Technology Transfer Process at SIUE
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2. Invention Disclosure. The inventor submits an Invention and Technology Disclosure Form to the Graduate School's Office of Research and Projects, thus creating a record of the invention (descriptive information), the inventor(s) involved, who sponsored the work, and public disclosures and publications. Link to Forms page.
3. Initial Review. In accordance with the SIUE IP Policy, a review committee will be convened together with the inventor(s). Together they will discuss the invention and make a preliminary evaluation of manufacturing feasibility, novelty, potential applications, and possible markets (see Invention Evaluation Worksheet for further information). A preliminary licensing strategy will be developed. Different inventions require different licensing strategies. For example, a basic new scientific tool likely to be widely used is typically licensed on a non-exclusive basis. In contrast, an invention which requires significant investment of resources by a company is typically licensed on an exclusive basis. The exclusive license provides an incentive to the licensee to commit risk capital investments required for product development. Part of developing a license strategy involves seeking information and feedback on market risk from various sources such as potential licensees and venture capital firms. Confidentiality agreements may be required to protect overseas patent rights if no public disclosure of the invention has occurred.
4. Patent Application. Based on this information, the Associate Provost for Research will determine whether or not SIUE will elect title and file for a patent on the invention. SIUE does not file provisional or full patent applications for all invention disclosures it receives due to the high cost of filing. It is desirable to have an interested potential licensees before committing to patent filing. The filing and prosecution of patent applications are done by one of three SIUE-contracted outside patent attorney firms. Technical competence, prior experience in similar cases, and inventor preferences are considered by the Associate Provost for Research in the selection of the appropriate patent attorney. The inventor's cooperation is essential in patent filing and prosecution. The chosen patent attorney will be familiar with the field of the invention, but he/she is unlikely to be an expert at the level of detail that makes the invention novel, useful, and non-obvious. You, the inventor, by providing both written and verbal information, will make an important difference and are indispensable for obtaining meaningful patent protection. Inventors can also assist by doing a prior art search. (For more information about patents, go to the Intellectual Property page.)
5. Marketing and License Negotiation. SIUE will begin license negotiations with potential licensees, usually after the U.S. Provisional Patent has been secured. Companies likely to be interested are approached and are given an opportunity to evaluate the invention (if required, on a confidential basis). Inventor's suggestions of companies to be approached are extremely valuable. If the company show strong interest, a license proposal is prepared. Negotiations follow which may require flexibility and creativity by both parties in order to arrive at a mutually satisfactory agreement. Every license has circumstances that necessitate special considerations. For example, startup companies typically cannot afford large initial payments but are able to compensate with equity in the company and/or payments once products are on the market. Note that only 20-25% of invention disclosures are licensed.
6. Commercialization and Monitoring. The signing of a License Agreement is the beginning of a long term relationship. The licensee's performance is monitored by the associate for the duration of the license. Most License Agreements require periodic financial or development reports from the licensees. All royalty payments are collected by the Graduate School in accordance with the SIUE IP Policy. At times SIUE may accept equity in lieu of cash as part of the license issue fees. It is often necessary to re-evaluate a licensing relationship to adapt to changed circumstances, or to take into account new situations. Either party can request an amendment to the Agreement at any time during its life.
Adapted by permission from policies and procedures of Southern Illinois University Carbondale and Stanford University (2010).
