2. Invention Disclosure. When a discovery with potential market value is made, the inventor submits an Invention and Technology Disclosure Form to the Graduate School's Office of Research and Projects. This creates a record of the invention (descriptive information), the inventor(s) involved, who sponsored the work, and public disclosures and publications.
3. Initial Review. The technology transfer office conducts research into the invention as to its potential market (competition, market size, trends, etc.) and patentability (likelihood of obtaining a patent, breadth of possible claims, etc.). Often the input of the inventor is required so that reviewers can better understand the full potential of the invention. 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
4. Patent Application. SIUE does not file patent applications for all invention disclosures it receives due to the high cost of filing; while not required, 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. 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.
5. Marketing and Licensing. 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. 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. Confidentiality agreements may be required to protect overseas patent rights if no public disclosure of the invention has occurred.
The signing of a License Agreement is the beginning of a long term relationship. The licensee's performance is monitored by the ORP 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.
Adapted by permission from policies and procedures of Southern Illinois University Carbondale and Stanford University (2010).