All new inventions developed at Lehigh University should be disclosed to the Office of Technology Transfer (OTT). OTT coordinates the efforts of the inventor/s, patent attorneys and commercial partners throughout the technology transfer/commercialization process. This process involves four general steps:
Disclosure
Submission of a fully completed Invention Disclosure Form (IDF) (located on the Forms page, or here) to the OTT formally begins the technology transfer process at Lehigh University (LU). It is extremely important to complete all the required sections of this form, including all the necessary signatures. OTT inputs all the disclosure information into the Intellectual Property Information Management Database System and assigns a unique Lehigh technology number, which is provided to the Inventor/s and should be used in all future correspondence of that particular invention.
Evaluation
Working closely with the inventor/s, OTT will perform a technical and commercial evaluation of the invention. The evaluation generally includes patent and literature searches, and may include confidential discussions with internal and external experts. The decision to pursue patent protection is based upon the technical merit, patentability and marketability of the invention.
Protection
Once a decision has been made to file a patent on an invention, OTT will engage a law firm that specializes in the subject matter of the invention and cover the costs of filing the patent application. It needs to be noted that OTT has limited funds for the expensive process of patenting, and hence they have to make an informed decision about which inventions have the most potential to be legally protected and become valuable products. The cost to obtain intellectual property protection varies with each invention and with the type of protection sought. OTT will typically file a provisional application to help manage cost and increase the potential time frame for protection. This is, however, only the first of many steps necessary to commercialize the technology. Inventor/s involvement in the entire patenting process is extremely important for efficient and effective intellectual property protection.
Commercialization
During this process, OTT closely works with the inventor/s to ascertain potential market applications and define/develop a commercialization strategy tailored to the specific technology. Assessment of all the above-mentioned issues influence decisions regarding the development of a commercialization strategy for the technology and the best possible instrument for taking the technology to the marketplace. At this point, optional paths to the marketplace – such as licensing to industry or forming startups will be explored and evaluated. If the technology is an early-stage, platform technology that is likely to be disruptive to the marketplace, a startup is probably the best chance that it has to get to the marketplace. In the event that the technology is at a relatively mature stage and has a well defined product or application, it may be more appropriate to license it to an existing company that has the resources to expedite the time to market. In such cases, OTT undertakes all efforts to introduce the technology to companies that would have an interest and then pursue all leads to ensure successful licensing relationships. The most common commercialization approach is to reach a licensing agreement (exclusive or non-exclusive) with a company, which results in them being able to use the intellectual property in return for consideration to the university. Licensing fees and royalties are then shared with the inventor/s according the university policy.