We encourage you to contact U-M Tech Transfer during your discovery process to ensure that you are aware of the options to develop the commercial potential of your research. Tech Transfer staff members are trained to assist you with questions related to marketability, funding sources, commercial partners, patenting and other protection methods, new business start-up considerations, University policies and procedures, and much more. Our team approach provides you with a licensing specialist supported by internal legal assistance, and, if a new business start-up is being considered, a new business formation specialist as well.
The process of technology transfer is summarized in the steps below. Note that these steps can vary in sequence and often occur simultaneously.
- Research: Observations and experiments during research activities often lead to discoveries and inventions. An invention is any useful process, machine, composition of matter, or any new or useful improvement of the same. Often, multiple researchers contribute to an invention.
- Pre-Disclosure: An early contact with U-M Tech Transfer personnel to discuss your invention and to provide guidance with respect to the disclosure, evaluation, and protection processes described below.
- Invention Report: The written notice and description of invention to U-M Tech Transfer that begins the formal technology transfer process. An invention report is a confidential document, and should fully document your invention so that the potential options for commercialization can be evaluated and pursued.
- If you believe that your invention has the potential to be protected via patents, the invention report form should be submitted as soon as possible, preferably a minimum of three months prior to any public disclosure or publication as our ability to obtain foreign protection is lost upon any public disclosure of the invention.
- All sponsors (i.e., government, industry, and foundation) must be informed if an invention is developed during a project. Tech Transfer will work with you to notify the proper parties.
- Assessment: The period in which you and your U-M Tech Transfer representative review the invention report, conduct patent searches (if applicable), and analyze the market and competitive technologies to determine the invention's commercialization potential. The evaluation process, which may lead to a broadening or refinement of the invention, will guide our strategy on whether to focus on licensing to an existing company or creating a new business start-up.
- Assessment typically takes from 1 week to 3 months and we will keep you informed during the process.
- Protection: The process in which protection for an invention is pursued to encourage third party interest in commercialization. For potentially patentable inventions, U-M Tech Transfer will work with a patent attorney and you to determine whether to file for patent protection. Patent protection, a common legal protection method, begins with the filing of a patent application with the U.S. Patent Office and, when appropriate, foreign patent offices. Once a patent application has been filed, it will require several years and tens of thousands of dollars to obtain U.S. and foreign patents. Other protection options include copyright and trademark.
- Inventors work directly with U-M's patent attorneys to provide needed insight into the inventive elements and how best to make and use the invention. Inventors may also provide insight and analysis of other relevant “art.” Inventors assist U-M Tech Transfer in providing all potentially relevant art to the attorney. Inventors review the completed patent application for accuracy and for supported claim coverage. They also report dates for all public presentations, abstract submissions, and manuscript submissions.
- For additional information, see the Patents, Copyrights, & Trademarks section.
- Marketing: Your contacts at companies may also be very important as we contact potential licensees during the marketing process. Ideally, one or more companies may express interest in the invention. Often non-disclosure agreements are signed to enable the interested company to review more detailed and unpublished data and information and to potentially visit your lab.
- Selecting a Partner: Assuming more than one company is interested in the invention, U-M Tech Transfer will identify the most appropriate licensing partner(s) for the invention. Our criteria includes the potential licensee's overall ability to: 1) commercialize the technology, 2) obtain or provide funding to support development of the technology 3) leverage its other activities to assist in commercialization of the technology, and 4) provide management and technical personnel, as well as the licensee's business plan for commercialization. Other factors include prior and ongoing relationships with the licensee, the willingness of one or more University inventors to work with licensee, ability of the licensee to accept license terms required by the University and more.
If creation of a new business start-up has been chosen as the optimal commercialization path, U-M Tech Transfer business formation specialists may assist in planning, creating and funding the start-up.
- Licensing: A license agreement is a contract between the University and a third party in which the University's rights to a technology are licensed (without relinquishing ownership) for financial and other considerations. A license agreement is used with both a new start-up business or with an established company. An option agreement is sometimes used to enable a third party to evaluate the technology for a limited time before making a decision about licensing.
- The inventor's involvement in the licensing process is very important. It is often the inventor's knowledge, contacts, sustained effort, and ongoing interactions with his/her technical counterparts in the potential licensee that closes deals and helps turn the invention into a product. Licensing is a team approach involving both the Tech Transfer office and the inventor.
- For details on various types of agreements, see the Types of Agreements section.
- Commercialization: The licensee continues the advancement of the technology, and makes other business investments to develop the product or service. This step may entail further development, regulatory approvals, sales and marketing, support, training, and other activities. The inventor may have an opportunity to participate in additional research and/or consulting.
- Revenue: Revenues received by the University from licensees are distributed to schools, colleges, departments, and inventors to fund additional research and education and to encourage further participation in the tech transfer process. For additional information, see the Royalties and Revenue section.
Printed from: http://techtransfer.umich.edu/resources/process.php