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Practical Patenting and Licensing

The CU Technology Transfer Office will present a seminar entitled "Practical Patenting and Licensing" on Wednesday August 14 at 9:00 am. There will be three 20 minute talks, with 10 minutes for questions and answers. Tami Jonas will present "Patent Basics". Dallas Martin will present "Licensing from a Commercial Perspective". Kate Tallman and Ken Porter will present "Technology Transfer at CU: Expectations and Responsibilities"."Patent Basics"

The basic steps in the patenting process will be presented. The talk will also discuss ways in which the inventor needs to assist with the patenting process by participating in filing and prosecuting the patent application and by careful recordkeeping related to inventorship, conception and reduction to practice of the invention. The presentation will also cover patent rights and requirements, including actions and events that can cause a loss of patent rights. Different types of patent applications will also be discussed.

Tami Jonas is a patent agent with Greenlee, Winner and Sullivan, P.C., Boulder, Colorado. Dr. Jonas holds a Ph.D. in Materials Engineering from the Massachusetts Institute of Technology and a BS in Materials Science and Engineering from Stanford University. Her professional experience prior to joining Greenlee, Winner and Sullivan includes working as a metallurgist for American National Can, Elk Grove Village, Illinois, and independent consulting.

"Licensing from a Commercial Perspective"
Dallas R. Martin is an attorney and consultant with over two decades of legal and business experience with an emphasis on intellectual property management, licensing and technology transfer. Mr. Martin has created intellectual property management programs for organizations ranging from high-tech startups to Fortune 500 companies. He has extensive experience in the identification and protection of intellectual property, licensing strategy and negotiation, technology commercialization and business development. He currently serves as Vice President, General Counsel and Secretary at SwitchPoint Networks, Inc, where he performs general legal consultation, corporate governance, intellectual property asset management, technology licensing, and other senior management duties for this early-stage broadband telecommunications company. He holds BA (with distinction and honors) and JD degrees from the University of Kansas.

"Technology Transfer at CU: Expectations and Responsibilities"
Commercialization of University inventions begins with an Invention Disclosure, matures into a marketable technology, usually though preparation of a patent application, and culminates with a license agreement, which, ideally, creates a long term relationship with a commercial partner and returns royalties, research funds, and industry expertise to the University. Success depends on factors such as the strength of the resulting patent, the market for the technology, and the level of participation by the inventor. We will discuss how to accomplish technology transfer efficiently, with an emphasis on the contribution that is required from each party -- inventor, patent agent, and licensing professional.Kate Tallman is IP Manager for the CU-Boulder TTO. Ms. Tallman earned a BA in Comparative Politics from Oberlin College and an MBA in Marketing from the Leeds School of Business at the University of Colorado. She has been most recently employed as the Director of Marketing, as well as Co-founder, of Roving Planet, a venture-backed company specializing in wireless LAN management.

Ken Porter is Interim Director for the CU-Boulder TTO. Dr. Porter earned Ph.D. (Chemistry) and MBA degrees from Duke University and a BS in Zoology from the University of North Carolina. He comes to CU from the Duke Office of Science and Technology, where he served as Associate Director.

Technology Transfer Office