Services | 
- Overview
- Conflicts of Interest
- Copyrightable Work
- Discovery and Project Review
- Management of Inventions
- Market Research and Licensing Inventions
- Negotiating and Drafting a License
- New Business Ventures
- Patentable Work
The Technology Transfer Office (TTO) manages all aspects of an intellectual property (IP) with the goal of bringing qualifying properties to the open market. It helps to identify discoveries and creative works that need protection and have commercial potential. In addition, the TTO provides appropriate documents for the protection of IP, such as confidential disclosure documents. Managing the commercialization of these inventions, authored works, and other projects is also part of the TTO service. Other services include patent, copyright, and trademark filing, technology assessment, as well as marketing and marketing research.
The University and Foundation encourage entrepreneurial activity and development because they facilitate the commercialization of intellectual property. Entrepreneurial activities improve the interface between the academic and business communities and provides a "real life" business environment for students. However, such activities must be done with an acute awareness of conflict of interest and commitment issues to avoid direct and perceived conflicts. The TTO works to address these potential areas of conflict before they become issues requiring mediation for resolution.
Copyrightable work has expanded from the written word or printed matter to include other forms of authorship such as audiovisual materials, computer programs and software. Often the author of the intellectual property knows their field well enough to direct the Technology Transfer Office to others who understand the market for their work. Companies who are aware of the author's work may have already approached that author.
Once a work has been expressed in a tangible form the author automatically owns the copyrights to that work. Signing, dating and adding the copyright symbol "©" on your work secures an initial copyright. Filing with the United States Copyright Office affords you other benefits, including ISBN numbers that are useful in selling products. The web site is located at http://www.loc.gov/copyright.
It is common for scientists, engineers, teachers and other individuals in the academic community to focus their attention on the academic elements of their creative work without considering the commercial potential of these projects. If you, as the inventor or author, are uncertain whether or not you have a commercial prospect, please set an appointment with the Director of the TTO to discuss your idea/technology and assess its potential. These "non-invasive" discussions will help identify projects of commercial interest, help focus the creator's attention on possible improvements or additional benefits and begin the process of bringing the work out into the world.
The Technology Transfer Office would like the opportunity to work with an inventor/author as soon as that individual realizes that (s)he has a project of commercial value. We can help protect the technology and develop the strategy for completing the project and marketing it to a commercial prospect.
Some projects have great intellectual value but little or no commercial potential. Some inventions or authored works may have great commercial potential but they cannot be effectively protected nor can the property be effectively policed, so they do not warrant filing a patent. In these cases, it is sometimes possible to license the technology under a secrecy agreement.
Each project is unique. Please come in to the TTO to tell us about yours.
Once a project has been completed and there is sufficient data to file a patent, it is time to initiate a search for a licensee. Frequently the inventor of the intellectual property knows his/her scientific field well enough to direct the Technology Transfer Office to others who understand the market for their technology. Companies that are aware of the inventor's work may have already approached some inventors. These are strong leads for the TTO.
With this help, we begin to understand the scope of the licensing project. The TTO can initiate contact with manufacturing or distribution companies and other potential licensees. In addition, we look at databases from the United States Patent Office and other sources to determine what is currently available or created. We research to understand the scope of the market and other aspects of the commercialization activity. Comparing commercial value of similar projects or products helps us understand the market size and the pricing for the technology we are trying to license. With these facts we develop a clear picture of the terms and conditions the license must contain.
The TTO then proceeds to contact companies to discuss licensing possibilities with them. We draw up a license agreement and negotiate the terms and conditions. Each case is unique and is treated as such.
From the time the invention is first disclosed and through the research period, inventions should be legally protected, commonly done by filing a patent or provisional patent. Once a technology is protected, the inventor can proceed to discuss this work with colleagues and other individuals in the public sector without fear of losing proprietary opportunities. S(he) can also publish this material in scientific journals.
