Technology Transfer Process
OTTS work with creators and innovators prior to filing a formal Disclosure Form. OTTS representative will explain the Technology Transfer process and sketch out a rough outline of the various steps to transfer the innovation to the marketplace. Advice will be given as to when you should formally report your innovation and the various requirements that must be met to protect the IP rights and to successfully commercialize the innovation.
Early contact with OTTS to discuss research focused on creations, discoveries, and innovations that have commercial potential and to provide guidance regarding the technology transfer process.
Once you believe a useful innovation is fully conceived, please complete and submit the Disclosure Form to OTTS. This helps collect pertinent information regarding the creators/inventors, the innovation use and description, its potential advantages over existing technologies, if any, and the key dates of development. If the work was funded by a federal grant or by industrial sponsor there may be certain obligations of disclosure and reporting that will need to be performed by OTTS. Another important section in the Disclosure Form is to indicate the “Date of First Public Disclosure” to help ensure that patent rights are preserved. The Disclosure Form should include details about what is novel and useful about the innovation and its stage of development, what experimental data or prototype has demonstrated feasibility. The commercial applications of the invention are also discussed like – what sort of products will result from the invention, characteristics of the market, advantages of this invention over its competitors and so forth.
Submission of a Disclosure Form to OTTS begins the formal technology transfer process. All disclosures are confidential and should fully teach the innovation.
Upon submission of the Disclosure Form, the OTTS will generally meet with the innovators to ensure that the innovation is well understood. OTTS will examine three main criteria - Novelty, Utility and Non-Obviousness. A prior art search will be performed with input of the inventors to identify any potential advantages and distinctions. Additionally, this evaluation process will also help to understand if the technology should be licensed to an existing company or if the innovation is a potential platform technology that could be licensed to start-up company. Upon review, the Disclosure Form and evaluation results are presented to the Patent Advisory and Technology Development Oversight Committee (PAC) for a determination on whether the University shall prepare and file a patent application or copyright to protect the innovation. The Patent Advisory and Technology Development Oversight Committee (PAC) evaluates innovations based on the detailed information provided by the innovator(s) in the Disclosure Form, and the innovators will be asked to give a brief presentation about their innovation at the monthly PAC meeting.
The PAC will then advise the President whether the innovation has sufficient value, commercial potential, and is of sufficient interest to BGSU to warrant its retention and protection; or if the same should be relinquished to the innovators(s) or otherwise dealt with. The President is empowered and authorized after receiving the advice from PAC, and after reporting to Board of Trustees, to act on or reject the PAC recommendations. Within six months after disclosure to BGSU of a discovery or invention, the President of BGSU shall elect whether to initiate patent preparation and prosecution process, or relinquish the rights to the inventor.
OTTS assesses intellectual property protection options, analyzes the market, and identifies competitive technologies to determine commercialization potential of the innovation.
Based on the evaluation, the University will determine whether to file for patent or copyright protection for the innovation. A patent gives the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. A copyright is a form of protection for original creations and works of authorship.
The cooperation from innovators through the protection process is important. This will include regular meetings and communications to review patent and copyright applications and correspondences from BGSU’s IP Counsel and the USPTO. For patentable inventions, there will be an initial meeting with BGSU’s IP Counsel to draft a provisional patent application. In these meetings, the prior art, commercial embodiment of the invention and the type of claims needed to protect the embodiment, the breadth and depth of the claims we can hope to receive, the ability to detect infringement, and the ease of inventing around the patent will be discussed.
OTTS assists with the preparation and review of presentations to the Patent Advisory and Technology Development Oversight Committee (PAC). At the direction of the committee, OTTS directs and assists intellectual property counsel in filing for copyright protection and patent applications.
OTTS will conduct market research and identify candidate companies that have the expertise, resources, and business networks to commercialize the innovation and bring it to the market. OTTS will prepare and distribute non-confidential summaries and assess the interest of companies in obtaining a license to the IP rights. If a company contacts the innovator directly, the innovator should refer the company to OTTS. The innovator’s active involvement in identifying potential licenses and preparing information to be presented to companies can dramatically enhance the success of this process. The innovator may be required to communicate with the perspective licensee in order to discuss the technology in detail.
The non-confidential patent summaries are be posted on Available Technologies section of the OTTS webpage for external partners to review.
OTTS develops strategic marketing plans to identify potential licensees of innovations. With assistance from innovators, OTTS prepares and distributes non-confidential summaries and executes confidentiality and material transfer agreements, as needed.
Before a licensee can sell a product or service to consumers, further research and development of the technology is often needed. Product development primarily entails product design, engineering, and testing. Identifying and applying for grants and securing other funding sources to cover the expenses associated with further development of a product is often an important part of the commercialization process. In addition, commercialization may entail obtaining further regulatory approvals and further development of sales and marketing support, training, and other activities.
This process of transferring the rights to practice an innovation is typically done through an agreement in which BGSU grants to a third party, either an established business or a new startup business, a license to use BGSU’s Intellectual Property rights in the designated technology, sometimes for a particular field of use and/or region of the world. This grant may be exclusive or non-exclusive. These licenses include defined terms and conditions for certain performance requirements that must be met by the licensee on addition to making financial payments to BGSU. The net royalties are distributed among inventors, departments, and the university to enhance further research, education, and participation capabilities for technology transfer at BGSU.
After assessing the technology and comparison with current market trends, a successful marketing campaign could lead to the following options to license the invention:
- Licensing to Industry: The technology could be licensed to an existing company in the industry of the invention
- Licensing to an Entrepreneurial Start-ups: The technology could be licensed to a start-up company that will further develop and commercialize the technology.
- Licensing to a Faculty Start-ups: The technology could be licensed to a faculty owned start-up company, where the start-up company will to further develop and commercialize the technology.
OTTS is responsible for all negotiations related to the execution of license agreements with third parties, which allows for product development, production, marketing and sales of the innovation.
Updated: 07/09/2020 05:19PM