The term technology transfer is used to describe the process of formally transferring new discoveries and innovations that result from university research into the commercial sector. It includes several steps:
- Invention Disclosure
- Evaluation of the Invention
- Marketing and Licensing
If you have discovered a new and useful process, machine, article of manufacture, composition of matter, or related improvement, you probably have made an invention. A work of authorship (including computer software) is also considered to be an invention under the Patent and Copyright Policy.
An inventor (faculty, staff, students and others) should complete an invention disclosure form in order to begin the technology transfer process.
Instructions: Download the Disclosure Form from our website (this form is also available in hard copy at the Innovation Commercialization Office), print the blank form, complete it by hand (please print) and submit the complete document to the Innovation Commercialization Office. Alternatively, you can download the form on your own computer, open it in the MS Word program, complete it, print the complete form out, put necessary signatures and submit to the office. The form requests such information as a description of the invention, names and contact data for everyone involved in making the invention (the form must be signed by all of the inventors involved, including inventors not employed by UNCG), funding sources for the research that led to the invention, prior publications or public descriptions of the invention, and commercial contacts in the field of the invention. THIS INFORMATION IS CONFIDENTIAL. Do not send the Invention Disclosure Form to others, including your research sponsor, until the University has made a decision concerning the disposition of the invention.
Evaluation of the Invention:
A technology transfer professional in the Office of Innovation Commercialization will interview and consult the inventor regarding the invention disclosure. The office personnel will carry out a patent literature search and review (this is a review of the written professional journals, refereed papers, conference presentations, and public disclosures that are related or similar in nature to your invention) to determine the status of the prior patent art and will assess the market to determine the commercial potential of the invention. Together we will discuss the invention and make a preliminary evaluation of novelty and usefulness of the invention, likelihood of patentability, possible markets (industrial interest in technology) and manufacturing feasibility (projected development time and cost). Inventor’s expertise is especially helpful during the evaluation for patentability, in the patent application process, in identifying licensing prospects, and in meeting with companies expressing interest. Inventors typically provide technical evaluation of previous patents and publications in their field, supply information to the patent attorney and review draft applications and responses to government actions, and discuss technical aspects with interested companies.
The ultimate goal of these joint efforts (between the Innovation Commercialization Office and the Inventor) is to make a conclusion if the invention is patentable and if it is licensable (will a company pay UNCG for the right to commercially practice the invention). Normally, an invention is considered patentable if it is:
- Novel – the invention must be demonstrably different from any existing prior art (it must be the inventor’s original work). It cannot be described in prior public disclosures or any prototype of the invention made available to the public.
- Useful – the invention has some qualitative benefit, i.e., the patent application must specify a demonstrable utility for the invention.
- Non-obvious – the invention cannot be obvious to a person of “ordinary skill” in the art. Non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.
The Innovation Commercialization Office will often submit the invention to the Science Committee for consideration. The Science Committee will test the scientific rigor of the invention and see if the important research practices were inherent in the research process.
The disclosure evaluation process may take anywhere from a week to three months, and possibly longer, depending on the complexity of the invention and the target industry. Inventors are kept informed of the evaluation process and any actions taken, and their input is considered in making decisions about the University’s protection and licensing of the invention.
If the invention appears to be patentable and licensable, Innovation Commercialization Staff will proceed with the patent application. UNCG has limited funds for the expensive process of patenting, so OIC staff must make informed decisions about which inventions have the most potential to be legally protected and become valuable products..
Marketing and Licensing:
For inventions to reach the marketplace for the benefit of society, the cooperation of industry is necessary. A patent license allowing a company to use the invention formally establishes this cooperation. Through licensing, the University retains ownership of a technology, and the companies obtain the right to use the technology to make and sell products or services.
The Office of Innovation Commercialization takes a direct approach in finding a potential commercialization partner for a specific technology. Non-confidential information (also called an executive summary) about the technology is submitted to the potential sponsor. Confidential information is then provided to interested parties after they have signed a confidentiality agreement. This information may include patent applications, research proposals, and other relevant research data. The researchers can make a valuable contribution to the search of potential licensees , because they are probably familiar with potential markets for the invention. If a potential commercialization partner demonstrates interest in a technology, as a result of reviewing the confidential information, a license agreement is negotiated.
Different inventions require different licensing strategies. For example, a basic new scientific tool likely to be widely used is typically licensed on a non-exclusive basis. In contrast, an invention, which requires significant investment of resources by a company, is typically licensed on an exclusive basis. The exclusive license provides an incentive to the licensee to commit risk capital investments required for product development.
Inventions made by UNCG faculty or staff in the course of their employment, using University time, facilities, or funds, are considered the property of the institution. If you’re not sure whether your invention should become the property of the University, clarify your rights by checking with the director of Innovation Commercialization. Because licensing technologies provide a financial benefit to licensees, the University shares in that benefit in the form of license issue fees, minimum royalties, and/or running royalties.
The revenues, which the University receives from a patent or invention will be applied first to reimburse the University for any incremental expenses incurred by it in obtaining and maintaining patents and/or in marketing, licensing, and defending patents, or licensable inventions. After provision for such expenses, the inventor’s share of such revenues received by the University shall normally be as follows:
|NET REVENUE||INVENTOR(S)||DEPARTMENT||SCHOOL OR COLLEGE||UNCG|
|$500,001 – $1,000,000||50%||10%||5%||35%|
TOTAL NET REVENUES RECEIVED OVER THE LIFE OF THE INVENTION
However, the Chancellor may negotiate a different revenue sharing arrangement if the Chancellor deems it to be in the best interests of the University. In the case of co-inventors, each such percentage share shall be subdivided equally among them, unless the University in its sole discretion determines a different share to be appropriate. Applicable laws, regulations, or provisions of grants or contracts may, however, require that a lesser share be paid to the inventor. In no event shall the share payable to the inventor or inventors in the aggregate by the University be less than 15% of gross royalties received by the University.