Market Research and Licensing Inventions
The most difficult part of the commercialization of Intellectual Property is the market research and licensing of the "product" to an appropriate business. The TTO spends substantial time developing a network of contacts to facilitate the licensing of creative work. The TTO will utilize all sources of information to gather data about the business opportunities for inventions/authored works, including recommendations by the inventor/author, web-based databases, private databases and our ever growing network of corporate contacts.
We use these sources to establish the size, scope, geographic distribution, value and competition of a "product" as well as existing companies that are potential licensees. When our homework is complete and we have determined the market value of a project or "product", we contact potential licensees to secure a license or an option to license the "product". This is what technology transfer represents, moving a project from the academic community into the community at large.
Negotiating and Drafting a License
The TTO performs a "valuation" of the technology or authored work such that financial parameters of a license can be determined. When a licensee has been identified and the market research and valuation has provided information about the commercial potential of the invention/authored works, a term sheet is developed that outlines the scope of the license, the financial terms and a few other relevant terms of the pending license.
A negotiation ensues that allows both parties to express their position about the terms and conditions of the pending license. Once agreement has been reached, those terms are incorporated into a draft license agreement and further negotiation ensues to work out the language and other determining factors of the license agreement. The final agreement is signed. Inventions and authored works are usually licensed to an existing company. Sometimes however they are licensed to a start-up new business venture that is founded by the person(s) who created the intellectual property (IP).
Occasionally, new business opportunities arise with new technology. If the inventor/author wishes to start a new company, s(he) will license the technology from the University for commercialization. The Technology Transfer Office is a creative and energetic force dedicated to assisting and supporting that person or persons in their New Business Venture.
It is necessary that the licensed work represent a critical mass of technology sufficient for a new business venture to survive. It is appropriate to discuss the possibility of licensing the technology to this new business if the technology can be effectively protected (patented,copyrighted, trademarked, etc.) and the inventor/author is willing to commit the necessary time and energy to make it successful.
On this web site you will find guidelines for developing a new business venture. If you are interested in proceeding, review this information and complete an NBV approval form. The University reviews and approves these documents. The TTO will negotiate a license with the new business venture that includes a percentage of equity (generally 5% to 15% but this is negotiable) and an appropriate royalty.
The new business venture will develop a sponsored research agreement with the University. This provides the vehicle for the new venture to carry out its research activities in University space and allows the inventor/author to maintain his/her academic appointment while working on developing the new business activities.
If you are thinking about starting a new business, talk to the TTO about your plans. We look forward to discussing your entrepreneurial activity and to being supportive of your venture.
Protecting Intellectual Property
Patentable Work
When an inventor discovers something and describes that invention to other individuals who are not obligated to keep the discussion confidential, this is considered a public disclosure. Following public disclosure, the inventor has only one year to file a patent application and will be statutorily barred from doing so beyond this one-year period. Further, public disclosure automatically bars the inventor from filing for protection in countries other than the United States. Therefore, it is important that inventors properly maintain confidentiality so they can patent their invention. Should a faculty member make a discovery and want to discuss this discovery with colleagues, (s)he can do so by omitting critical information necessary for the effective execution of the discovery. (S)he may have the colleagues sign a confidentiality agreement so that the discussion is considered a "confidential disclosure" rather than a "public disclosure". If the inventor wishes to present his/her findings to a company, it is always appropriate for the company to sign a Confidential Disclosure Agreement (CDA) prior to the inventor presenting these findings to the company. The CDA not only prevents public disclosure of the invention, but also prevents the recipient (company) from exploiting the idea or invention for its own commercial purposes. This is a very common practice and there should be little resistance on the part of the recipient to sign a CDA.
If an inventor has created new materials that other scientists wish to use in their research, it is appropriate to have the recipient of these new materials sign a Materials Transfer Agreement (MTA). The MTA stipulates how the recipient scientist may use the new material in his/her research. It establishes guidelines that stipulate the recipient cannot exploit the material for commercial purposes without the knowledge and/or participation of the provider of the material. It also limits how the recipient scientist treats derivative work and derivative material that was created from the new material supplied by the inventor.