Commercialization Process Summary
The TTO strives to support its faculty in the protection of intellectual property resulting from their research. The University has developed policies and guidelines that provide incentives for its researchers while protecting the integrity of research.
The TTO Commercialization Process
Observations and experiments during research activities often lead to inventions. It can sometimes be difficult to identify which part of a complex research effort might constitute an invention; therefore it is important to keep good, reliable laboratory records of your research activities. Remember, before sharing the results of any research, or publishing, it is important to ask the TTO whether the document or disclosure contains any innovation that could be patented.
Report an Invention
The TTO encourages early contact with us to determine whether the timing is appropriate to submit an invention disclosure form. Sometimes, a discovery is not sufficiently developed to justify pursuing patent protection until further refinement is made on the discovery. In addition, some discoveries may have already been patented or made publicly available. Another important consideration is determining the correct inventorship of the discovery. This is important because the law provides that only those who contributed an inventive step to the discovery are entitled to be listed as inventors on the resulting patent. The TTO will work with the inventor to research the prior art and determine appropriate inventorship.
Invention Disclosure top
The inventors submit an invention disclosure form. The disclosure is used to evaluate:
- who the inventors are
- ownership of the discovery
- patentability of the discovery
- commercial viability of the invention.
Within thirty (30) days of submitting an invention disclosure form, the TTO shall notify the inventor(s) whether the disclosure is incomplete, with notations of the additional information required, or shall refer the disclosure to the Patent Review Committee.
Assessment of Technology
Within thirty days of submitting an invention disclosure form, the TTO shall schedule a meeting with the Patent Review Committee. At this meeting, the inventor(s) will be required to give a twenty minute presentation on their technology. The Patent Review Committee shall then make a recommendation about the invention to the VP for Research. The VP for Research will elect to 1) pursue legal protection of the technology, 2) release the invention to the inventor(s), or 3) dedicate the invention to the public.
The members of the Patent Review Committee include:
- John Jeziorowski, Health Sciences (2018)
- Michael Kalafatis, Chemistry (2020)
- Christopher Wirth, Chemical Engineering (2019)
Based on the Patent Review Committees assessment and recommendations, the University will determine whether or not it will file for patent protection on the invention. Due to the heavy expense of patent protection, the University has to carefully consider which inventions can be filed. An initial application may cost $7,000-10,000; over its lifetime, a U.S. patent can cost $25,000-30,000.
Generally, the filing and prosecution of patent applications are performed by outside patent attorneys although some patent filings may be performed in-house by the Director of Technology Transfer who is a registered patent attorney. The patent attorney will be familiar with the field of the invention due to their educational background, but is unlikely to be an expert on the particular invention. Therefore, it is essential that the inventor(s) cooperate in the timely review and preparation of the patent application. The inventor(s) should expect to meet with the assigned patent attorney and should provide the attorney with any details that prove the invention is novel, useful, non-obvious and any other information that may be required by the attorney.
Marketing of Technology
With the inventor’s involvement, the TTO will conduct market research and identify potential companies to license the invention. Statistics show that that the more involved the inventors are in the marketing efforts of the technology, the more likely the chances for successful licensing of the technology. No one knows the invention more than the true inventors and it is very important to have their involvement in meetings with prospective licensees in order to discuss the technology in greater detail. Confidentiality agreements can protect any discussions held between the inventors and outside companies.
The TTO drafts customized contracts between the University and third parties. The rights to an invention are licensed, without relinquishing ownership. In an exclusive license, the University will ensure that the University retains the right to use and make the invention for research purposes so the inventor may continue his/her research. However, finding an appropriate licensee can take months and sometimes years, depending on the attractiveness of the invention and the size and stage of development of the market.
Typically two licensing paths can be pursued when licensing technology: top
A. Traditional License: A representative from the TTO licenses the invention to an established company. If the University is successful in licensing the invention to a established company, the University will distribute the income derived from the license in accordance with the University Patent Policy. Most University inventions tend to be in the early stage in the development cycle and thus require substantial commercialization investment, making it difficult to attract multiple licensees. Once a licensee has been identified negotiating specific licensing terms for different materials will take different amounts of time.
B. Start-up Company: If the inventor is interested in forming a start-up company, the TTO will work with the inventor to explain the requirements necessary to obtain a license from the University. In general, the inventor will be required to submit a conflict-of-interest document through the Office of Sponsored Programs and Research and a business overview document to the TTO. After the University has reviewed and approved the conflict-of-interest document and the business overview document, the TTO will begin to negotiate the license agreement with the inventor.
Product Development top
Before the University start-up can sell a product to consumers it will need to develop a product. This primarily entails product design, engineering and testing. University faculty and start-ups can work with the Office of Sponsored Programs and Research to identify and apply for Small Business Innovation Research (SBIR) and Small Business Association Start-Up Guide (STTR) grants to cover the expenses associated with developing a product. In addition, there are various state innovation programs that can be targeted for financing. The start-up will also need to perform market research and market analysis to determine how the company plans to enter the market. Below is a list of potential funding resources that faculty and CSU startups can apply to:
Ohio Third Frontier - An economic development initiative by the State of Ohio to expand research and technology development in the state.
To assist start-up companies, the University has recently entered into a partnership with the Manufacturing Advocacy and Growth Network (MAGNET), a nonprofit organization dedicated to support, educate and champion manufacturing in Ohio with the goal of transforming the region’s economy into a powerful global player.
Commercialization & Revenue top
Once a license agreement has been completed, the licensee will continue to develop the invention for incorporation into their products or services in accordance with the terms of the license agreement. Throughout the duration of the agreement, the TTO will monitor the progress of the licensee to verify they are in compliance with their obligations and ensure that royalty payments are received and distributed accordingly.