|
|||||||||
|
|
||
Many researchers are unaware of how they can benefit from the discovery of a new technology via patent licensing. After all, the primary goals in research are generally to perform the work, satisfy the sponsor and publish the findings. Inventing or discovering a new technology is not the first concern. However, the Office of Research and Sponsored Programs (RSP) has services that support Wright State University faculty, staff and student researchers who invent or discover a new technology. The Technology Transfer program addresses technology disclosure questions, intellectual property issues, technology licensing, and the development of business and marketing plans. Researchers benefit because RSP has a royalty sharing policy that allows the researcher to receive a certain percentage of any royalties or fees generated from a party (company) that licenses or buys the technology.
Once a discovery or invention occurs, the researcher should contact RSP and prepare an invention disclosure form. Inventions include new processes, products, apparatus, compositions of matter, living organisms -- OR improvements to (or new uses for) things that already exist. Even if the status of the discovery or invention is on paper only, an invention disclosure form should be completed and RSP should be contacted. The five-page form is available here: http://www.wright.edu/rsp/TechTrans/disclosure.doc. Once this document is received by RSP, the disclosure is reviewed and the staff discusses the innovation with the principal investigator, reviews the current competitive market, and determines whether a patent, copyright or other intellectual property application should be filed. If a patent is to be filed, RSP will work with counsel and a local patent law firm to accomplish this.
If the investigator is interested in licensing or selling the patented technology, potential industry partners are contacted. A confidentiality agreement is usually agreed to and signed by the potential partner prior to RSP sending any information on the technology. Once the industry partner has made a decision to buy or license the technology, RSP negotiates a license or sales agreement between the partner and WSU on the researcher's behalf. A license agreement is a contract between a technology producer and a technology developer. Under the typical license agreement the technology producer (e.g. manufacturer) receives the right to make, use, and sell the technology. In return, a royalty or commission on any sales generated with regard to the technology is paid to the technology developer, WSU (and the researcher). RSP receives and processes all licensing royalties. Researchers have a choice of what and where their share of the royalties should be deposited, in accordance with the University's intellectual property policy.
If the investigator is interested in starting a business around the technology or discovery, then RSP will assist by providing business planning resources. Working with local economic development groups and on-campus business development resources, RSP can help investigators plan their start up business. RSP can coordinate the efforts of internal resources such as working with staff and faculty at the Raj Soin College of Business and the Small Business Development Center, both located in Allyn Hall. One of the benefits of starting a company around the development of a technology is that the new business can receive an exclusive license to the technology and generate income through product sales while still generating research dollars through royalties for the researcher.
Through a component of its Research Challenge Program, Wright State also makes funding available on a competitive basis to inventors who seek to expand the benefits of their University research accomplishments through commercial application and technology development. Application forms for this Technology Commercialization competition are found here.
|
Step 1 Discovery Faculty and Staff researchers here at WSU may invent or
discover a new technology during their research. A discovery could be a device, a method,
a cell line or artwork, or an improvement on an existing technology.
An Invention Disclosure
must be submitted to the office of Research and Sponsored Programs. This form can be submitted in person or electronically.
Once the discovery is reviewed consideration will be made to apply for legal protection. There are several forms of
Intellectual Property that can be applied for depending on the discovery. After the disclosure is
received, it may be sent by the Technology Transfer Director to one or more members of the
Invention Review Panel for additional reviews and recommendations.
While evaluating the invention, parties outside of the RSP
may be called upon for their opinion. A Confidentiality Agreement (sometimes
referred to as a non-disclosure agreement or NDA) must be signed by
these parties. Often this means that employees at the university must also
agree to keep confidential any
proprietary information they may receive.
Technology Transfer involves the licensing of
WSU's Technologies to commercialization partners in industry. A
Licensing Agreement is signed between the University and the Partner. Researchers
interested in starting their own company (Start-Ups) can license the technology from
WSU as well. For biological discoveries, a Material Transfer Agreement (MTA) may be used to allow the transfer of discoveries between
WSU and other researchers at other institutions. If you need authorization for such a transfer, please complete an
MTA Request Form and return it to the Technology Transfer Office.
Step 5 Commercialization The Licensee has the right to sell, make or use the technology.
Once the technology is commercialized the Licensee will pay a
royalty
to WSU, which is shared with the inventor(s)
[see WSU intellectual property policy]. RSP will maintain all royalty accounts.
|
||
