Technology Transfer and Commercialization Process
The journey of a novel technology from the bench to the market involves multiple steps. Whether
you are creating unique technologies, developing them for industrial use, or commercializing
the resulting products, it's important to understand the life cycle of innovation.
Read about the Technology Transfer Process to see where your innovative efforts fit now and in the future.
RESEARCH
Observations and experiments during research activities often lead to inventions.
It's important to keep good, reliable laboratory records of your research activities
for several reasons. Remember, to contact the Technology Transfer Office before you send or receive any research materials outside the University.
Before sharing the results of any research, or publishing it's important to ask the
Technology Transfer Office whether the document or disclosure contains any innovation or discovery that could be patented.
PRE-DISCLOSURE
The inventor(s) should contact us early to discuss the invention, in order to determine
if the timing is appropriate to submit an invention disclosure form. Multiple researchers often contribute to an invention, and determining inventorship is important because the law specifies that only those who have made independent,
conceptual contributions to an invention are inventors.
Inventors can also assist at this step by doing a thorough prior art search at www.uspto.gov. To learn how to conduct a general patent search on the United States Patent and
Trademark website please contact the University’s Patent Technology Associate.
INVENTION DISCLOSURE
The inventor(s) will complete and submit an Invention Disclosure Form to the Technology Transfer Office. Our Patent Technology Associate is available to
assist with the completion of the form. This written disclosure begins the formal
technology transfer process. An invention disclosure remains a confidential document,
and should fully describe your invention so that the options for commercialization
can be evaluated and pursued.
ASSESSMENT
Invention Disclosure Forms received by the Technology Transfer Office are logged and
evaluated. The inventor(s) are required to present a fifteen-minute presentation to
a patent committee. Please note that the University’s Patent Technology Associate and
Licensing Associates are available to assist with the preparation and review of the
presentation prior to the patent committee meeting.
The technology is evaluated with the input of the inventor(s). Any necessary patent
searches are conducted and market research is conducted to confirm the invention’s
commercialization potential. The evaluation process will guide the strategy on whether
to focus on licensing to an existing company or to help the inventor(s) create a new
start-up business.
PROTECTION
Based on the assessment, the University will determine if it will file for patent
protection on the invention. Patent protection is not sought for all invention disclosures
received due to the high cost of filing ($6,000 - $10,000). The filing and prosecution
of patent applications are done by outside patent attorneys. The patent attorney will
be familiar with the field of the invention, but is unlikely to be an expert.
Therefore, it's essential that the inventor(s) cooperate in the timely review and
preparation 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.
MARKETING
With the inventor’s involvement, 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.
Both non-confidential summaries of the technology and confidential information, protected
by a confidentiality agreement, may be used during the marketing stage. It's important
to note the inventor(s) may be required to meet with the respective licensee in order
to discuss the technology in greater detail.
LICENSING
Our office drafts customized contracts between the University and third parties. The
rights to an invention are licensed, without relinquishing ownership. In an exclusive
license, the University will ensure that it retains the right to use and make the
invention for research purposes so the inventor may continue his/her research. However,
finding an appropriate licensee can take months and sometimes years, depending on
the attractiveness of the invention and the size and stage of development of the market.
-
- Ex: it might take one-week to license a research material, as compared with one-year for a portfolio of pharmaceutical compounds.
Typically two licensing paths can be pursued when licensing technology.
Traditional License
A representative from the Technology Transfer Office licenses the invention to a
third party. If the University is successful in licensing the invention to a third
party, the institution will split any income derived from the license in accordance
with the patent or copyright policy. Most University inventions tend to be in the
early stage of the development cycle and require substantial commercialization investment,
making it difficult to attract multiple licensees. Once a licensee has been identified
negotiating specific terms for different materials will take different amounts of
time.
Start-up Company
If the invention is a platform technology and the inventor is interested in forming
a start-up company, a representative from the Technology Transfer Office will explain
the policies and requirements necessary to obtain a license from the University. In general, the inventor will be required to submit a business
overview document to her or his Chair and Dean as well as the Technology Transfer
Office.
Once the Dean and Chair have agreed it's okay for the faculty member to proceed, the
University’s Research and Sponsored Programs Office will prepare two conflict-of-interest
documents:
-
- Between the faculty member and the University
- Between the startup company and the University
After the conflict-of-interest documents are signed, a representative from the Technology Transfer Office will begin to negotiate the license agreement. Please note that the University inventor is not permitted to participate in this process and is strongly encouraged to hire legal counsel to represent the newly formed business’ interests.
Typically, the financial terms of a license for a University start-up will include
the following:
-
- Upfront license fee
- Industry standard royalty rates
- Minimum annual royalty
- Sublicense fees
- Milestone payments
- A percentage of equity
- Reimbursement of all patent expenses
LICENSE MANAGEMENT
The Technology Transfer Office will maintain and catalog the license for the life
of patent. The performance of a license will be reviewed periodically and monitored
to assure reimbursement for patenting costs and payments owed under the license.
PRODUCT DEVELOPMENT
Developing a product primarily entails product design, engineering and testing. University
faculty and start-ups can work with the Office of Research and Sponsored Programs, Rocket Innovations and Business Incubator to identify and apply for SBIR and STTR grants to cover the expenses associated with
developing a product. The start-up will also need to perform market research and market
analysis to determine how the company plans to enter the market. Start-up companies
can benefit from interaction with fellow entrepreneurs and University faculty, staff
and students in one of the University’s incubators. University Incubation also works
with economic development resources, including, but not limited to: Rocket Innovations, Ohio Department of Development, and Regional Growth Partnership.
COMMERCIALIZATION
The licensee company continues the advancement of the technology and makes other business
investments to develop the product or service. This step may entail further development,
regulatory approvals, sales and marketing, support, training, and other activities.
For additional information or to begin the commercialization process, please contact the Technology Transfer Office.