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Overview of Technology
Transfer at ECU
Introduction
Fulfilling the institutions goal of engaging
in research and creative activities stimulates a
dynamic environment to develop new innovations that
will ultimately benefit the public good. Transfer
of these innovations to organizations capable of
developing new products and processes for public
benefit is the essence of “technology transfer.”
Technology transfer is also gaining increasing interest
among institutional and regional constituencies
as a method to promote local, regional, and national
economic development. The process of technology
transfer involves five general steps:
-
Invention Disclosure
-
Evaluation of the Invention
-
Filing for Patent &/or Copyright
-
Marketing
-
Licensing
I. Invention Disclosure Process
Informing the University about your invention
will trigger the technology transfer process. Informal
disclosures, known as pre-disclosures
will allow OTT to initiate a preliminary evaluation
of the invention. However, before a patent application
can be filed or a license agreement finalized, a
formal disclosure must be made by filing a Report
of Invention (ROI) form with OTT. A formal
disclosure will initiate a review by the University
Committee on Intellectual Property/Patents.
Among other things, the Committee is charged with
assuring prompt and expeditious handling, evaluation,
and prosecution of patent opportunities, and resolution
of questions about invention ownership.
Invention Pre-Disclosure
An invention pre-disclosure is an informal
communication between the inventor(s) and OTT’s
licensing staff to discuss the invention/idea. OTT’s
staff will solicit information about the invention
that will allow them to initiate a patentability and
marketability search. The licensing staff will also
try to identify any plans for publishing or submitting
a grant application or otherwise make a public disclosure
of the invention, as this may have an effect on the
University’s ability to obtain patent coverage.
With the assistance of the inventor(s), OTT will consider
the findings of its research in deciding its next
course of action. Possible actions may include:
-
Preparation and submission of a
ROI form, if sufficient merit is recognized;
-
Solicitation of outside assistance
to assess the invention;
-
Recognized as premature for formal
disclosure; recommend gathering additional research
data;
- Recommend publishing data if insufficient merit
is identified based upon competitive research or
technologies
Invention Disclosure
An invention disclosure is the formal process
of disclosing the invention to the University by filing
a ROI with OTT. The ROI will solicit relevant information
about the invention including information necessary
to determine whether the invention is novel, useful
and non-obvious. In addition, the ROI will seek information
from the inventor about potential markets for and
usefulness of the invention. The individual(s) submitting
the disclosure will be invited to make a brief presentation
to the University Committee on Intellectual Property/Patents.
The Committee will collectively consider the ROI,
a summary report previously prepared by OTT, the discussion
of the invention by the inventor(s), and the enthusiasm
of the inventor(s) in making a determination on how
to proceed with the disposition. Committee recommendations
may range from the following:
-
File for patent or copyright protection;
-
Market the invention to potential
licensees with or without the benefit of intellectual
property protection;
-
Return the invention to the inventor(s);
-
Recommend establishment of a new
business entity (start-up) to develop and market
the invention.
-
Recommend that the data be put
in the public domain by publication
Timing of an Invention Disclosure
To avoid problems of premature publication
of inventions which may result in loss of intellectual
property rights, it is recommended that the timing
of a disclosure be made according to the following
table. Please note; however, that in the event the
invention has already been publicly disclosed, there
may still be value and opportunity available to
license the invention. Consequently, discussion
with OTT staff is still recommended.
| Invention Development Stage |
Timing of Submission of Disclosure |
| Innovation: what to do |
Premature |
Conception: how to do it
|
Best |
| Reduction to Practice: make it work |
Very Good |
| Preparation of a Paper: describe it |
Good |
| Submission of a Paper or Abstract: |
Poor |
Immediately Prior to Public Disclosure |
Poor |
| Post-Publication or Disclosure |
Very Poor:
foreign patent rights lost
|
Courtesy of UNC-CH
II. Evaluation of the Invention
The evaluation of a technology, or triage
as it is often called in the technology transfer
field, begins with OTT gaining a thorough understanding
of the invention. Information is gathered from
the ROI, from discussions with the inventor(s),
and from past or planned publications relating
to the invention or its field. Research is also
performed from other sources such as the Internet
and library resources. A summary of this information
is presented to the University Committee on Intellectual
Property/Patents for a determination on whether
to pursue intellectual property protection and/or
possible commercialization options. The inventor(s)
are encouraged to speak with OTT’s licensing
staff early on to allow OTT to perform background
research and to advise the inventor(s) about issues
that could affect the chances for successful commercialization.
