What to Expect to Expect at Each Stage
- The University takes pride in the expertise of its faculty in pursuing ground-breaking research in many “up and coming” areas, such as liquid crystal pathogen detection.
- Available Resources
- The University provides some funding for faculty interest in commercializing intellectual property developed while at the University. In addition, there are many external funding sources.
- Intellectual Property Policy
- The University's Intellectual Property Policy outlines the rights and responsibilities of the University and its faculty inventors with regard to intellectual property developed using University resources and/or on University premises.
Innovation, Invention, Discovery
- Many of the world’s greatest innovations were developed at universities as products of faculty research. The University encourages faculty to pursue innovative research projects.
- Disclosure is an extremely important step in the commercialization process. The Office of General Counsel (OGC) must file with the US Patent and Trademark Office (“USPTO”) any inventions, innovations, or discoveries within one year of publication or other public disclosure. It is good practice for University faculty to meet with the OGC before publicly disclosing any potential invention, innovation, or discovery to determine the best method for intellectual property protection, if at all.
- The Invention Disclosure Form serves as the disclosure mechanism for faculty to notify the OGC of their inventions. Faculty members must submit the above form to the OGC prior to any public disclosure of an invention to ensure the fullest extent of protection of the University's rights in the invention. Such timely disclosure allows the University to pursue intellectual property filings and also explore possible partnerships to commercialize the invention.
- Any research funded by the federal government must comply with the requirements set forth in the Bayh-Dole Act, 35 USC Sections 202 through 205. One such requirement is the submission of an Invention Report to the funding agency within two months of initial disclosure of an invention. If you are the recipient of a federal grant and have used the funding to carry on research at the University that yielded an invention, please submit an Invention Report to the OGC.
Protection via Patent/Copyright
- Once an invention, innovation, or discovery is disclosed to the OGC, the Chief Technology Transfer Officer will conduct due diligence on the proposed invention to ensure that no prior art exists or interferes with the Inventor’s claim(s). The Officer will then determine whether or not to file an application with the USPTO based on the due diligence findings. Once an application is filed, the USPTO will timely notify the OGC and the Inventor of its decision. For more information on the USPTO’s Patent Process, visit http://www.uspto.gov/patents/process/index.jsp.
- To perform a preliminary patent search on issued patents, visit http://patft.uspto.gov/netahtml/PTO/search-bool.html. To search for published patent applications, visit http://appft.uspto.gov/netahtml/PTO/search-bool.html.
- Questions for Review When Processing a New Invention Disclosure
- Technology commercialization can take many forms. The two most common routes to commercialization are licensing and spin-out companies.
- Licensing is the granting of permission, under contractually-defined terms, to use intellectual property rights, such as patents, copyrights, or trademarks. Licensing creates the opportunity to earn royalties on intellectual property.
- A spin-out company is a newly-formed entity created around proprietary technology. Spin-outs are important sources of technological diffusion in high technology industries.