Successful research programs will generate discoveries and intellectual property (IP). Research faculty can benefit greatly when IP is created and made available to be licensed, developed and commercialized.
Creation of IP does not limit the dissemination of research findings and can support your research program through project or program research funding, access to additional research tools and expertise, licensing fees and royalties and consulting fees. The goal of the technology development function at the college is to build knowledge and efficient use of intellectual property and provide access to the broad base of resources available to you to support your research program.
Steps in the IP creation process
Observations made and experiments conducted as part of a research program often lead to discoveries and innovations that can have significant value to larger audiences, including commercial value. In many cases, multiple researchers may have contributed to the innovation.
Submitting a disclosure of your invention to the Technology Commercialization Office (TCO) is the first formal step in obtaining proper IP protection. The invention disclosure is a written notice to the TCO that you have an invention. It is a confidential document that should fully describe your invention so that the TCO can begin an assessment. If you are planning on presenting your invention through publications, poster sessions, conferences, press releases or other public communication, you should complete an invention disclosure well-beforehand.
Invention assessment is the period in which you and your TCO licensing manager review the invention disclosure, conduct searches for conflicting patents or trademarks (as applicable). This evaluation process will guide the TCO’s strategy for how best to protect and your invention.
Protecting the rights of those who create IP is a high priority for the TCO. Common IP protection methods include patents, copyrights and trademarks, but could also include contractual use restrictions (e.g., for databases and materials). IP protection may not always be possible or necessary, and the legal costs may outweigh the benefits. Your college technology development officer and the TCO will work with you to determine the best course of action during the invention assessment.
There are two primary avenues the TCO pursues to get your ideas into the market:
- Find a third-party licensee
- Help you create your own company and license the innovation from the TCO to the company
With your involvement, your college technology development officer and the TCO can seek candidate organizations that have the expertise, resources and business networks to bring your invention to market. Each invention may be at a different development stage, and with your help, the TCO identifies existing opportunities in the marketplace where your invention might be a good fit. If there is interest in the invention, the TCO will begin negotiations to enter into a licensing agreement with the third party. License agreements can vary depending on the application of your research invention, but many times the traditional fee- and/or royalty-bearing license is the preferred approach.
With some inventions, an entirely new business might create the greatest opportunities. Your college technology development officer and the TCO can connect you to other inventors and entrepreneurs with experience in start-up formation and guide you through the process of planning and funding your new business.
Once a licensee has been identified, the TCO will negotiate and complete the license agreement. A license agreement is a formal contract between the owner of IP and another party. The owner grants permission to use the IP, usually for a specific period and objective. Regardless of the invention, there are standard terms included in each license agreement to protect the interests of the inventor, the inventor, the institution and the Federal Government (if applicable). The TCO will work with you and your college technology development officer in the development of an appropriate commercialization strategy for the invention and negotiate the terms of the agreement with the licensee. The TCO will also manage the license agreement for Ohio State over its lifetime, including collecting license deliverables such as licensee commercialization reports and payments.
After a license agreement has been signed, the licensee continues the advancement of the invention through applied research and development steps and makes other business investments to develop the product or service. This step may include further development, securing regulatory approvals, sales and marketing support, training and other activities.
Revenues received by the university from licenses are distributed to the university, the college(s) of the inventor(s), and the inventors. Revenue distributions follow the guidelines in The Ohio State University Patent Policy.