Items Assessed During Triage:
-
o Already published? (only U.S.
protection available)
o Manuscript submitted with
pending deadline for patenting?
-
o Sponsored research agreements?
o MTA’s that will need
to be reviewed?
-
Intellectual Property Protection
o Appropriate form of IP? (Patent,
Copyright, Trademark or Trade Secret)
o Results of an OTT patent search
or trademark search
o Results from a professional
search service
o Patent attorney opinion (if
necessary)
-
o In vitro data available?
o Animal or human data available?
o Needs for further development
-
Potential Market Information
o Current need met by the invention?
o Current alternative methods
or devices?
o Platform technology or stand
alone/component?
o Provide a competitive advantage?
o Availability of a licensee
-
Other Benefits to the University,
Region or State
o Positive public relations
Should the University Committee on Intellectual
Property/Patents consider an invention worthy
of fling a patent application, then OTT will manage
this with the assistance of competent of legal
counsel.
III. Filing for Patent and/or Copyright
Filing of intellectual property protection
(patents, copyrights and trademarks)
is considered solely for the purpose of establishing
proprietary rights in an invention if commercialization
of a product will benefit from protection. The
cost to obtain intellectual property protection
varies with each invention and with the type of
protection sought. For instance filing for copyright
is a relatively simple and inexpensive process.
Copyright application forms are available on-line
at www.loc.gov
and the cost to submit an application is approximately
$35. It takes just a few months for a copyright
application to be approved. Patent filing, on
the other hand, is a complicated process that
should only be handled by a licensed patent attorney
representing the University. The patent prosecution
process may take several years to conclude and
the cost can easily approach $25,000 - $30,000.
Accompanying coverage in other countries can easily
reach several $100,000’s. Accordingly, patents
may only be filed after careful review and consideration
by the University Committee on Intellectual Property/Patents.
IV. Marketing
Marketing of University inventions may
occur even if the invention is not patentable.
Some inventions such as biological materials,
cell lines and hybridomas may be considered valuable
to the research community, and can be licensed
to a research reagent catalog. In addition, copyrightable
educational tools and software programs are also
licensable. The typical process of marketing a
University invention follows the steps listed
below:
-
Identification of potential
licensees: Inventors are interviewed and potential
markets are identified for the commercialization
effort. Inventors are also asked to identify
contacts they might already have in the targeted
markets. Often these are the best leads. Thorough
Internet searches are performed to complete
the list, and identify the most appropriate
individuals to contact within the organization.
University resources, such as Joyner and Laupus
Libraries are leveraged to assist in such searches.
-
Development of a non-confidential
marketing summary: OTT staff in conjunction
with the inventor create a one page summary
to be sent either electronically or via mail
to selected contacts within potential licensee
companies.
-
Electronic posting of marketing
summaries: The summaries are immediately posted
to the OTT website and to qualified internet-based
technology licensing sites.
-
Direct contact with potential
licensees: Identified corporate business development
and R&D personnel are contacted via telephone
to probe their organization’s needs and
to determine initial interest in the available
technology. Marketing summaries are immediately
provided in an electronic format to facilitate
circulation within the organization. OTT staff
members also attend tradeshows and networking
meetings to meet with the business development
community.
-
Follow-up: If no response is
noted from the company then follow-up contact
via telephone is made to stir interest or answer
any remaining questions. The goal is to get
a confidentiality agreement in place to allow
for more detailed analysis of the technology
and to allow for contact with the inventor.
