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Technology Transfer

FOR UMSL RESEARCHERS: HOW IS TECHNOLOGY TRANSFERRED?

OVERVIEW

A faculty or staff member conducts research and then discloses the research to the University, via the ORA’s technology transfer staff.

The ORA evaluates the technology to determine patentability and marketability.

With the evaluation in hand, ORA staff consults with the inventor to determine next steps. Possible outcomes include:

  • The technology is furthered, using the most appropriate practice of stewardship (e.g., patents, copyrights, trademarks, trade secrets), and potential licensees are sought.
  • The technology is considered as the basis for a business start-up. The University may accept equity in exchange for licensing rights.
  • The technology is deemed either technically or financially unviable. In this case, the technology is moved to an inactive status and is no longer managed, or, if requested by the faculty/staff member, the University will consider a waiver of rights.

NOTE: Seeking a patent does not preclude publication of research results, and, in most cases, does not delay publishing. However, to retain the potential for foreign patents, a U.S. patent application must be filed before any description of the invention is publicly disclosed. (What constitutes public disclosure?)

To find out if your discovery should be patented, contact the ORA. Technology transfer staff will work with outside patent attorneys to accommodate your publication dates. Best results are achieved, however, if you submit your invention disclosure to the University at least three months prior to the first public disclosure. This allows time to assess both patentability and commercial potential and to draft a patent application to protect rights to your invention.

IP OWNERSHIP
Inventions made by UMSL faculty or staff in the course of their employment, using University time, facilities, or funds, are considered the property of the institution. If you have questions about whether your invention is the property of the University, clarify your rights by checking with the Director of Technology Transfer. You will need to inform the University about the circumstances involved in making the invention and your role in its conception and development.

INVENTOR INVOLVEMENT
Inventor involvement is important to the entire technology transfer process. Your expertise is especially helpful during the evaluation for patentability, in the patent application process, in identifying licensing prospects, and in meeting with companies expressing interest.

Inventors typically provide technical evaluation of previous patents and publications in their field, supply information to the patent attorney and review draft applications and responses to government actions, and discuss technical aspects with interested companies. Regardless of the amount of involvement, inventors are kept informed of the evaluation process and any actions taken, and their input is considered in making decisions about the University's protection and licensing of the invention. However, final responsibility for such decisions rests with the Office of Research Administration.

STEP-BY-STEP PROCESS

Step 1. Disclosure

The technology transfer process begins when you submit a confidential University of Missouri Invention Disclosure Form to the ORA technology transfer staff. The form asks for information such as a description of the invention, inventor contact information, relevant funding sources, prior art, prior and upcoming public disclosures of the invention, and commercial contacts in the field of the invention.

Step 2. Evaluation

ORA tech transfer staff evaluate the invention disclosure, conducting a patent and literature search to evaluate the uniqueness of the invention and a marketability survey of the literature and industry contacts. This evaluation will help the University determine whether your invention meets patentability requirements (new, useful and non-obvious) and is licensable (whether a company will pay UMSL for the right to commercially practice the invention). The disclosure evaluation process may take anywhere from a week to three months, and possibly longer, depending on the complexity of the invention and the target industry.

Step 3: Patenting

In the patenting process, inventors typically supply information to the patent attorney and review draft applications and responses to government actions. The ORA will select either internal counsel (provisional patents only) or external counsel to work with the inventor and the ORA technology transfer staff to draft, file and prosecute patent applications. After filing a patent application, it can take from one to three years for the patent to be issued or denied by the U.S. Patent and Trademark Office.

Step 4: Commercializing an Invention

As mentioned above, a viable technology can be commercialized either by licensing it to industry or establishing a business start-up company around the technology.

Marketing and Licensing: A patent license allows a company to use your invention. Marketing the invention is key to successful licensing. You can make a valuable contribution here, as you are likely familiar with potential markets and licensees for the invention.

The marketing process entails determining potential fields of use, identifying companies and preparing and sending out a non-confidential abstract. Along with our broad base of company information, many resources are available that enable the ORA technology transfer staff to identify companies doing research in a particular area. Once potential companies are identified, a non-confidential abstract is prepared, providing enough information without giving away confidential aspects of the invention or jeopardizing patent rights, reviewed by the inventor, and sent to the targeted companies. If a company wants to review the confidential information, they will be required to sign a non-disclosure agreement (NDA), which protects the technical information from disclosure to others, can prevent the forfeiture of valuable patent rights, and defines exactly what information can and cannot be disclosed. Inventors are notified when an NDA is signed so they know they can talk directly with the company about the invention.

The University pursues an aggressive licensing program for the development of mutually advantageous license agreements with industrial partners. The license agreement can be either exclusive or non-exclusive and can be adapted as necessary for each situation. There is no way to predict how long it will take to negotiate the agreement or how soon royalties will be received once an agreement is in place.

The ORA’s technology transfer staff handles licensing negotiations.

Any income resulting from licensing patent rights are distributed among the inventor, the inventor’s department, and the University as follows:

  • Inventor(s): 1/3 of income, before expenses
  • Department: 2/9 of income after patent expenses to the faculty inventor’s department
  • ORA: 2/9 of income after patent expenses to the ORA to support research and technology transfer activities
  • University System: 2/9 of income after patent expenses to the UM Office of Intellectual Property Administration to support system-wide technology transfer activities and partial support of the campus offices

RESPONSIBILITIES TO RESEARCH SPONSORS

INDUSTRY SPONSORS: Most company-sponsored research agreements specify the ownership of patent rights for inventions arising in the course of the research work. The University generally agrees to grant industrial sponsors, on mutually agreeable terms, a royalty-bearing license to commercialize any inventions arising from the research.

FEDERALLY FUNDED RESEARCH: Federal legislation allows universities to retain patent rights for inventions made in the course of federally sponsored research and development, with some exceptions. Researchers have an obligation to disclose to the Office of Research Administration their inventions from federally funded research. The University must make a disclosure of the invention to the government and file patent applications when appropriate.