Licensing Process and Inventor Expectations

Licensing technology is a partnership driven activity.  Partnership both in sense of inventors partnering with university, and the university partnering with business and industry.  Having an inventor engaged in the licensing process, although not required, is a large factor in the overall success of the licensing process.

To ensure that inventor/University partnership functions as smoothly as possible, the following expectations and responsibilities have been detailed so each party has a clear understanding of their respective roles in the partnership.

 What the inventor can expect
  • TPO will be central receiving poist for invention disclosures
  • TPO will comply with all Federal, State, and contractual reporting requirements
  • TPO will conduct an initial evaluation of invention disclosures, determine the scope and content of prior art, and check for statutory bars to see if the invention is both patentable and patent-eligible
  • TPO will evaluate invention disclosures that are patentable and patent-eligible for commercial potential
  • TPO will decide on a protection strategy for invention disclosures with high commercial potential
  • The results of the analysis of invention disclosures to be communicated to inventors on a timely basis
  • TPO will market the invention in collaboration with the inventor to industry partners, venture capitalists, and entrepreneurs with an interest in the technological area
  • TPO will negotiate and sign license agreement with interested parties
  • TPO will share the revenue from licensing activities with the inventor
  • TPO being available to answer intellectual property and confidential information questions
What is expected of the inventor
  • Disclose to the TPO through the Invention Disclosure Form (link) inventions and disclosures the inventor believe to have commercial potential
  • Update the Invention Disclosure Form if there are advances to the invention
The Process

The TPO will typically take around thirty days to review the invention disclosure and conduct the appropriate background research on the invention, including meeting with you and other inventors. Inventors are urged to keep the TPO apprised of any action they are contemplating, especially any publications or other public disclosures that might affect rights in the invention. In addition, you should let TPO know right away if you’ve made any improvements to or new discoveries relating to your original invention. After evaluation, some inventions will not be pursued - it may have been publically disclosed already; it may already exist, or was discovered by others; there may not be a clear inventive step; it offers just an incremental improvement over what is already in the market; or there may not be a market for the invention.

If the TPO determines that your invention qualifies for further consideration, we will initiate marketing efforts to see if there is an actual commercial need for the invention, and to identify qualified licensee(s). The goal is to assess commercial interest in the invention. Assuming patentability and commercial viability appear positive, the invention disclosure may be referred to a patent attorney or other outside entity to conduct a prior art search, and render a preliminary opinion on patentability, or to draft and file a patent application. When the TPO reaches a final decision on how to proceed with your invention, you will be notified. If we elect to proceed with the invention, we will take you through the possible next steps, as outlined below. However, in the event the TPO decides not to move forward with your invention, for reasons mentioned above, the rationale for that decision will discussed with you, and we will assist you if you wish to gain ownership of the invention from UD (after first asking the sponsor, if any) so that you may pursue commercialization independently of the university.

 Filling out and submitting an invention disclosure

This is the process that starts the formal review of your invention by the TPO.  First, you fill out the Invention Disclosure Form.

In addition to starting the evaluation of your invention, the invention disclosure forms an important record of the invention, and allows UD to report the invention as required to its sponsors.

The invention disclosure asks for some key pieces of information.  Here is a list of the most important items, and why we ask for them:

  • Title – To describe the invention and serve as an identifier for the file.
  • Detailed Description - This will take the bulk of your time when completing the IDF. Here, we ask that you clearly explain what the invention is. In particular, how it works, how it is actually novel, the problem it solves or how discovery came about. Complete this step without the use of scientific/engineering jargon. We require an explanation of the invention in such a way as to be clear to one who is not familiar with it.
  • External Funding – We use this section to fulfill reporting requirements and judge whether another entity may have an ownership or other interest in the invention.  It is critically important the correct contract number is used here, because we use that to report on the invention to its sponsors.
  • First Public Disclosure – Patentability often hinges on if, or how long the invention has become publicly available.  We also need to know if you are planning any publications in the near future.
  • Inventors – Every inventor, whether UD or not, needs to be identified.  If there is a question on whether an individual is an inventor, please contact the TPO for assistance.
Where do we go from here?
Creating value from your invention

After having evaluated your invention for its patentability and commercial potential, the TPO staff will also make a determination as to its commercial readiness. The invention may or may not be ready to commercialize based on several factors, and there are options on how to proceed.

Commercial-ready

We have two paths at this point- grant a license to the invention (or the patent rights associated with it) to an existing company, or work directly with you to found a startup company in order to pursue further development leading to commercial success.

License

Licenses are the mechanism by which TPO partners with a company to allow that company to further develop, and ultimately sell products or services based on your invention. A license may be exclusive, just one company gets a license, or non-exclusive, in which case we license a single invention to multiple companies. Royalties and other income received from licenses are shared with you and the other UD inventors in accordance with UD policy.

Startup

Sometimes an invention is too early stage to be desirable to industry, while other times, it may be so out of current industry trends to be disruptive. A startup company may be a viable option of pursuit, provided that you are willing to take a vested interest in working with the startup to develop your invention. UD provides training to help make this happen.

Not commercial-ready

Your invention may not fit into the existing commercial space- it is too early in its development, or there is no apparent path to market. Here, a little extra research assessing the relevant market space, can help make your invention commercial-ready. TPO can help you apply for funding from I-Corps Ohio or the Ohio Technology Validation Startup Fund (TVSF) to perform commercial validation work, which provides valuable insight as to whether or not to pursue translational research.

Contact Us

Technology Partnerships

River Campus M5200 
1700 Patterson Blvd 
Dayton, Ohio 45469 - 0102

937-229-3469 

Connect