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For Inventors: Commercialization Process

1. The inventor(s) submits an Invention Disclosure Form to the Office of Technology Transfer (OTT), thus creating an independent record of the invention at OTT. This form solicits information such as, a description of the invention, its application, and information about the inventor(s), the sponsoring agency, potential dates for publications and public disclosures.

   The University is also mandated under Federal Law to report the creation of inventions from federally sponsored grants to the Federal Government and grant the U.S. Government a royalty-free, irrevocable, worldwide license to the invention. The Invention Disclosure Form serves as a vehicle for the University to comply with these regulations.

2. Disclosures received by OTT are assigned a University of Rochester Project Number, logged into our database tracking system, and assigned to a specific manager for further administration. Hereafter, the manager is responsible for all patenting and commercializing actions relating to the case.

3. The manager will meet with the inventor(s) to get a better understanding of the invention, its novelty and potential applications, as well as to develop a sense of the commercial viability of the invention. The manager will then perform a patent and literature search to verify the novelty and patentability of the invention. Such searches are performed in-house and may also be outsourced. Simultaneously, the manager will investigate the commercial potential of the invention by conducting some market research. This effort often involves extensive searches on various databases, discussions with industry/academic experts and talks with various companies. At the end of this exercise, OTT’s goal is to understand the invention better, and to determine its patent and commercial potential.

   Based on the above results, the manager determines whether or not the University will elect title (take ownership and control of) and file for a patent protection on the invention. Once the Director of OTT ratifies this decision, OTT will devote resources towards the patenting, marketing, and licensing process.

   The inventor’s cooperation is essential in the patent filing and prosecution process. Patent attorneys are chosen, from a group of select law firms, based on their technical competence and familiarity within the field of the invention. The inventors’ preferences are considered during the selection process of patent attorney. The patent attorney is unlikely to be an expert in the field of the invention at the level of the inventor, and hence the inventor, by providing both written and verbal communication, makes an indispensable contribution in obtaining superior patent protection.

4. OTT will then develop a preliminary licensing strategy for the invention and develop a qualified list of potential licensees. This strategy often involves seeking information and feedback on market risk from various sources such as potential licensees and venture capital firms. Confidentiality Agreements are often required to protect the proprietary nature of the invention. The manager will then market the invention and, if successful, will use the licensing strategy as a guide to begin license negotiations with potential licensees. As part of the negotiations and their due diligence efforts, these companies will evaluate the commercial and patentability potential of the invention.

5. As the negotiations proceed, a license term sheet (a non-binding understanding of the terms of the proposed license) is developed. These negotiations are often intricate, lengthy processes that require the flexibility and creativity by both parties in order to reach at a mutually beneficial agreement. Once such license terms are agreed upon, OTT drafts a legal contract with the licensee. Typically, it takes a few months from the start of negotiations to the execution of a license.

6. The signing of a License Agreement is the beginning of a long-term relationship with the licensee. OTT strives to develop such long-term relationships which often lead to the funding of additional research, the advancement and dissemination of knowledge, additional inventions, and the use of these inventions for the public good. OTT monitors the licensee’s performance— especially the development and financial goals, in accordance to the terms of the license.

   Sometimes it is necessary to re-evaluate a licensing relationship to adapt to changing economic or development situations. OTT has, on occasion, terminated licenses due to the lack of performance by its licensees.

7. Revenues realized from licensing activities are distributed according to the current Intellectual Property Policy at the time of the disclosure of the invention to OTT.