Our Process: Reviewing, Marketing, Protecting & Licensing ISU Technology
Once an invention or other innovation is reported to OIPTT/ISURF on an Intellectual Property Disclosure Form, several actions are put into motion by multiple staff. A due diligence process is begun by our disclosure management and licensing staff. Our disclosure management staff must review all documentation associated with the discovery and development of the invention to ascertain our rights and responsibilities associated with funding and materials or equipment used. Our licensing staff reviews the documentation to perform a preliminary assessment of commercial potential. The researcher is a critical component to this process and the researcher and OIPTT/ISURF staff must communicate regularly throughout this process for a successful licensing outcome. Following are links to information about the process we follow from receipt of the technology disclosure form to licensing.
I. Technology Disclosure Receipt and Review
II. Technology and Market Assessment
III. Marketing the Technology
IV. Protecting the Technology
V. Granting Licenses
I. Technology Disclosure Receipt and Review
a. Upon receipt of the Intellectual Property Disclosure Form, a case number is assigned to the technology and information is recorded in a database.
b. A review of rights and obligations is conducted: funding sources are verified and all related documentation is obtained for review; and all confidentiality and material agreements associated with the use of third party information or material is reviewed (examples: biological materials, company confidential data, software code, use of software or databases with reach-through rights or for which the university has a limited license for non-profit educational and research purposes only).
c. Inventorship or authorship issues are clarified. Clarification of discrepancies may require a patent attorney to manage. Joint inventorship or authorship and joint ownership issues with non-ISU parties will need to be clarified and managed; typically, a written agreement is reached with regard to management of the intellectual property.
d. All public disclosures and offers for sale, which affect the rights for patent protection and possibly commercial potential, are reviewed.
e. A patent review is conducted. The extent of the review may range from an internal review in consultation with the researcher after a cursory search for patents and publications to payment for a patentability opinion from a patent attorney.
f. A preliminary marketing review is performed. The review focuses on the markets in which the technology may fit and on the current and future state of the market sectors. For this preliminary review, internal resources are likely to be utilized. Those internal resources may include the researchers, data bases subscribed to by OIPTT/ISURF, internet and the researcher. See the Technology and Market Assessment for more detail.
g. Possible results of the preliminary review:
i. Idea only, the researcher needs to prove the idea and provide supporting documentation and data
ii. Additional data forthcoming, wait until receive data
iii. Not patentable
iv. Patent not necessary to protect and commercialize (copyright or material may be proprietary, such as germplasm)
v. Sponsor has rights that need to be managed prior to any other action
vi. Publication imminent; protect or don’t protect and review further (note that full due diligence by OIPTT/ISURF staff is compromised in these situations)
vii. Not commercial, commercial potential does not warrant the cost to protect, or technology may be better used by society through publication
viii. Potentially commercial, rights are cleared and the technology can be protected; perform more in-depth technology and market analysis and if findings warrant, market the technology
II. Technology and Market Assessment
During our commercial assessment we seek to identify and understand the inherent value of our technology as well as key barriers to successful commercialization. Several important considerations are discussed below.
a. Relevance of intellectual property protection is important to the value of a technology. Unless a patent provides a competitive advantage, it will have only limited commercial significance. For instance, if a very similar product or process can be made or used without the necessity of obtaining a patent license then the likelihood of licensing the patent is lessened. Product life cycle is also an important consideration, in cases where the product life cycle is measured in months rather than years, the investment of time and money in obtaining patent protection may not provide significant commercial advantage.
b. Acceptance of innovations varies from industry to industry and is often affected by economic conditions. Some industries are traditionally not responsive to licensing-in technologies from outside parties particularly from those outside of their industry. Others are unwilling to invest in a technology for which there is no immediate use. Barriers to commercialization exist when the use of the invention is conditional upon industry-wide changes such as changes in regulatory environment, industry standards, or processes within the industry.
c. Commercial need for new technology is dependant on what is currently available. If the invention does not provide significant benefits over replacement technologies, it is unlikely to be of commercial interest. Not all benefits are equal in importance, for example, time saving might not warrant an increase in cost. It is important to demonstrate how a new technology can provide a benefit using comparisons based on cost or time saving, improved performance, enhanced capabilities, etc.
d. Cost is often the first consideration for a business. Cost is relevant at any point in the development cycle, for example, are the materials necessary to make the invention available at a reasonable price, does the manufacture or use of the invention require extensive retooling of equipment or expensive changes to production processes. Additional expenditures may further increase the cost barrier, such as the need for additional scale-up engineering and testing, obtaining licenses to dominating patents or obtaining regulatory approvals.
e. Safety, efficacy, performance and consumer acceptance are important considerations for adoption of any new technology. If an invention cannot meet the expectations of the market in these areas, the likelihood of successful commercialization is decreased.
III. Marketing the Technology
a. Marketing activity includes the dissemination of non-confidential information directed at the potential utilization and benefit of the invention to specifically targeted companies. Referrals from our researchers are a major source of company contacts. OIPTT/ISURF subscribes to a database that provides specific technical interests of companies and the appropriate person to contact within the company.
b. Occasionally, consultants are hired to provide market assessments for industries or for the specific technology.
c. OIPTT/ISURF staff attend various meetings and conferences at which we market the technologies.
IV. Protecting the Technology: Patent, Copyright, or Proprietary Tangible Material Prosecution of patent applications (more detailed information found at Patents and the Patenting Process )
a. ISURF does not have a patent attorney on staff, but hires patent attorneys who have expertise in the field of the technology to be patented. ISURF consults with the inventor to determine which attorney is most appropriate for the technology and for the inventor.
b. Prior art issues are reviewed with the patent attorney. All known publications need to be provided to the attorney. It may be determined that a full prior art search is appropriate
c. A prosecution strategy is determined in consultation with the attorney and the inventor.
d. It is critical that the inventor update OIPTT/ISURF regarding activity related to the technology such as planned publications, research, new data, consulting and industry inquiries. This activity may impact the patentability of the invention and may have some impact on how or if the technology can be marketed.
e. Opportunities for review of the status of patent application or marketing of the technology naturally arise upon receipt of office actions and notices of allowance and patent maintenance fees due dates (4th, 8th and 12th year fees)
V. Granting Licenses:
a. Once a company expresses interest in licensing a technology, a meeting is established (preferably face-to-face) to discuss the interests of both parties and the appropriate process that will take place.
b. It is important for OIPTT/ISURF to understand how the company will commercialize the technology. Business and development plans are requested from the company. Neither party can determine the terms and value of the agreement until the commercialization process is fully understood.
c. Arrangements for the documents related to the commercialization of a technology (option agreements, license agreements, etc.) are the responsibility of OIPTT/ISURF. It is important for all parties (the company, OIPTT/ISURF, the researcher and the university) that OIPTT/ISURF is the only party from the university side to conduct the negotiations. ISURF must sign the documents and if other parties negotiate terms that ISURF cannot accept, the company’s time is wasted because ISURF must re-negotiate the terms.
d. It is frequently desirable by both parties to enter into an option agreement prior to a license. The option agreement gives the company a time limited right to review the technology information, conduct research activities if appropriate and exercise an option to enter into an exclusive license agreement if desired, with assurance that OIPTT/ISURF will not license the technology to others for the time that the agreement is in effect.
e. More detailed information about licensing can be found at “Accessing ISU Technologies for Commercialization.”
