Technology Transfer

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 Technology Transfer 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.

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.

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.

Invention Disclosure Forms received by Technology Transfer 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. 

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. 

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 (NCS) of the technology and confidential information, protected by a confidentiality agreement (CDA), 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.

Our office negotiates customized agreements that enable the responsible development of university technologies while protecting the interests of both UToledo and its inventors.

Rather than transferring ownership, most technologies reach the marketplace through licensing agreements that grant specific rights to third parties. Even with an exclusive license, UToledo typically retains the right to continue using the technology for research and educational purposes, allowing inventors to further advance their work.

Technologies typically follow one of two commercialization pathways:  licensing to an existing company or launching a startup. Consistent with the goals of Innovate Toledo, our team actively connects promising innovations with the companies, entrepreneurs, and investors best positioned to scale them.

The timeline for identifying a suitable licensing partner varies significantly. For example, licensing a research tool or material may take only a few weeks, while a therapy, medical device, or pharmaceutical portfolio requires a longer development and partnership process.

Once a technology is licensed, our office maintains all records and manages the ongoing agreement. Our office maintains licensing records and works closely with licensees to support the successful development and market entry of UToledo innovations.