Finding the right partners together
Our team works with hundreds of researchers each year. Together, we put brilliant innovations into the hands of companies primed to help them realize their full potential and impact lives. We have established a clear commercialization pathway for licensing a technology to an existing company.
The licensing pathway
As soon as a discovery is made, inventors should submit an invention disclosure through Innovate. These confidential, internal, non-public disclosures help protect the intellectual property (see the university’s Intellectual Property Policy) and serve as a formal communication to the Corporate Engagement Office of a potential invention. A licensing manager will be assigned to the technology within one week of receiving an invention disclosure.
The licensing manager will contact the inventor to better understand the invention and the inventor’s desired outcome. Together, they will brainstorm ways to add value to the discovery as early in the commercialization process as possible. These could include identifying other applicable markets, non-traditional sources of technology advancement funding or ideas for validating and testing the technology. Licensing managers will outline initial action steps for both parties. A faculty meeting usually takes place within two weeks of an invention disclosure.
With the inventor, licensing managers assess the invention for technical merit, maturity, intellectual property protection potential and market impact. This helps to determine what steps can further develop the technology before license. The licensing manager researches and identifies the best protection method for the technology and makes a preliminary assessment of the market landscape and dynamics to understand the invention’s commercial potential. Depending on the complexity of the technology, the assessment step can take several months.
In the event that the technology commercialization team determines that the invention is best protected by patenting, the team makes initial patent filing decisions and identifies outside patent counsel with expertise in the relevant field. The inventor works closely with the licensing manager and the patent counsel to draft relevant, valuable, and enforceable claims based on the nature of the invention, the relevant markets and anticipated business model for commercializing the invention. Any subsequent patent decisions are made in concert with the inventor and the inventor’s college research leadership team.
Non-patentable inventions, such as materials, copyrighted works, and certain software, can be protected by other means such as copyrights or contracts. Licensing managers will be able to guide you on the best way to protect non-patentable inventions.
This process begins as early as a month after the invention disclosure and can take up to several years before a patent is secured, depending on the complexity of the technology.
A one-page non-confidential summary of the invention is prepared with the creator’s input, highlighting the invention’s value proposition for potential licensees. The licensing team identifies and pursues licensees based on market assessments through posting on innovation websites, market-focused marketing campaign and personal network marketing. As interested parties engage, appropriate agreements are put in place to facilitate discussion and protect the intellectual property. Our team will begin marketing a technology as early as one month following an invention disclosure and will continue that process until the license is secured or the technology is dispositioned in another manner.
Licensing managers lead license negotiations once a potential licensee is found and determine which type of agreement, such as a license or option, best fits the situation. To avoid conflicts of interest, inventors are not involved in license negotiations. Once a company is interested in a technology, the negotiation process is initiated with the total negotiation time being determined by the partner and the unique characteristics of the deal.
Ideally, the commercialization process leads to a product sold on the market returning royalties and other revenue to the university for additional research, education and inventive activity. Through the life of the license, the Corporate Engagement Office monitors compliance with any agreement and continues to manage all intellectual property activity.
Staff Assistant, Technology Commercialization
Business Operations Consultant
Invention Compliance Officer
Senior Analyst, Business Operations
Join us for the 2021 Research and Innovation Showcase this Thursday - April 15
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