Inventors are the most critical part of the success of any licensed technology
TECHNOLOGY COMMERCIALIZATION AT OHIO STATE
Technology transfer teams within universities play a critical role in facilitating the translation of advanced research and innovation into the commercial realm where it can have an impact on people and the economy. We have established two commercialization pathways optimized for technologies positioned for non-startup and startup commercialization. The pathways are similar, but differ in how the technologies are marketed. The steps in these processes are outlined below.
As soon as a discovery is made, inventors should submit an invention disclosure through innovate.osu.edu. These confidential, non-public disclosures help protect the intellectual property (see the university’s Intellectual Property policy). A licensing manager will be assigned to the technology within a week.
The licensing manager will contact the inventor to better understand the invention. Together, they will brainstorm ways to add value to the discovery as early in the commercialization process as possible. These interventions could include identifying other applicable markets, non-traditional sources of technology advancement funding or ideas for validating and testing the technology. Licensing managers will outline initial action steps for both parties.
REVIEW AND ASSESSMENT
With the inventor, licensing managers assess the invention for technical merit, maturity, intellectual property protection potential and market impact. This helps to determine what steps can best further develop the technology before license. The licensing manager researches and identifies the best protection method for the technology and makes a preliminary assessment of the market landscape and dynamics to understand the invention’s commercial potential.
INTELLECTUAL PROPERTY PROTECTION
The technology commercialization team makes initial patent filing decisions and identifies outside patent counsel with expertise in the relevant field. The inventor works closely with the licensing manager and the patent counsel to draft relevant and expansive claims based on the nature of the invention, the relevant markets and anticipated business model for commercializing the invention. Any subsequent patent decisions are made in concert with the inventor and the inventor’s college research leadership team.
If the inventor does not to pursue a startup, a one-page non-confidential summary is created with the inventor’s input. The licensing team identifies and pursues potential licensees based on market assessments through posting on innovation websites, market-focused marketing campaign and personal network marketing. As interested parties engage, appropriate agreements are put in place to facilitate discussion and protect the intellectual property.
Licensing managers lead license negotiations once a potential licensee is found and determine which type of agreement – such as a license, option or materials transfer agreement – best fits the situation. After the technology is licensed, the inventor may stay involved with the company in a number of ways, including faculty consulting, sponsored research and equity ownership.
Ideally, the commercialization process leads to a product sold on the market returning royalties and other revenue returned to the university for additional research, education and inventive activity. Through the life of the license, the Corporate Engagement Office monitors compliance with any agreement continues to manage all intellectual property activity.
The Commercialization Pathway
There are established pathways for inventors to commercialize inventions at the university.