What is technology transfer?
Technology transfer is a term used to describe a formal transfer of rights to use and commercialize new discoveries and innovations resulting from scientific research to another party. Universities typically transfer technology through protecting (using patents and copyrights), then licensing new innovations. The major steps in this process include the disclosure of innovations, patenting the innovation concurrent with publication of scientific research and licensing the rights to innovations to industry for commercial development.
How do academic institutions measure success in technology transfer?
Early numerical measures include the number of patents filed, license agreements executed and new companies formed. Later numerical measures include revenues from license fees, royalties and cash from equity investments paid to the academic institutions and the numbers of products successfully introduced to the market. Success is also demonstrated by the impact the products have on our lives.
Other non-numerical - but equally important - results of technology transfer include a university's ability to retain entrepreneurial faculty, attract outstanding graduate students, contribute to the institutional reputation for innovation, augment its research program through interaction with the private sector and enhance its reputation for providing highly trained students for the industrial work force.
What are the benefits of university technology transfer efforts?
Academic technology transfer - the licensing of innovations by universities, teaching hospitals, research institutes and patent management firms - adds billions of dollars to the U.S. economy and supports hundreds of thousands of jobs. It contributes to the spawning of new businesses, creating new industries and opening new markets. Most important, technology transfer from universities to the commercial sector has led to new products and services that improve our quality of life. From new cancer treatments to faster modems, from environmentally friendly metal processing to beautiful flowering plants, technology transfer from academic institutions is advancing the way we live and work.
What is intellectual property?
The term "intellectual property" generally relates to four distinct kinds of legal protection: patents, trademarks, copyrights, and trade secrets. Each kind of intellectual property is governed by its own body of federal and/or state law. The kinds of things that are protected by intellectual property law include scientific and engineering inventions (including new methods and apparatus), distinctive marks for identifying products or institutions, computer software, "know-how," and forms of expression that are affixed in tangible form (i.e., books, movies, artistic works of art).
How is intellectual property protected?
Generally, by federal patent law, federal copyright law, federal trademark law, state trademark law, state laws regarding trade secrets and other laws related to businesses and contracts.
Who owns the intellectual property created at Lehigh?
If the intellectual property was developed by an employee of Lehigh or invented at LEHIGH facilities under the supervision of LEHIGH personnel, the intellectual property is owned by LEHIGH. Each inventor must assign his or her rights in the intellectual property to LEHIGH. This includes all faculty, staff, fellows, and graduate students who have an appointment at LEHIGH. The University has the right under its policy to retain ownership of its researchers' inventions and discoveries. The Bayh-Dole Act of 1980 charges us with the responsibility to pursue commercial development of inventions resulting from federally sponsored research for the public interest.
What is the Bayh-Dole Act?
The Bayh-Dole Act, passed by Congress in 1980, created a uniform patent policy among the US federal agencies that fund research in the non-profit and small business sectors. The Act provides recipients of federal research funds with the right to retain ownership of their patents with the underlying tenet that federally funded inventions should be licensed for commercial development in the public interest. This principle is reflected in virtually all university policies whether or not the invention is federally funded.
When should intellectual property be disclosed to the University?
Intellectual property should be disclosed to the Office of Technology Transfer early in the development process. Disclosure to the OTT should be made before any public disclosure (oral or written) of the information is made. In this way, an informed evaluation can be completed for the potential invention and an appropriate protection and marketing strategy developed.
What happens if my invention is publicly exposed?
In the United States, if the invention has been described in a printed publication anywhere, or has been in public use or on sale more than one year before the date on which an application for patent is filed, a patent cannot be obtained. In most other countries, once the invention has been described in a printed publication or has been in public use or on sale, a patent cannot be obtained.
What constitutes public disclosure?
There are some gray areas to this question, but public disclosure includes journal publications, website publications, and presentations at conferences. More generally when the intellectual property is made publicly available and accessible to those skilled in the art to which the invention relates.
What if a collaborator from another institution has contributed to my invention?
LEHIGH has inter-institutional agreements with many universities, research institutions and other organizations, and may negotiate such an agreement with your collaborator or institution. This type of agreement determines which institution would take the lead in patent and licensing of the invention, as well as how any royalty income would be shared. Each inventor should separately disclose the invention to his or her home institution.
Who is an inventor?
Inventorship is specifically defined under US law. An inventor is a person who makes an original, significant intellectual contribution leading to the conception of the invention. This concept is significantly different from authorship on an academic publication.
What can be disclosed to the public or to a company before a patent application is filed?
In the absence of a signed and valid confidentiality agreement (see below) or a filed patent application, it is generally not a good idea to make any kind of public disclosure of your potential invention if you believe that the disclosure contains any patentable aspects. What constitutes a public disclosure depends greatly upon the circumstances under which the information is being disclosed and the nature of the disclosure. Accordingly, it is strongly advisable for you to discuss a pending disclosure (including a publication submission, a presentation of a poster, paper or abstract at a meeting, or meeting with a company) prior to the disclosure with someone in OTT.
What is a patent?
A patent is a legal monopoly that prevents others from making, using, or selling an invention covered by the patent. Patents are granted by governments. Generally, patents may be enforced only in the jurisdiction that has granted them.
What is patentable?
For the standard type of patent, called a utility patent, an invention must be either an apparatus, a composition of matter, a process, or an article of manufacture (i.e. an artificial, man-made thing rather than an unprocessed, natural object or material). An improved version of previous technology may be patentable, as well as a new use for an existing technology. To be patentable, the invention or discovery must possess:
Utility: The patent statute specifies that an invention must be useful; i.e., it has a real-world application.
Novelty: The patent must be new, i.e., the exact same thing must not have existed or been done before.
