Technology Transfer Process

1

Invention Disclosure (ID)

An invention disclosure is a confidential document used  to evaluate technologies created by University researchers. The disclosure is the first step in engaging the office to evaluate your invention for commercialization. The ID should list all funding sources and include all of the information necessary to begin pursuing protection, marketing, and commercialization activities. A fully completed invention disclosure form is essential to our evaluation process and to the commitment of our resources. Additional information on Invention Disclosures can be found on the Forms and Policies page. If you have any questions, please feel free to contact the Technology Transfer office.

2

Invention Evaluation

An invention evaluation usually consists of two parts: assessment of marketability and assessment of patentability.

To assess marketability, a market analysis is conducted based on the information in the invention disclosure. The purpose of the assessment is to evaluate the relevant market’s need for the technology. The analysis may also include an assessment of similar or substitute technologies, how those technologies affect the market, and how those technologies affect the marketability of your invention.

To assess patentability, a prior art search is conducted to see if there are similar technologies in the literature. This search includes an analysis of issued patents, published patent applications, scientific journals, and other publicly available documents. The patentability assessment also includes an analysis of any prior public disclosure and its resultant effect on our ability to obtain effective patent protection. If our analysis determines patent protection is not a necessary part of the commercialization strategy, we assess what intellectual property protection is needed or desired for effective commercialization of the invention.

3

Patent Application filing

After the invention evaluation, if the office concludes that: (A) obtaining a meaningful patent is likely and conducive to commercialization and (B) the invention addresses a need in a market of significant size to justify the patent costs, the office will proceed to work with the Office of General Counsel to obtain outside patent counsel to file a patent application on the invention.

Working in a collaborative manner, the appointed patent counsel works with the inventor(s) to prepare a patent application to be filed with the U.S. Patent and Trademark Office. This preparation process generally takes a few weeks to three months.  The inventors will have an opportunity to review a draft of the patent application prior to its filing with the U.S. Patent and Trademark Office. The outside patent counsel works with the University and the inventors throughout the stages of the patent prosecution process until a patent is issued or the parties decide to abandon the patent application. The patent prosecution process commonly takes a few years post-filing before a patent is issued.

4

Marketing and Commercialization Strategy

Working with the inventors, the office seeks to identify potential licensees that have the expertise, resources, and interest to further develop an invention.  The Technology Transfer office will advocate to the business world while the inventors advocate to their peers for when a company is interested in consulting its scientists or engineers, there is “buy in” at the technical side as well.

Sometimes instead of partnering with an existing company, a start-up company may be best to commercialize the invention. In this case, the inventor should take an active role in the start-up company to increase its chance of success.

5

Licensing

A license agreement is the vehicle that provides a company or a person the right to commercialize an invention developed by Wright State University while maintaining ownership. There are various licensing structures available, and the license may be exclusive or non-exclusive. In addition to structuring license agreements, our office will work with an interested party to structure an option agreement for a llimited time evaluatation of the technology before entering into licensing negotiations.

6

Royalty Sharing

Royalties received by the office are distributed in accordance with the Royalty Distribution Schedule in the IP policy