Technology Commercialization Guide
Step 1: Submitting your innovation
The formal technology commercialization process begins when you submit a confidential disclosure form.
In your disclosure, you provide information that helps our office do an initial assessment of the commercial potential of your innovation and determine if patent or other intellectual property protection may help mitigate the risk of moving your innovation to market.
The information you submit includes a description of your invention, funding sources to date, prior publications, contact information and commercial contacts.
Our website provides an interactive Adobe Acrobat Disclosure form that you can fill out and submit online. This reduces paper use, makes our collaboration with you faster and more accurate, and provides greater security.
It also enables you save your data with the form. This is especially helpful when you want to complete the form in more than one session or need to revise your data.
After we receive a disclosure form with the digital signatures of all co-inventors (see our complete instructions for digital signatures), the submission launches our formal technology transfer process.
To take advantage of features in our online Disclosure form, please follow the steps below.Disclosure Form Instructions
1. Download and install the latest version of the free Adobe Acrobat Reader software.
2. Download a copy of the Disclosure Form and save it to your local hard drive.
3. Read Signing with an Electronic ID.
- The disclosure form must be submitted with its default file name ("disclosure.pdf").
- If a "Save" button is unavailable in Adobe Reader, select "Save" or "Save As" under the File menu.
Step 2: Assessing your innovation
Links - Step 2
This process may take from 1 week to 3 months.
After receiving your disclosure form, we will discuss your invention with you. Then we will conduct an evaluation that addresses two basic questions:
- Is your invention patentable? It must meet the criteria of being new, useful, and not obvious.
- Is your invention commercially viable? There should be a likelihood that one or more companies will pay for the right to license and develop it.
As UVM Innovations has limited funds available for the costly patent process, we must make a business judgment about the desirability of investing in patent protection. Inventions with the greatest potential to be legally protected and become valuable assets are given priority.
Our patent assessment includes a literature search and evaluation of prior art, conducted in collaboration with an attorney.
While we do not require that a mass market await a new invention, we do seek evidence of some industrial or entrepreneurial interest. Our marketability assessment includes an estimate of market size, a list of potential licensees, and related market and industry data.
Factors that enable an invention to succeed include:
- Your proposal is based on sound scientific/technical principles.
- You have realistic technical objectives, project timelines and milestones, and projections for revenues and jobs creation to be achieved through commercialization.
- You can identify one or more specific, targetable markets for the invention.
- Your technology offers one or more significant advantages over current technology or methods, or it serves significant unmet needs. Existing products/technologies do not serve the same outcome.
- The technology is unique or innovative more than a modification of technologies already on the market.
- The technology has a high probability of being licensed or obtaining the next level of funding.
- You can provide sufficient resources in terms of qualified personnel, facilities, and equipment to complete the project and develop a budget consistent with the tasks and objectives.
- A licensee would not require additional licenses from other entities in order to commercialize the invention.
What You Can Do
The following resources will help you to assess your invention's commercial potential:
- Visit the U.S. Patent and Trademark Office (USPTO) website's patent search database and conduct a search for "prior art" inventions that are similar to yours. Note that a "Help" button can be found in the upper right corner of the page.
- Find IP information and strategies by visiting the free, online IP Handbook of Best Practices. The handbook's four main sections are shown in the horizontal navigation bar near the top of the page.
- Read the OTC-recommended book Patent It Yourself.
- Visit UVM's Vermont Patent and Trademark Resource Center (VPTRC) in the Bailey-Howe Library, or contact UVM government document librarian Bill Gill (firstname.lastname@example.org; 656-2588).
All services related to commercial evaluation and patenting are provided at no cost to the inventor. However, we do seek reimbursement for our out-of-pocket expenses when an invention produces income.
Step 3: Protecting your innovation
This process usually takes from 1 to 3 years. At the end of this process, you will have a USPTO patent issued or pending.
If we decide to pursue patent protection for your disclosure, we will arrange a consultation with a patent attorney to determine patentability. Preliminary discussion of the invention's marketing potential and possible licensees will also begin at this time.
The Inventor's Role
Your involvement can be very helpful as we consider and pursue patent protection, especially in these areas:
- Evaluating previous patents and publications in the field
- Supplying information to the patent attorney
- Reviewing draft patent applications
Legal counsel and patent application fees are major investments for OTC. While we provide these at no cost, we expect reimbursement of our out-of-pocket expenses if and when your invention produces income.
Step 4: Marketing your innovation
Links - Step 4
This part of the process may take from 3 to 5 years.
We work closely with you to identify companies in your field that would be able to fully exploit the technology's commercial potential. In addition, we make use of our own industry contacts to find and approach prospective companies.
We feature non-confidential information about your technology on our website, in some cases including a video about the invention. When potential licensees express interest in the invention, they must sign our confidentiality agreement before we provide any proprietary information.
Material Transfer Agreements
When you need to send materials to or obtain them from a company or university, we will negotiate and execute a Material Transfer Agreement to preserve the intellectual property rights associated with your research.
- Sample of a Material Transfer Agreement (MTA) - Commercial
- Sample of a Material Transfer Agreement (MTA) - Higher Education
We protect your intellectual property by issuing a confidentiality agreement to any potential licensee. This agreement must be negotiated and signed before we will share proprietary or confidential information about your invention.
How do you know that your confidentiality is ensured? The UVM Innovations team, peer reviewers, and advisory board members are required to sign and adhere to a non-disclosure agreement that indicates that the information provided in proposals may be used for purposes of evaluation only. Proprietary information may not be disclosed to any third parties. In addition, all OTC staff, peer reviewers and advisory board members are required to adhere to a strict conflict of interest policy. The non-disclosure agreement and conflict of interest policy are legally binding documents.
How You Can Help Market Your Innovation
We encourage you to be an active participant in the marketing process. Among the ways you can facilitate the process are by:
- Providing us with disclosures that clearly indicate the invention's bottom-line advantages
- Identifying prospective licensees (companies and individuals)
- Attending marketing meetings with prospects and the UVM Innovations team
- Letting us know promptly of any change in the invention's status
Note: For more information about marketing intellectual property, download "The IP Sales Process" (PDF)
Step 5: Licensing your innovation
When assessing prospective licensees, we consider their existing product lines, production and marketing capabilities, and financial status. This process usually yields one or two firms that are both interested and qualified.
We then negotiate mutually beneficial license agreements with the firms. Terms covered in the license include upfront fees, royalties, license maintenance fees, commercialization milestones, and specific intellectual property rights.
After licensing the invention, we monitor licensees to ensure they meet commercialization milestones, and submit timely payment of any fees, royalties, and reimbursable expenses. We also monitor and litigate any non-licensed use.
UVM policy determines distribution of licensing revenues. See section 4.1.5 in the UVM Intellectual Property Policy Statement (PDF) for current distribution guidelines.