Below is the process for identifying and bringing to market a new technology within Ohio University. 1. Assessing the TechnologyThe invention disclosure form is the mechanism used by
faculty, graduate students and other OU employees to communicate an
invention to the Technology Teansfer Ofice (TTO) and begin the technology
transfer process. Upon
receipt of the invention disclosure, the TTO will conduct a patentability
assessment, including a literature search and evaluation of prior
art.
Assuming there is significant technology that can be protected via
patent, the TTO will proceed with a market assessment. This will result
in an
estimate of market size, a list of potential licensees, and other market
and industry data. From this information, TTO staff make a business
judgement as to the desirability of investing in patent protection.
If the TTO chooses not to pursue a patent on a particular technology,
the inventor is given the option of independently pursuing commercialization.
2. Patenting & Patent ManagementThe TTO determines its patent strategy - including the countries in which it will seek patent protection -, based on the results of the market study. TTO staff then work with outside legal counsel in obtaining patent protection on selected technologies, initially by providing copies of the invention disclosure and literature search to the patent attorney. The TTO ensures effective and timely communications between the inventor and patent attorney, complete necessary forms, and authorizes filing of applications and documents.
3. Marketing the TechnologyThe TTO prepares for its marketing campaign by selecting a licensing strategy and producing marketing materials. The licensing strategy addresses such factors as fields of use, exclusivity and geographic limitations. When rights to the technology are secured, the TTO begins marketing the technology to industry. The initial campaign consists of non-confidential listings on technology transfer databases and direct contact with prospect firms. Those firms that express interest based on their evaluation of non-confidential materials are asked to sign confidentiality agreements. Only when such agreements are in place are complete packages of confidential information sent to the firms for evaluation.
4. LicensingWhile firms are evaluating the technology, the TTO gathers detailed information on the potential licensees. The TTO assesses the firms' product lines, production & marketing capabilities, financial status, and desire to sponsor additional OU research. This process generally yields one or two firms that are both interested and qualified as potential licensees. The TTO then seeks to negotiate a license agreement that is beneficial to both parties while guaranteeing that the technology will reach the marketplace. License agreements typically include terms relating to upfront fees, patent costs, royalties, license maintenance fees, and commercialization milestones, as well as a definition of the specific intellectual property rights conferred.
5. License ManagementManagement of the relationship following execution of the license agreement includes monitoring the licensee to ensure that commercialization milestones are met and collecting fees, royalties and reimbursable expenses. The TTO maintains records of patent expenses and licensing revenues for each invention and determines distribution of licensing revenue according to University policy. In the case of technologies with non-exclusive licenses, the TTO is also responsible for monitoring and litigating unlicensed use.
6. ReportingThe TTO has responsibility for reporting inventions to research sponsors in accordance with sponsorship agreements, and reporting patent expenses and licensing revenues to co-owners of the technology.
2. Patenting & Patent ManagementThe TTO determines its patent strategy - including the countries in which it will seek patent protection -, based on the results of the market study. TTO staff then work with outside legal counsel in obtaining patent protection on selected technologies, initially by providing copies of the invention disclosure and literature search to the patent attorney. The TTO ensures effective and timely communications between the inventor and patent attorney, complete necessary forms, and authorizes filing of applications and documents.
3. Marketing the TechnologyThe TTO prepares for its marketing campaign by selecting a licensing strategy and producing marketing materials. The licensing strategy addresses such factors as fields of use, exclusivity and geographic limitations. When rights to the technology are secured, the TTO begins marketing the technology to industry. The initial campaign consists of non-confidential listings on technology transfer databases and direct contact with prospect firms. Those firms that express interest based on their evaluation of non-confidential materials are asked to sign confidentiality agreements. Only when such agreements are in place are complete packages of confidential information sent to the firms for evaluation.
4. LicensingWhile firms are evaluating the technology, the TTO gathers detailed information on the potential licensees. The TTO assesses the firms' product lines, production & marketing capabilities, financial status, and desire to sponsor additional OU research. This process generally yields one or two firms that are both interested and qualified as potential licensees. The TTO then seeks to negotiate a license agreement that is beneficial to both parties while guaranteeing that the technology will reach the marketplace. License agreements typically include terms relating to upfront fees, patent costs, royalties, license maintenance fees, and commercialization milestones, as well as a definition of the specific intellectual property rights conferred.
5. License ManagementManagement of the relationship following execution of the license agreement includes monitoring the licensee to ensure that commercialization milestones are met and collecting fees, royalties and reimbursable expenses. The TTO maintains records of patent expenses and licensing revenues for each invention and determines distribution of licensing revenue according to University policy. In the case of technologies with non-exclusive licenses, the TTO is also responsible for monitoring and litigating unlicensed use.
6. ReportingThe TTO has responsibility for reporting inventions to research sponsors in accordance with sponsorship agreements, and reporting patent expenses and licensing revenues to co-owners of the technology.