Non-Obviousness: Even if novel, the invention must also be different enough from past technology that the average worker in the field would not have come up with the new invention from what was already known. If the invention does not meet this test, it may be rejected as obvious. Remember that the average worker in many scientific fields may be a Ph.D. researcher. In order to meet this requirement, inventors need to be aware of issues related to prior art, barring events, and bar dates.
There are other legal requirements for patentability that relate to the kind and amount of description, language and supporting data that must be present in the patent application itself. If you have questions about these other requirements, please contact someone in OTT.
What is prior art?
Prior art is any relevant publication, patent, or event prior to invention that may be considered by the patent office in evaluating patentability of the invention. If a patent application is filed in the US, anything that has been published, used in public, offered for sale or sold by anyone before the inventor(s) made the invention, or more than one year before the application is filed, becomes a part of the prior art for that application.
What is a barring event?
The publication, use, offer for sale or sale of an invention anywhere in the world is known as a barring event, because if a year passes between one of these events and the date when a patent application is filed on the invention, the inventor is barred from patenting the invention in the US As explained above, a barring event may and often will immediately preclude LEHIGH or the inventor from seeking patent protection in a country other than the United States.
What is a provisional patent application?
The provisional patent application is an application that can be filed with the US Patent and Trademark Office (USPTO) that establishes the effective filing date of a patent application. The provisional application is not examined by the USPTO, and may remain pending for one year. At the end of the period, LEHIGH must elect to either drop the filing and allow the information to become public or convert the provisional application to a regular patent application. In the case LEHIGH, the OTT will work with the inventors to make this decision on behalf of LEHIGH.
What is a copyright?
A copyright is the grant of protection by the laws of the United States to the authors of 'original works' including literary, dramatic, musical, artistic, architectural and certain other intellectual works, and is available for both published and unpublished works. An owner has the exclusive right to authorize others to reproduce the work; create derivative works; distribute copies of the work; perform the copyrighted work publicly, display the work publicly, and if it is a sound recording, perform the work publicly. Software may be copyrighted, but may also, in certain circumstances, be protected by a patent.
How do you file for copyright protection?
Copyright protection automatically exists from the moment of creation, and a work is created when it is fixed in a tangible form. Therefore, no publication or registration or other action by the Copyright Office is required to secure a copyright, although certain advantages are retained for registered copyrights, such as the right to seek damages for copyright infringement.
Is Software valuable?
Like any invention, software is an asset that has value to the University and to its author(s). Often even the simplest software function has commercial value simply because of the time invested in writing the code, not to mention the expertise needed to develop the function.
What is a confidentiality agreement?
A confidentiality agreement is an agreement whereby one party agrees to hold the proprietary technical and/or business information of the other party in confidence. Confidentiality Agreements (CDAs) or Non-disclosure Agreements (NDAs) are a standard tool of the trade, and many companies are amenable to having access to a technology under the terms of this type of agreement.
Who can sign a confidentiality agreement?
Only authorized individuals can sign a CDA on behalf of LEHIGH. PRINCIPAL INVESTIGATORS ARE NOT AUTHORIZED TO SIGN THIS AGREEMENT ON BEHALF OF LEHIGH. If a company wishes to obtain confidential information from LEHIGH, the investigator should contact the OTT.
What is a Material Transfer Agreement?
A Material Transfer Agreement (MTA) is an agreement whereas one party agrees to provide another party with there materials. MTAs should always be considered when conducting any outside collaborations with industry or other academic institutions. MTAs are typically used to protect materials that may be proprietary and/or embody a trade secret.
Who can sign MTAs?
Only authorized individuals can sign a MTA on behalf of LEHIGH. PRINCIPAL INVESTIGATORS ARE NOT AUTHORIZED TO SIGN THIS AGREEMENT ON BEHALF OF LEHIGH. If a company wishes to obtain materials from a LEHIGH investigator or if an investigator desires materials available from industry, the investigator should contact the OTT.
How are licensees found for new technologies?
Licensees can be identified in many ways. First, the inventors often are aware of the commercial companies who would be interested in the work. Industry-specific marketing efforts including trade show participation, affiliations and market research carried out by the OTT also serve to identify potential licensees. Additionally, issued patents listed by the USPTO can provide names of companies who currently have patents similar in nature, and often times these can prove to be potential licensees as well.
How does the University's revenue sharing policy compare with other universities?
The University's policy on revenue sharing is among the best in the US. Revenue sharing schemes vary in their structure. Some are based on gross revenues, some on revenues net of expenses. The University's scheme is based on net royalty revenues minus expenses. This kind of scheme flows money back to inventors quickly. In a field where most of the cost is front-loaded and royalties may take many years to materialize, this is designed to be advantageous to inventors.
What is an Exclusive, Non-Exclusive, Option Agreement License?
Option Agreements are used so that companies can be exposed to a technology and consider whether or not securing a license makes sense. They are limited in time in order for feasibility to be investigated, and an option does not grant commercial rights. An option can be either exclusive, where for a given limited timeframe no other options will be granted to evaluate a piece of intellectual property, or can be nonexclusive where other options may also be granted from the university. The outcome of a license is a go/no-go decision by the company to license the technology.
How much inventor involvement is there in the licensing of technology?
OTT encourages the participation of inventors. The more involved and interested the inventor(s) are in the licensing of a technology the higher the chances are that successful licenses will be secured. Normally the inventor(s) are the first best source of information on what companies would be interested in licensing the technology.
How long does it take to execute a license agreement?
Every license is unique in that it brings together university intellectual property to solve a company's specific problem(s). Once the intellectual property is identified by the company, terms of a license need to be negotiated to a mutually acceptable answer. Execution can take as little as a few weeks to over a year, depending on the complexity and the response times of all involved.