What You Need to Know If You Have an Intellectual Asset with Potential
AVÌìÌÃÍø is supportive of its faculty and staff in their development of intellectual property and the exploitation of those ideas that show promise for commercialization.
What You Need to Know If You Have an Intellectual Asset with Potential
AVÌìÌÃÍø is supportive of its faculty and staff in their development of intellectual property and the exploitation of those ideas that show promise for commercialization.
The technology transfer process ideally begins with a discussion between the technology transfer team and a faculty member interested in exploring the commercial possibilities of their intellectual assets. When appropriate, select intellectual assets with distinct (potential) commercial value are identified, an invention disclosure form is submitted and a rigorous commercial assessment is performed. If justified, a commercial strategy is then developed. Prior to implementation, AVÌìÌÃÍø administration reviews the assessment and commercial strategy to determine if the project meets the threshold for further university investment. In the event this threshold is met, the commercial strategy is then implemented. If the threshold is not met, the opportunity is either ‘returned’ to the inventor or ‘parked’ for further research and re-assessment at a later date.
When appropriate, select intellectual assets with distinct (potential) commercial value are identified, an invention disclosure form is submitted and a rigorous commercial assessment is performed. If justified, a commercial strategy is then developed. Prior to implementation, the AVÌìÌÃÍø administration reviews the assessment and commercial strategy to determine if the project meets the threshold for further university investment. In the event this threshold is met, the commercial strategy is then implemented. If the threshold is not met, the opportunity is either ‘returned’ to the inventor or ‘parked’ for further research and re-assessment at a later date.
The key steps in the technology transfer process are:
Successful technology transfer depends on AVÌìÌÃÍø administration, TTP personnel and inventors fulfilling certain Roles and Responsibilities.
Roles and Responsibilities of Stakeholders | TTP | Faculty |
Completes research update questionnaire on quarterly basis | x | |
Communicates discoveries and/or potential projects on a timely basis | x | |
AVÌìÌÃÍøtains proper laboratory books | x | |
Provide regular educational opportunities so faculty is knowledgeable about technology transfer and IP issues | x | |
Alert AVÌìÌÃÍø and TTP of impending public disclosure well in advance | x | |
Assess research programs from a commercial prospective interest | x | |
Faculty – TTP dialogue about promising developments | x | x |
Assess investibility and provide feedback for submitted concepts | x | |
Faculty submit completed invention disclosure form | x | |
Initial commercial assessment performed (unmet need, market, IP, investibility) | x | |
Provide feedback to faculty. Discuss "go," "no go," or "not yet" thoughts | x | |
Develop preliminary report for review and discussion | x | x |
Prepare Recommendation for IP Committee consideration (include overall commercialization plan with budget and investibility analysis | x | |
Complete administrative requirements (e.g. iEdison, IIA, Sponsor rights, etc.) | x | |
Prepare non-confidential information for distribution | x | |
Engage patent counsel to implement patent plan | x | |
Assist counsel with patent application and prosecution | x | x |
Sign documents required for patenting and licensing | x | |
Provide copies of references and supporting material for patent prosecution | x | |
Continue research to support patent and proof of concept studies (if able) | x | |
Pursue commercialization plan | x | |
Participate in due diligence with prospective partner | x | x |
Negotiate Option/License Agreement | x | |
Attract venture capital for new venture projects | x | |
Provide feedback to faculty on status of commercialization | x | |
Sign deal acknowledgement form | x | |
Sign agreement | x | |
Prepare deal summary document for proper internal tracking | x | |
Facilitate "transfer" of technology from AVÌìÌÃÍø to licensee, as appropriate | x | x |
Monitor license agreement, pay ongoing patent maintenance fees, distribute net income in accordance with AVÌìÌÃÍø policy | x |
Consulting by AVÌìÌÃÍø researchers with corporate firms can be a win-win situation, provided the activity is undertaken with care and attention to the consultant's existing commitments to the AVÌìÌÃÍø and his or her obligation to abide by AVÌìÌÃÍø policies and procedures.
Below are some suggested guidelines: