consider 1) review and approval of minutes, 2) confidential announcements from OTT, 3) review of new inventions, and 4) review of progress made on existing inventions requiring subsequent patent activity, such as filing of non-provisional, PCT or National Phase (international) patent applications and maintaining issued patents.The OTT Director shall serve as ex-officio member of the Committee and OTT shall administer and provide support for the Committee.

 

Review of New Invention Disclosures

The inventor(s) will provide a brief overview of the invention which should address key elements important for assessing scientific, technical, market and patent relevance.Inventor presentations should be limited to 15 minutes, followed by 15 minutes of Q&A with the Committee.Ideally, Committee review and assessment of the invention should be complete in no more than 45 minutes.The Committee may utilize appropriate decision making tools such as check lists and / or software assessment applications to facilitate the evaluation process.The Committee's recommendation shall be determined by majority vote of the representatives in attendance at the meeting, provided a quorum is present.Absent a quorum, a vote may be made by those members present and later validated on-line by the remaining committee members sufficient to meet a quorum. Following the meeting, OTT shall promptly notify the Inventor orally, followed in writing, of the Committee's recommendation.Committee recommendations may be in the form of one of the following options:

1) Approval to file a provisional patent application;

2) Approval to file a U.S. non-provisional patent application;

3) Approval to file a PCT application;

4) Request for additional information;

5) Withhold approval;

6) Offer to return the invention to the inventor under the terms of ECU's Invention Release Agreement;

7) Combination of two or more of the above;

8) Other

Review of Subsequent Patent Actions

The Committee will also review and consider progress made in development of inventions requiring subsequent patent activity, such as filing of non-provisional, PCT or National Phase (international) patent applications.The inventor(s) will provide a brief overview of progress made with the invention, such as advancement of the science or key technical areas, recent grant support, relevant new publications, assessment of competitive products, and a plan for future R&D.Inventor presentations should be limited to 15 minutes, followed by 15 minutes of Q&A with the Committee.Ideally, Committee review and assessment of an invention should be complete in 45 minutes.The Committee may utilize appropriate decision making tools such as check lists and / or software assessment applications to facilitate the evaluation process.The recommendation shall be determined by majority vote of the Committee in attendance at the meeting, provided a quorum is present.Absent a quorum, a vote may be made by those members present and later validated on-line by the remaining committee members sufficient to meet a quorum. Following the meeting, OTT shall promptly notify the Inventor orally, followed in writing, of the Committee's recommendation.Committee recommendations may be in the form of one of the following options:

1) Approval to refile provisional application with loss of original priority date;

2) Approval for conversation of the provisional application to a U.S. non-provisional application;

3) Approval to file a PCT application;

4) Approval to enter into National Phase filing with countries specified;

5) Request for additional information;

6) Withhold approval;

7) Offer to return the invention to the inventor under the terms of ECU's Invention Release Agreement;

8) Combination of two or more of the above;

9) Other


Expedited Review

In circumstances when expedited review is necessary due to imminent public disclosure of an invention prior to the next scheduled meeting of the Committee then, at the discretion of the Chair, an expedited review of the invention may occur. Expedited reviews shall be performed by a subcommittee assembled by the Chair and consisting of a minimum of three voting members of the Committee.One member of the sub-committee shall be a representative from the Office of Technology Transfer.The sub-committee's recommendation must be unanimous and be conveyed to the full Committee at the next meeting of the Committee.Expedited motions shall be in the form of one of the following options:

1) Approval of a Provisional Patent Application;

2) Request for Additional Information;

3) Withhold Approval;

4) Offer to return the invention to the inventor under the terms of ECU's Invention Release Agreement;

5) Combination of two or more of the above;

6) Other

Conflict of Interest

The Committee shall query its members prior to the beginning of each meeting to determine whether any real or perceived conflicts of interest may exist between a Committee member and an inventor/invention under review. At the Committee's discretion a member may remain for the review of the invention or be recused, depending on severity of the conflict of interest.