When to disclose
The Office of Technology Management should be contacted early in the development of the intellectual property in order to assure all IP rights are protected. Please contact the OTM office whenever you think your idea is patentable and you are considering a proposal, presentation or publication.
Potential for commercialization
Most university technologies are in an early stage of development and require significant investment to commercialize. In general, companies will not make this investment unless they have a proprietary position with the technology through a license agreement.
A research proposal in response to a Federal request is subject to the Freedom of Information Act once it is approved by the sponsoring Federal Agency. If the proposal includes details on a fully conceived idea, patent rights can be lost.
Required by Sponsor
If the work is funded by a Federal Agency, you are required to report the invention and the university is required to periodically file an Invention Report. Most other sponsors have similar requirements.
A publication or presentation describing an invention can be considered a public disclosure which will preclude most foreign patents immediately. In the US, a patent application can be filed within one year of a publication or public disclosure.
How to disclose
Inventions should be documented using the Invention Disclosure Form which provides details of the invention (including novel software), prior art, potential utility and companies that may be interested in developing and licensing the technology. Software or other works subject to copyright should be documented using the Software/Copyright Disclosure Form. Additionally, please document novel plant cultivars or germplasm, which would qualify for protection under the plant patent or plant variety protection (PVP) laws, using the Plant Variety Disclosure Form.
Once the appropriate form has been completed, please circulate it for administrative approvals, or send it to OTM for circulation.
OTM will review the disclosure for completeness, check the contract or grant associated with the technology, and make reports to the sponsor as required.
Once the disclosure is complete, a Licensing Associate will be assigned to work with the inventor/developer to conduct an Opportunity Assessment to evaluate the Technology Readiness, Market Potential and IP Strength. The result of the assessment leads to decisions regarding protecting and marketing the technology. An advisory committee may assist in the review process when appropriate.
When the Opportunity Assessment shows technology has commercial potential and technical merit, the Licensing Associate prepares a non-confidential summary, posts technology on web, develops a contact list, and begins marketing to identify potential licensees. If a prospective licensee is found, OTM will negotiate a license agreement generally requiring an upfront fee, royalty provisions, milestones, and reimbursement of patent costs, etc. For a start up company, an equity position in lieu of upfront fees may be negotiated.
If no interest or potential is confirmed within a one year time frame, most technologies will be returned to inventor for further development. For promising technologies which are well developed but not licensed, a cost/benefit review will be made to determine if technology should be protected and held in the patent portfolio to allow time for additional marketing and/or research.
When an invention, software, or other copyrighted work is licensed, the inventor(s) or developer(s) receive a share of the royalty income based on the IP Policy which is summarized below for an invention. Refer to the IP Policy for definitions and limitations, including additional information on Plant Variety Protection (PVP) disbursements.
- First, patent and commercialization expenses are recovered
- the inventor(s)/developer(s) receives 100% of the next $5,000 in royalties
- the inventor(s)/developer(s) receives 50% of royalties from $5,000 - $100,000
- then the inventor(s)/developer(s) receives 40% of royalties over $100,000
Protecting the technology
Provisional Patent Application
A provisional patent application may be filed to protect the technology for a one year period. The cost of the application varies depending on the complexity of the invention but is usually less than $2,000. The provisional patent provides a one year period for locating potential licensees and for further development of the technology
To maintain protection, a provisional patent application must be converted to a utility patent application at the end of the one year time frame at a cost in the range of $10,000 - $15,000. Because the University can only recover the costs of patenting through licensing the technology, the commercial viability of an invention will be an important criterion in deciding whether or not to file a regular US patent application (and foreign patents).
International Patent protection is very expensive ($50,000 - $100,000+) and is rarely undertaken unless there is a prospective licensee willing to fund the patent costs.
Patent prosecution takes at least two to three years and the inventor(s) and OTM must work closely with the patent attorney to insure that the information sent to the US Patent and Trademark Office is complete and timely.
Copyright protection is automatic so no additional steps are required to protect copyrighted works in the early stages. However, OTM will file for copyright registration for works that are to be commercialized.