Technology Commercialization Process
After Office of Technology Transfer (OTT) receives a new invention disclosure, a meeting will be arranged between the inventors and OTT (this will take place as soon as schedules permit, and typically within 30 days). During this meeting, which can last up to two hours, inventors will meet with a licensing officer and a patent attorney to discuss the invention and evaluate its patentability and commercial potential. Among the topics discussed are the potential applications of the technology, the market landscape, potential competitors and/or industry partners, and the inventor’s research plans. Inventorship and funding support for the work will also be discussed. At the end of this meeting, inventors and OTT staff will have outlined the immediate next steps in the commercialization process.
Patents are a primary mechanism to protect intellectual property, and often become important assets for commercialization. An issued patent confers a limited monopoly to the patent owner to exclude other parties from practicing the claimed intellectual property. A timeline of the patent application process is depicted below – the process typically takes several years, and there’s no guarantee that an issued patent will result. At the starting point, if OTT’s review of a new invention disclosure shows potential for patent protection, a provisional patent application will generally be filed. The provisional application serves as a one-year placeholder, during which time the inventor and OTT work together on the potential claims and supporting data that is necessary for the next phase of the patent application process. Provisional applications must be converted within one year from the date of filing. As patents are country-specific, OTT works with the inventors and, if available, industry partners, to identify countries in which to file (i.e., those countries deemed important for manufacturing and/or sales of products based on the invention). The efforts involved in IP protection require a major investment of resources on the part of the University, and OTT must periodically reassess the overall IP investment strategy, given limited resources.
Copyright is another mechanism to protect intellectual property. It is a way to protect a creative work that is fixed in a medium that allows it to be perceived, reproduced, and communicated. Examples of copyrightable works include computer programs, technical drawings, and maps. Copyright can be claimed upon creation of an original work. Official registration of the copyright may be sought in order to enforce its exclusive rights through litigation. OTT will work with UMB’s creators of copyrightable works to identify useful applications and find licensing partners to commercialize the work.
Tangible Research Property (TRP) refers to research products that may not be patentable but nonetheless have value as research tools (i.e., that are difficult and/or expensive to create). TRP includes biological materials, such as cell lines and transgenic animals and plasmids. OTT may be able to license these materials to commercial entities for use in research or to sell as research tools, with revenues to be shared with the UMB creators. Such licenses are typically non-exclusive, so the same TRP can be licensed to more than one company.
Application Preparation and Prosecution Timeline
To promote and market UMB’s research expertise and portfolio of technologies, OTT will connect with many types of potential industry partners. Our team will market specific technologies and seek feedback on the general market landscape. OTT marketing takes a variety of forms, for example: by posting non-confidential summaries on UM Ventures and other websites, responding to inquiries, and pitching the technology and to business development industry contacts throughout the year and during annual professional conferences focused on tech transfer. When marketing efforts move to the stage where a company wishes to learn more details about a given technology, OTT will put a confidentiality agreement (“CDA”; also called non-disclosure agreement or “NDA”) in place before facilitating the dialogue between the inventor(s) and the company. A CDA/NDA will require a party to protect the unpublished, confidential information which is provided by the other party for a period of several years, unless that information becomes publicly available in the meantime.
TRPs and copyrighted materials are also marketed by OTT. We welcome referrals from inventors to commercial entities that may be interested in using or selling these.
OTT has several resources for Investors interested in forming a startup company around their technology. Members of our Ventures team have considerable experience in startup formation, financing, business valuation, etc. OTT also has a select group of entrepreneurs-in-residence, with seasoned management experience in several business sectors (medical devices, software, and therapeutics commercialization). UMB inventors are welcome to seek advice from these experts, and can start by contacting one of OTT's licensing officers.
OTT has several types of commercial agreements to meet the needs of our industry partners. For example, a company can enter into an exclusive option agreement, to evaluate a technology for a period of time (e.g., 1 year) before entering into a longer-term master license agreement to permit commercialization of a UMB technology. The content of any license or similar commercial agreement typically includes the confidential information of our business partners, and therefore copies of such agreements remain in OTT and are not distributed outside of the Office.
For licensed UMB technologies, revenues are shared between the inventors, the inventors' departments, and the Office of Research and Development. This is all managed in accordance with UMB’s Policy on Intellectual Property. Funds are disbursed by OTT once a year on the anniversary of the date of OTT’s receipt of the first license payment.