Technology Transfer Process
Upon receipt of a complete invention disclosure form, the university will conduct an evaluation to fully assess the potential patentability and marketability of the invention. Below is a flowchart of the evaluation process, along with a description of the primary stages of the evaluation. It is expected that decisions will be made within the indicated time periods; however, unforeseen circumstances may require adjustments to the time periods in some cases. For more information on the evaluation process, please contact your campus technology transfer office.
A thorough review of the development history is conducted to determine, among other things, ownership of the invention, existence of any contractual rights and obligations that may impact the university’s ability to patent and/or commercialize the invention, and any potential bars to patenting. In addition, an evaluation of the technology’s stage of development is conducted. Determining whether the technology is just a concept or a complete invention influences when, and if, a patent application will be filed.
Intellectual Property Analysis
An evaluation is conducted to determine the novelty of the invention and identify any issues that may impact the patent decision. A preliminary search of patents and literature is conducted to identify prior art that could impact the scope of a patent application. An assessment is also conducted of any public disclosures of the invention to determine their potential impact on patentability. Public disclosures could be in the form of articles, slides, poster presentations, thesis, electronic information, and grant proposals and awards. If the IP analysis indicates that novelty is clear and can be defined broadly, the university is more likely to consider filing a provisional patent application and conducting a market study.
A comprehensive review of the potential market for the invention is conducted. This analysis looks at the advantages and disadvantages of the invention as compared to existing products/services in the marketplace. Market size and the ability to capture market share are also investigated. During this process, other uses and markets for the invention may be identified. The market analysis will also consider issues that may impact the value of the technology to a potential licensee, including development needs and the associated costs. The goal of this analysis is to determine the market strength of the invention and determine whether IP protection would likely result in a licensed, commercial product. If the market is small and prospects for licensing are low, investing in a patent application may not be advisable.
At certain time intervals, or when a patent filing or other deadline is approaching, the university will review all the available information to determine whether to proceed with patenting and/or commercialization of the technology. All factors that may impact the potential to generate a return of an investment in the technology will be taken into consideration. At each decision point, possible outcomes include file a provisional patent application, market, or continue to market, the invention to potential licensees; hold for additional research; waive/offer the invention back to the inventor; or close the file and move it to inactive status.
Market to Potential Licensees
This is one of the most critical elements in making a decision whether to pursue patenting and commercialization of a technology. At this stage, the university will contact potential licensees to determine their interest in taking a license to the invention. If interest in the technology is expressed by a company, the university will share confidential information with the company only after a provisional patent application has been filed and/or the company has signed a non-disclosure agreement. The decision to file a non-provisional patent application only makes sense if the university believes that the patent will be licensed and revenues will come back to the university to, at a minimum, cover the expenses incurred with patenting. Therefore, a clear potential market and strong indication of being able to find a licensee are needed prior to filing a non-provisional patent application.
Filing for a patent
Provisional patent applications can be filed in-house by the Office of Intellectual Property Administration. If a decision is made by the university to file a non-provisional patent application, outside patent counsel will be retained and the university will cover the costs of preparing and filing the application. As an inventor, you will be expected to complete and sign all necessary documents and work with the university and its patent counsel to ensure that the full scope of the invention is contained in the patent application.
If a company expresses interest in taking an option to license, or entering into a license agreement, the university will negotiate the terms of such agreement. As an inventor, you will be notified that a company has expressed interest and you will be kept abreast, with an opportunity to provide input, as the negotiations proceed.
Receipt of Revenues
In accordance with the university’s collected rules, an employee of the university is entitled to thirty-three and one-third percent (33 1/3%) of revenues the university receives through the transfer of rights in the invention (i.e. license, option, etc.). For plant varieties, the inventor shall receive ten percent (10%) of such revenues. The complete policy on distribution of revenues, and other policies related to patents, can be found in section 100.020 of the university’s Collected Rules & Regulations.