How universities make money from new technology

This is a summary of the procedure that is followed to get inventions (intellectual property = IP) turned into IP licenses which in turn make money (split equally between the university, the Physics Dept. and the inventors). The information was taken from http://www.iphandbook.org/handbook/ch17/p13/

The OSU licensing office (Office of Technology Transfer) has a web page at http://oregonstate.edu/research/technology/index.htm

Disclosure Procedure

Conception documentation: lab notebooks, dated papers, or drafts witnessed.

Disclosure: required by all sponsorship agreements for research; must include description (papers attached), information on who are inventors, what funding was used, when conceived, when first disclosed or published, signature(s) and date, and assignment to Stanford; fill in printed form or use Internet disclosure form; must submit to OTL

Sign in: OTL logs in, gives docket number, and assigns to specific licensing associate (LA) who now has complete responsibility and authority for handling the invention from evaluation to licensing and monitoring licensee performance

Evaluation: LA discusses with INV; gets as much information as needed on details of technology, novelty, potential utility, and companies in the field LA also gets similar information from outside sources, usually by contacting sources in the field and supplying confidential data and details after executing a confidential disclosure agreement (CDA)

Strategy: LA decides how to license: exclusive or nonexclusive, by territory or worldwide, for limited and specific uses and applications or unlimited; sublicensing permitted or not; kind of company to approach and how; key licensing terms to shoot for; suitability for a standard license that can be filled out on the Web site

Contact potential licensees: LA assembles list and makes first contact (mail, e-mail, fax, telephone, Internet); information on what invention may do, but not how; offers details after execution of CDA

Patent prosecution: LA decides whether and when to apply for a U.S. patent; selects outside patent attorney and charges him/her with filing (normal or provisional); monitors filing and prosecution, and decides filing of foreign applications; files only if deems reasonable chance of success for licensing or prospect of getting expenses paid (for example, in return for an option to a potential licensee)

Negotiations: LA negotiates with companies who respond positively; draws up a license agreement (starting with boilerplate and modifying that if/as necessary or advisable); if deemed necessary, consults with attorney for legal advice for special or unusual situations

Executed agreement: OTL logs into database, documents terms and contact information, and programs database to generate reminders and invoices, as needed License period: LA monitors performance: receipt of royalties and reports. OTL sends out automatic computer-generated invoices for fees and earned royalties. If performance deficient, LA follows up with reminders or, in extreme cases, termination. LA may have to renegotiate parts of license agreement if situation has changed significantly since signing (at OTL’s request or at licensee’s)


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