Commercialization and Licensing Process
Observations and experiments conducted by faculty, staff and students may result in discoveries or inventions that could be commercially marketable.
Discovery : Observation of a phenomena, Identification of a biochemical pathway, Identification of a new species of plant
Invention : Method of treating a disease, Analytical method to purify a chemical entity from a new species of plant, New computer software written
Disclosures should be filed as early as possible. The disclosure should clearly describe the invention or discovery and how it differs from what already exists or is in practice (we call this prior art ). The disclosure also identifies and quantifies the advantages of the discovery or invention over prior art, as well as provide applications and uses for the invention, potential markets, and companies the inventor thinks could be interested in further developing or licensing the technology.
Our office works to determine what sort of protection the intellectual property warrants, and if any related research and development activity is going on elsewhere. We also take into account potential benefits and novelty, the market size for such an invention/discovery and any competing products. The most successful commercialization efforts involve the collaboration of the TTO and the inventors over the life of the technology, keeping each other informed of progress related to research, marketing, and the IP protection strategy.
The Tech Transfer Office primarily works with Patentable Inventions and Discoveries, but Copyright applies in some cases. We also use certain types of Agreements to protect IP.
- Patents allow the right to exclude others from using, selling or offering to sell the claimed invention for the life of the patent, typically 20 years from the date of filing the first application. Patents are awarded to the first inventor to file. For this reason, it is very important to disclose your invention to the Technology Transfer Office as early as possible and before any public disclosure occurs, which can impact our ability to file for foreign patent protection. Keep in mind that patents in ex-US countries may be important to potential licensing partners. The Patent Office determines if an invention is novel, non-obvious and useful before they grant a patent. The examination period for a US patent application takes several years, depending on the type of application filed and the caseload of the patent examiner.
- Copyright protects authorship. Only the author can grant the right to reproduce the work, prepare derivative works and distribute copies of the work. Registration of one’s copyright is not required to claim the copyright, but it is beneficial in that it establishes a public record of authorship and is necessary to file an infringement suit.
- Agreements such as Non-Disclosure or Material Transfer Agreements protect intellectual property by establishing the terms and conditions by which information or material that is shared between parties can be utilized. Non-Disclosure Agreements also protect confidential information from becoming public and affecting patentability in certain jurisdictions.
The Technology Transfer Office works to identify companies and industries that would be good matches for inventions and discoveries. Inventors can help increase the likelihood of successfully marketing their technologies by sharing their industry contacts. Ongoing communication between inventors and technology commercialization managers is crucial. The TTO promotes technologies that are available for licensing on its website and through social media. The Technology Commercialization Managers are focused on networking business development relationships in their related areas and building relationships with local and national venture capital groups.
Three main strategies for licensing are used by the TTO.
- Option Agreements allow companies to review and assess technologies for a limit period of time, during which they cannot develop or sell products. The option may be converted to a license agreement if the company’s assessment leads them to determine that the technology has a reasonable chance of success in the marketplace.
- License Agreements are executed when a company is interested in developing or manufacturing a technology and offering a product for sale. These can grant non-exclusive or exclusive rights, depending on the technology and the company’s interest.
- TTO provides assistance in Startup formation when a technology is disruptive to the market and/or has a broad scope of patent protection (i.e. a “platform technology”) making it more likely to generate interest from investors.