Technology Transfer and Commercialization
Introduction
Introduction to Tech Transfer
For a general introduction please see Intellectual Property at UNI.
The technology transfer process at UNI is a collaboration among the Office of Intellectual Property, Business and Community Services, the Office of Research & Sponsored Programs, the UNI Research Foundation, and, of course, the innovators. Together, these offices provide an integrated approach to protecting intellectual property and advancing projects toward commercialization. The services to innovators include: steering projects through the approval process, searching existing patents, assistance with patent applications, market analysis, business plan development, and negotiation of licensing agreements.
University faculty staff and students who develop new inventions, products or processes using university facilities are required to assign the rights to their inventions to the UNI Research Foundation. In return, the UNI Research Foundation provides funds for initial marketing feasibility studies, patenting and other legal fees.
The University policy on distributing revenues from successful inventions provides that, after expenses are recovered, the inventor receives the first $10,000 of income, and then 50% of all subsequent revenues. The other 50% is apportioned to the Foundation and the inventor’s sponsoring college.
Sometimes, the UNI Research Foundation may decide not to pursue patenting or licensing a new idea. In this case the intellectual property is returned to the inventor, who is free to develop it at will. The University, however, exercises a right to retain 5% of future royalties.
What is Patentable?
Patenting is one of several options for legally protecting a commercializable invention. Others include trade secrets, trademarks, and copyrights. The Intellectual Property Officer (IPO) and the Science and Technology Officer (STO) will help inventors determine the most effective means of safeguarding their inventions.
Patents
Inventions of Utility must satisfy four criteria in order to be patentable:
- The invention must fall into one of five statutory classes, including processes, machines, manufactured products, compositions of matter, and new uses of the previous classes.
- The invention must be useful.
- The invention must be novel.
- The invention must be unobvious to people skilled in the area of the invention.
Utility patents are granted for a period of 20 years from the date of filing a patent application, after which the patent to an invention becomes public property. In addition to utility patents, design patents are granted to a new, original or ornamental design for a manufactured item, and plant patents are granted to an invented or discovered new plant variety that can be asexually reproduced.
Generally, products with obvious modifications in material, size, form or shape are not patentable. Furthermore, laws of nature, physical phenomena and abstract ideas are not patentable. Literary, dramatic, musical, and artistic works, while not patentable, may be copyrighted protected.
Public Exposure
Inventions that have been publicly exposed more than one year before the date of a patent application cannot be patented. Public exposure can take many forms, including, among others, the sale of a product, exhibiting an idea at a conference, a printed description a product, or public demonstration of a device. Inventors must be mindful that publishing an article or describing a product in email can disqualify an idea from patent protection unless a patent application has been filed.
How to Get Started
As you develop your idea, it is important to keep detailed records and work notes. Careful records are helpful for establishing that you are, in fact, the inventor if a dispute should arise.
We recommend that you communicate with the IPO early in the development process. To protect your right to secrecy, you will sign a Confidentiality Agreement, protecting you from public exposure of your idea during the pursuit of intellectual property protection.
The IPO will assist you in developing an Office of Intellectual Property Disclosure Form, describing the details of your creation. This information will form the basis for a search of existing patents to make sure your idea is novel, and for research into its market potential.
Forms: Office of Intellectual Property Disclosure Form (DOC)
UNI Technology Transfer and Commercialization Process
The technology transfer and commercialization process at UNI is summarized in a flow chart.
Inventors at UNI seeking to protect their intellectual property are guided by the IPO, STO, and Business and Community Services (BCS). BCS is a group of outreach centers at UNI, some of which assist inventors in developing a suitable approach to protecting a new intellectual property and a plan for commercializing the innovation. This process occurs in several stages. Described below is a typical sequence; the actual process may differ according to individual circumstances.
Stage 1: Inventors work with the IPO and BCS to develop the invention disclosure. The disclosure usually requires research to determine the potential for successful commercialization of the invention.
Stage 2: If the invention is judged to have promise, the IPO will help the inventor develop an intellectual property protection approach and a preliminary business approach if appropriate.
Stage 3: The Disclosure and analysis of the IP are reported to the University’s Intellectual Property Committee (IPC), a faculty and staff committee managed by the Office of Intellectual Property in BCS. After review and discussion of the disclosure, the IPC makes a recommendation to the UNI Research Foundation on whether or not to pursue a patent. During stages 1, 2 or 3 the University may elect not to file a patent application. The decision not to file a patent application will be made within a period not to exceed three months from the date of first submission of the written statement of disclosure. In this case the University’s rights to the invention will be released to the inventor. The University, however, exercises a right to retain 10% of future royalties.
Stage 4: If the IPC recommends pursuing protection of the invention, the UNI Research Foundation may, in certain situations, decide to have BCS conduct a survey to further examine the marketability of the invention. If the inventor plans to commercialize the invention, a business approach is developed with the help of BCS centers and staff. If the business approach includes patent protection, the IPO will help the inventor prepare a patent application, consulting a patent attorney if necessary. The UNI Research Foundation may provide all or part of the funds needed to apply for a patent. The decision whether to apply for a patent must weigh the cost of the application, which can be $10,000-$15,000, against the potential benefits of this type of intellectual property protection. Sometimes an inventor may be advised to claim their idea as a trade secret. This allows them to license their innovation while avoiding the cost of applying for a patent.
Approaches to Commercialization
Technology transfer is not complete until the innovation is licensed for commercial use. Some inventors at UNI have become entrepreneurs, creating spin-off companies that have licensed their product. Others have licensed their innovation to outside companies. The IPO and Business and Community Services offer assistance finding suitable business and industry partners.
Contacts and Services
Office of Intellectual Property: Randy Pilkington, Director
Recommends that patent, copyright, and license applications be submitted on behalf of the University, grants written license agreements on behalf of the University, grants use of the University’s copyrighted materials, trademarks and patented inventions, executes royalty division agreements with inventors and authors on behalf of the University.
Intellectual Property Officer: Paul Kinghorn
Supports, promotes, and encourages University personnel in the development of copyrightable and patentable intellectual properties and promotes the patenting of inventions and encourage personnel in the creation of intellectual property.
Intellectual Property Committee: Paul Kinghorn, Chair
Evaluates inventions and discoveries for patentability, makes recommendations to the UNI Research Foundation and reviews agreements with cooperating organizations, with respect to patent rights or equities.
Business and Community Services: Randy Pilkington, Executive Director
Provides an integrated approach to meeting the needs of businesses, entrepreneurs and communities. BCS represents twelve outreach programs in the College of Business Administration and serves as the University’s primary contact for economic development activities throughout Iowa and beyond.
Strategic Marketing Services: Christy Ryken, Director
Offers a full range of qualitative and quantitative marketing research and analysis services
Advance Iowa: Paul Kinghorn, Director
Offers technical, financial, and support services through classes, counseling, and a business resource library.
John Pappajohn Entrepreneurial Center: Laurie Watje, Director
Fosters the development of Student entrepreneurship through educational and applied programs, such as the Student Business Incubator, Consulting, and other services. Also assists with intellectual property.
Disclaimer
The Office of Research & Sponsored Programs (RSP) web site is intended to be informational only. The RSP gives no warranty as to the accuracy or completeness of information provided in this site or via its related links. This site is not intended to provide legal advice, and should not be relied upon as such. Legal advice for your particular needs should be obtained from a licensed attorney.