The Commercialization Process
The transfer of technology from the research lab to the marketplace is a team enterprise. The commercialization process can be daunting, but the ORC team is here to help you bring your research to the marketplace.
ORC begins the commercialization process when you disclose an invention. Once an invention is disclosed, the ORC meets with the inventor and completes a search for similar technology, patents or licenses.
ORC will then work with the inventor to do technology commercial assessment to determine patentability and marketability. If the assessment is positive, the ORC will initiate intellectual property protection for the technology and develop an appropriate commercialization strategy. ORC will work with the investor to ensure that the patent applications are complete and accurate.
Depending on the type of technology and its stage of development, ORC will work with the inventor and local entrepreneurs to create a start-up company, or may license the technology directly to an established company. Either scenario will result in a license agreement between the ORC and the new or established business partner. The license agreement will include terms and conditions for the use of the technology, commercial development milestones, and the amount of compensation to the university (and inventor) in fees, royalty and equity. Inventors can help in this process by letting ORC know about new developments, upcoming publications or presentations about your invention or industry interactions related to your technology.
After a license agreement is in place, ORC monitors and supports the licensee to ensure compliance with contract terms and success in the marketplace.
The commercialization process at a glance:
Ownership of Inventions
It is required by University Policy, under the Board of Regents, for Faculty, Staff, and Students to disclose any and all intellectual property.
It is important to talk about ownership of intellectual property (IP). According to Texas Tech University System (TTUS) Regents Rule 10, "in general, IP made with the use of Texas Tech facilities during the course of regularly assigned duties of the faculty and staff automatically is owned by TTUS." More information about IP ownership and copyright can be found in Regents' Rule 10.
If your invention is the result of work funded by a federal agency, the university can claim ownership under the Bayh-Dole Act of 1980. If after a technology assessment, the university decides not to apply for ownership, the government may retain ownership. If they do not, ownership rights can be assigned to the inventor.
Inventorship and authorship are two different things. The threshold to determine inventorship is defined as who conceived the invention. Unless a person contributes to the conception of the invention, that person is not an inventor. There must be evidence that those listed as inventors on a patent contributed to conception, and that contribution in corroborated among the inventors. A person that takes an inventors idea and reduces it to practice is NOT an inventor. In academia, this person is a co-author of a publication, but not an inventor. A patent can be invalidated at any time if it is shown that there was willful misrepresentation of contribution. If in doubt, keep in mind that it is much easier to add people to a patent at any time during the process than to remove them!
If you have a concern contact us at (806) 742-4105.
The America Invents Act
American Intellectual Property Law Association
Association of University Technology Managers