	Forms & Procedures
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Technology Transfer Process

The road from laboratory to marketplace is a gradual process. At OTT, we typically begin by reviewing an invention to learn about potential applications. We then develop a licensing strategy, decide whether to patent the invention, and actively recruit companies that might be interested in the invention. We then seek to put appropriate agreements into place that will allow and encourage the active development and commercialization of the technology. Often, such development includes the active participation of the inventor through a suitable research collaboration agreement with NCSU that accompanies a suitable license or option agreement.

The OTT's standard disclosure process consists of the following steps:

Disclosure
Evaluation
IP Protection
Commercialization Strategy
Licensing

The technology transfer process begins when you submit a confidential Invention Disclosure Form to the Office of Technology Transfer. This form is available in hardcopy and from our website. The form asks for such information as a description of the invention, names and contact data for everyone involved in making the invention, funding sources for the research that led to the invention, prior publications or public descriptions of the invention, and commercial contacts in the field of the invention. In order to provide the maximum opportunity for protecting the invention, the disclosure should be done as soon as possible and well before the invention is described in a public presentation, public seminar, electronic publication of meeting abstracts, or full electronic or print publication. Public disclosure of these types prior to filing a patent application will eliminate the opportunity for patent protection in foreign countries and limit the amount of time available to file for patent protection in the United States. The completed invention disclosure form will provide the OTT and the NCSU Intellectual Property Committee with information necessary to begin evaluating the appropriate IP protection for and commercial potential of the invention.

A technology transfer professional in the Office of Technology Transfer will interview you regarding the invention disclosure. The evaluation process involves two components: a patent and literature search to evaluate the uniqueness of the invention, and a marketability survey of the literature and industry contacts. The goal of these efforts is to answer two basic questions: Is your invention patentable (new, useful, and not an obvious improvement on an existing invention)? Is your invention licensable (will a company pay NCSU for the right to commercially practice the invention)? If the answer to these questions appears to be yes, OTT will proceed with the further review of the technology. The University Intellectual Property Committee (IPC) will review the disclosure for merit and patentability. OTT has limited funds for the expensive process of patenting, so OTT staff and the IPC must make informed decisions about which inventions have the most potential to be legally protected and become valuable products. There doesn’t necessarily have to be a massive market awaiting the product. But there does have to be some industrial or entrepreneurial interest in obtaining rights to develop a product, in funding further R&D in hopes of realizing your invention’s value, or in starting a company to produce it. Once the invention disclosure is approved by the IPC, the patenting process begins.

IP Protection

Inventor involvement is important to the entire patent and licensing process. Degree of involvement varies according to the nature of the invention and your availability and interest. Your expertise is especially helpful during the evaluation for patentability, in the patent application process, in identifying licensing prospects, and in meeting with companies expressing interest. Inventors typically provide technical evaluation of previous patents and publications in their field, supply information to our on-staff patent attorney and review draft applications and responses to government actions, and discuss technical aspects with interested companies. Regardless of the amount of involvement, inventors are kept informed of the evaluation process and any actions taken, and their input is considered in making decisions about the University’s protection and licensing of the invention. However, final responsibility for such decisions rests with the Office of Technology Transfer. The disclosure evaluation process may take anywhere from a week to three months, and possibly longer, depending on the complexity of the invention and the target industry. After filing a provisional patent application,the technology is actively marketed to the private sector in a attempt to identify a patent sponsor and potential licensee. Once a sponsor is identified, a regular (full) application is filed. Once the patent is issued (typically 1-3 years), the university's protection lasts for 20 years. It may take five years or longer for commercial sales to begin, depending on how much work needs to be done to develop and market a product based on the invention. OTT believes that it takes an average of eight years after an invention is disclosed to begin receiving significant royalties on sales.

Commercialization Strategy

For inventions to reach the marketplace the cooperation of industry is necessary and inventor involvement again varies depending on the type of commercialization that is pursued. The most common commercialization approach is to reach a licensing agreement with a company that results in them being able to use the intellectual property in return for consideration to the university. Licensing fees and royalties are then shared with the inventor according to university policy. Additionally, licensing of the intellectual property could also result in sponsored research funding as consideration for the license. You can make valuable contributions to this process in suggesting potential markets for the invention and identifying potential licensees. If you are interested in a creating a start-up company around your invention, then your involvement in the commercialization effort becomes more substantial and direct.

For inventions to reach the marketplace the cooperation of industry is necessary and inventor involvement again varies depending on the type of commercialization that is pursued. The most common commercialization approach is to reach a licensing agreement with a company that results in them being able to use the intellectual property in return for consideration to the university. Licensing fees and royalties are then shared with the inventor according to university policy. Additionally, licensing of the intellectual property could also result in sponsored research funding as consideration for the license. You can make valuable contributions to this process in suggesting potential markets for the invention and identifying potential licensees. If you are interested in a creating a start-up company around your invention, then your involvement in the commercialization effort becomes more substantial and direct.