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.
After we receive a disclosure form with the signatures of All co-inventors, the submission launches our formal technology transfer process.Disclosure Form Instructions
1. Right click on Disclosure Form
2. The form will download and then prompt you to "Open," or show you an arrow in bottom left corner where you click on word doc symbol to open.
3. Name and Save form to your local hard drive. You may fill the form out in one session, or save it and return to complete it in multiple sessions as needed. NOTE: Text boxes will expand to accomodate your text.
4. When the Disclosure Form is completed and ready for signature(s), print the form, sign and date it. REMINDER: each additional inventor needs to complete contact information, sign and date the form prior to submission. Electronic signatures are not available in this format.
5. Submitting the form: 1) You can email a scanned pdf of the completed form to firstname.lastname@example.org, or 2) Stop in to say hi and drop off a signed original copy or send via campus mail to OTC: 89 Beaumont Avenue, Given e-201, Burlington, Vermont 05405.
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:
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:
The following resources will help you to assess your invention's commercial potential:
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.
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.
Your involvement can be very helpful as we consider and pursue patent protection, especially in these areas:
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.
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.
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.
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.
We encourage you to be an active participant in the marketing process. Among the ways you can facilitate the process are by:
Note: For more information about marketing intellectual property, download "The IP Sales Process" (PDF)
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.
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