In the event the company declines further interest,
then information is gathered to explain why;
this helps with future marketing efforts.
-
Marketing efforts continue for
as long as the technology file is considered
active.
V. Licensing
Licensing of University inventions may take
the form of an exclusive license, a non-exclusive
license or a field-of-use license to either an
established business or to a new business entity.
In addition, the licensed invention may be for
a patentable invention, a copyrightable invention
or for know-how. Regardless of the type of technology
or the type of licensee, the primary goal of the
University is to make the invention available
for the greatest public benefit.
Exclusive License
An exclusive license provides the licensee
with the exclusive rights in an invention. This
means that the University may not grant these
same rights to another entity without prior written
approval of the licensee. Exclusivity is not all
inclusive. For instance exclusive rights may be
restricted to a geographic area, to a particular
field of use, or for a limited period of time,
as defined by the license agreement.
Non-Exclusive License
A non-exclusive license allows the University
to grant rights to make, use, have, made or sell the
invention to more than one business entity. Typically,
non-exclusive licenses have lower financial terms
than exclusive licenses.
Field of Use License
A field-of-use license grants rights in the invention
only to specific fields identified in the license
agreement. For instance, it is possible to provide
an exclusive field-of-use license for an educational
tool to a company whose market interest is primary
schools, while granting another field-of-use license
to a different business entity for higher education
markets. This effectively allows the University to
grant a license to several different companies, each
with an expertise in a different niche market, thus
expanding its public benefits to a larger audience.
Know-How License
A know-how license grants the licensee the right
to practice the unpublished knowledge necessary to
make a given product, even if that product isn’t
protected by patent coverage. For instance, the University
may license an unpatented monoclonal antibody for
sales in a research regent catalog but the knowledge
required to make the antibody must be conveyed separately
under a know-how agreement.
License Terms
License terms vary with each license agreement.
In particular, financial terms vary according to the
target market, industry, stage of development of the
invention, and financial wherewithal of the licensee.
However, to assure the University that the licensee
will practice the invention with diligence and good
faith, certain terms are universally required. Typical
license terms include:
- Exclusivity: defines whether the license is exclusive,
non-exclusive or restricted in some other manner;
- Definition of the license product or rights conveyed
to the licensee;
- Financial Terms may vary on type of licensee
and may include any or all of the following
o Established Licensee: license fee, milestone
payments, annual fees, royalties based on net sales;
minimum annual royalty, etc.
o Start-up Business Entity: Typically start-up businesses
have fewer financial resources available for licensing.
Consequently equity in lieu of licensee fees are
generally considered in addition to milestone payments,
annual fees, royalties based on net sales; minimum
annual royalty, etc.
- Diligence Milestones: to assure that the licensee
is actively developing the product for commercialization,
diligence milestones are provided as incentives.
Milestones generally require the licensee to achieve
a milestone by a pre-defined date; payment of fees
is also typically associated with the milestone.
- Reporting requirements: usually involve annual,
semi-annual or quarterly reports
In addition to the above, license agreements typically
preserve the right of the inventor to perform continuing
research in his/her field and to publish accordingly.
The University should also preserve its right to use
the invention for its own research, scholarship or
clinical activities.
Distribution of License Income
Distribution of all royalties and other income
from intellectual properties owned by the University
shall take into account all direct expenses related
to prosecuting and maintaining a patent, including
fees for outside legal counsel, which shall be reimbursed
to the Office of Technology Transfer from the gross
receipts related to the invention. Remaining income
(net receipts) shall be distributed as follows:
| |
1st
$1000
(Gross Receipts)
|
Next
$100,000
(Net Receipts)
|
Greater
Than $101,000 (Net Receipts) |
| Inventor(s) |
100% |
50% |
40% |
| Department(s) |
n/a |
15% |
15% |
| School/College(s) |
n/a |
5% |
5% |
| Invention
Management Fund |
n/a |
25% |
30% |
| Invention
Management Fund |
n/a |
5% |
10% |
|
