Overview of Technology Transfer Process
Step 1: Submitting the Disclosure
The technology transfer process begins at the university when the research investigator or creator identifies a discovery or innovation or completes copyrightable work which s/he believes may have potential for commercial development. The first formal step in the research occurs when an inventor submits a "disclosure" form describing the patentable or copyrightable innovation to the university's Office of Technology Transfer (OTT).
Step 2: Technology Assessment for Patentability & Commercial Potential
Office of Technology Transfer (OTT) evaluates the invention for its patentability and commercial potential. If the disclosure is an invention, the OTT will further investigate the invention to determine the advisability of investing funds to file a patent application. Based on the state of publicly known information about the elements of discovery called "prior art", the OTT will assess the commercial value of the invention.
Step 3: Filing the Patent Application
If the decision is made to file an application, the Office of Technology Transfer (OTT) engages a patent attorney to work with inventor(s) to write the patent application, file it in the U.S. Patent and Trademark Office (USPTO), and follow it through the patenting process. If the invention is funded by Federal Agency, the OTT will comply with all the reporting requirements specified by Bayh-Dole Act.
Step 4: Marketing the Patent
University inventions are often embryonic in nature and of unproven market potential. For this reason, traditional methods of technology marketing have limited success in finding licensees for university. The identification of potential licensees for a patent often starts with information provided on the disclosure form and through discussions with the inventors. Further research is performed by the Office of Technology Transfer (OTT) to identify as many companies as possible. Once the licensee is selected, the OTT will negotiate the licensing terms.
Step 5: License Negotiations
The financial considerations for a license involve a balancing of risks and rewards. Since many university inventions tend to be at an early stage of development at the time of licensing, royalty rates and license fees are typically lower than those between commercial companies licensing one another. The financial components of the deal are negotiated between the university and the licensee and typically include: (i) Reimbursement of the university's patent costs (ii) License issue fees (iii) Annual license maintenance fees (iv) Running royalties (v) Equity shares
Step 6: Distribution of Patent Licensing Revenues
Most commonly, the first revenues received from a license are used to repay the university for the patenting costs of the invention if the license does not hold the licensee accountable for these costs. Thereafter, revenues are generally distributed according to the unvirsity's IP Policy. Please refer to Mason's IP Policy at: https://universitypolicy.gmu.edu/policies/patenting-university-inventions/
Source: "A Tutorial On Technology Transfer In U.S. Colleges And Universities" by COGR.