Transferring Research Beyond Academia

OTM actively reaches out to faculty to encourage disclosures of new innovations by submitting an invention report, which is a written statement outlining a new innovation and documenting the circumstances of its development. The report also identifies potential applications, and which companies might be interested in licensing the IP if that information is known. There are separate forms for reports of new inventions, software, and mobile apps. A technology manager is assigned to guide a disclosure through the technology transfer process. Submitting an invention report does not by itself protect the intellectual property. Only a patent or copyright can do that. 

Through the screening review process, the decision to pursue or abandon commercialization efforts for a technology is made. After receiving a disclosure, OTM’s staff conducts a business- case analysis, called a screening evaluation, with a recommended course of action on commercialization. The results of the screening evaluation, which include patent searches, marketplace analysis, and identification of possible licensees, are then shared with the inventors.

For technologies the OTMs decide to patent, an initial patent strategy is identified. In most cases, an independent patent law firm is hired to prepare and prosecute the patent application.

OTM staff engage in a variety of activities to advocate for University research and intellectual property. Considerable time and resources are devoted to understanding market needs and contacting potential partners either to license existing technologies or to cultivate relationships, such as sponsored research, that may lead to licenses. 

The licensing process begins with negotiations with interested industry partners, including start- up companies in which term sheets summarizing the essential business terms of the licensing agreement are exchanged

Other common ways of transferring University intellectual property include:

• Academic and Research-Use licenses: often used for software, biological materials and data sets; allows uses by other institutions for academic purposes only

• Creative Commons licenses: often used for literary and artistic works; has a matrix of options for both academic and commercial uses

• Open Source licenses: often used for software; makes source code freely available for commercial and non-commercial use under certain conditions

All of the above licenses retain copyright for the creator and stipulate proper attribution. 

If OTM decides not to pursue or to discontinue pursuit of commercialization efforts on an innovation, we will release the invention and may assign the University’s ownership rights to the inventors if the inventors are interested in pursuing a patent and commercializing the innovation independently. For any federally-funded invention, the federal agency must approve the assignment, which may take a few weeks or months to finalize.

Yes, findings can still be published, and disclosure to OTM does not alter your publication timetable. However, because publishing can affect the ability to obtain a patent, it is best to submit a disclosure prior to publishing or communicating your findings in a public forum.

It is best to submit a disclosure between eight and 12 weeks before publication so that, if necessary, actions can be taken to protect both U.S. and foreign rights. Once publicly disclosed, an invention may not be patentable. To be safe, inform your OTM of any imminent or prior 

Typically you meet with OTM staff to discuss your innovation and clarify aspects of the disclosure. 

During the patenting process, you will speak with the patent attorney, review drafts of documents, and sign assignments and other legal documentation. OTM guides you during the process.

You are often quite involved in the early stages of recruiting commercial partners and licensees, as your expertise is often critically important. 

Your role in licensing is an extension of your role in marketing since their expertise is often critically important to transfer the technology and related know-how to the licensee. The University license places only nominal obligations on the part of the inventor to assist in the transfer of the licensed technology. When more than minimal time and effort is necessary, the licensee will negotiate a separate consulting arrangement with the inventor.

You can still continue research using a licensed invention, even if it is exclusively licensed. The University will always retain the right to use licensed inventions in academic research and teaching.

OTM reviews the terms of the contract, sends a copy of the disclosure to the company, determines the company’s interest, and takes action based on the company’s decision.