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The University of ToledoPhone: 419.530.6225 firstname.lastname@example.org
What is intellectual property?
It is a category of intangible rights protecting commercially valuable products of the human intellect. In general, it typically involves trademarks, patents, copyrights, and trade secrets.
How to protect possible inventions?
Keep asking if your research results are patentable (i.e. novel, non-obvious, and useful). Keep good, reliable laboratory records of your research activities (For more information, see “Keeping a Notebook” on the Tech Transfer website).
What to consider before publishing or presenting research?
Before disclosing the results of research to anyone outside the university, it is important to ask the Patent Technology Associate in the Technology Transfer Office whether the document or disclosure contains any innovation or discovery that could be patented (For more information, see “Publish and Perish” on the Tech Transfer website).
What to do before sending or receiving research materials?
Contact the Technology Transfer Office before sending or receiving research materials. Confidential Disclosure Agreements and Material Transfer Agreements are important to protect future inventions.
When to submit an invention disclosure form?
Invention disclosures should be made well before presenting the discovery through publications, poster sessions, conferences, press releases, or other communication.
How to know if your discovery is an “invention”?
Researchers should submit an Invention Disclosure for all inventions and developments that may solve a significant problem and/or have significant value. If you are in doubt, contact Tech Transfer to discuss the invention and strategies for commercialization. Examples Include:
- Computer software
- Methods of treatment and diagnosis
- Medical or surgical procedures
- Medical devices and equipment
- Chemical compounds or compositions
- Methods of creating compounds or compositions
- Drugs and drug targets
- Plant varieties
- Research techniques and methods
- Man-made micro-organisms
- Methods of modulating biochemical processes
- Altered naturally occurring substances
- Research tools
- Biological Targets
What is the inventor’s role in assessment?
The Inventor(s) are required to present a fifteen-minute presentation to a patent committee. The University’s Technology Associate is available to assist with the preparation and review the presentation prior to the patent committee meeting.
How is the technology evaluated?
The technology is evaluated with the input of the inventor(s). Any necessary patent searches and market research is conducted to confirm the invention’s commercialization potential. The Technology Transfer Office will evaluate the novelty of the invention, patentability, and marketability of potential products or services, relationship to related intellectual property, size and growth potential of the relevant market, amount of time and money required for further development, pre-existing rights associated with the intellectual property, and potential competition from other products or technologies.
Are all disclosed inventions patented?
Based on the assessment, the University will determine whether to file for patent protection on the invention, which gives the holder of the patent the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. Patent protection is not sought for all inventions disclosed due to the high cost of filing ($6,000 - $10,000).
What is the inventor’s role in obtaining protection?
An outside patent attorney, who is familiar with the field but not likely to be an expert, will file and prosecute the patent application. Therefore, it is essential that the inventor(s) cooperate in the timely preparation and review of the patent application. The inventor(s) should provide the attorney with any details that make the invention novel, useful, and non-obvious and any other information that may be required by the attorney, to obtain meaningful patent protection.
What is the inventor’s role in marketing?
The Technology Transfer Office will conduct market research and identify candidate companies that have the expertise, resources, and business networks to bring the invention to market. The inventor’s active involvement in preparing information to be presented to companies can dramatically enhance the success of this process. The inventor(s) may be required to communicate with the respective licensee in order to discuss the technology in greater detail.
What is technology transfer?
Technology transfer is the process of transferring scientific findings from one organization to another for the purpose of further development and commercialization.
How is technology transferred?
Technology is transferred through a license agreement in which the University grants its rights in the defined technology to a third party for a period of years.
What happens if an existing business is identified as a potential licensee?
A representative from the Technology Transfer Office will work with the potential licensee to develop the appropriate financial and diligence terms to fully commercialize the technology. Please note that the University will ensure that the University retains the right to use and make the invention for research purposes so the inventor may continue his/her research.
What happens if the inventor is interested in forming a start-up company?
A representative from the Technology Transfer Office will work with the inventor to explain the following requirements, which are necessary to obtain a license from the University:
- Conflict of Interest – The inventor is required to submit a conflict-of-interest document through the Research and Sponsored Programs Office.
- Business Planning – The inventor is required to submit a business overview document to the Technology Transfer Office.
- Licensing - The inventor is required to license the technology from the University, and a representative from the Technology Transfer Office will work with the inventor to explain the requirements. The University inventor is not permitted to participate in this process and is strongly encouraged to hire legal counsel to represent the interests of the newly formed business. Please note that University inventors participating in a start-up company are expected to relinquish rights to any payments the University receives from the start-up company.