How does the TTO assess Invention Disclosures?
First, the TTO determines whether the invention should have provisional protection based upon a genuine urgency, usually due to an upcoming disclosure such as a publication. Whether or not a provisional patent application is filed based upon urgency, the inventor must present the invention in a 20 minute presentation to the Patent Review Committee. The PRC will determine, along with advice from a Business Advisory Board, the potential commercialization value. Based upon our conclusions we will determine if we will file for an utility patent and market the discovery. Typically we will file for initial protection via a provisional application (either by decision of the TTO for urgent matters or by recommendation of the PRC) in order to gain the benefit of the one year window in which to market the invention. Marketing is a partnership between the inventor and the office. After the provisional application has been filed it is incumbent upon the inventor to provide at least 5 potential companies that might be interested in the invention. Research shows that >50% of all licensees have been discovered by the due diligence of the inventor. The office will help in the due diligence effort and once the information is received, we will contact the companies to determine their interest. If there is no market interest or the inventor fails to provide possible licensees than the patent application will go abandoned.
What is the Business Advisory Board?
The BAB mission is to advise the PRC as to the commercial potential of the discovery. The BAB provides additional level of expertise entrepreneurial guidance on high-potential technology licenses, strategy, and all potential spin-offs. BAB Members include entrepreneurs, investment capital professionals, technology transfer professionals, business executives, attorneys, and banking professionals. The board consists of 5 standing members of the business community, representing the banking, legal, venture capital, and Northeast Ohio industry. Additionally, one to three individuals will be brought in to analyze the discovery based upon their expertise in the relevant field.
Is an invention ever reassigned to an Inventor?
If the TTO decides not to pursue patent protection and/or chooses not to actively market the invention, the university may, upon the request of the inventor(s), reassign (transfer ownership) to the inventor(s). Reassignment of inventions funded from U.S. government sources requires the governments prior approval. Among the key factors in the university deciding to reassign are whether additional university resources or private resources could best improve marketability and whether all inventors agree with the reassignment. Upon reassignment, the inventor(s) are responsible for payment of prior patent costs and all further development, patenting and marketing expenses. If additional university resources are used to further develop the invention, the university may reassert ownership interest in the invention.
Where are potential licensees found?
Licensees can be identified in many ways. First, the inventors often are aware of the commercial companies who would be interested in the work. Industry -specific marketing efforts including trade show participation, affiliations and market research carried out by the TTO also seeks to identify potential licensees. Additionally, issued patents listed by the USPTO can provide names of companies who currently have patents similar in nature and often times these can prove to be potential licensees as well.
How much inventor involvement is there in the licensing of technology?
Studies have shown that 70% of licensees were known to the inventors. Thus research and consulting relationships are often valuable sources for licensees and TTO encourages the participation of inventors. The more involved and interested the inventor(s) are in the licensing of a technology the higher the chances are that successful licenses will be secured. Normally the inventor(s) are the first best source of information on what companies would be interested in licensing the technology. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful technology transfer results are obtained when the inventor and the licensing manager work together as a team to market and promote use of the technology.