The Office of Technology Commercialization at UAH is responsible for the evaluation, protection, marketing, and licensing of intellectual property developed by University faculty, researchers, and students.
Some steps in the process may occur simultaneously or repeat, but generally commercialization occurs as follows:
- Conception and Disclosure of Intellectual Property
- Assessment and Protection of Intellectual Property by the University
- Patent Prosecution
- Marketing and Commercialization (Production)
1. Conception and Disclosure of Intellectual Property
The commercialization process begins when an inventor submits an Invention Disclosure Form (IDF) to disclose his/her innovation or discovery to the Office of Technology Commercialization (OTC). The purpose of the IDF is to provide a complete description of the innovation and to prepare to secure it. The completed IDF will include dated signatures of the inventor(s) and of the department chair, dean, and/or center director.
2. Assessment and Protection of Intellectual Property by UAH
The Office of Technology Commercialization (OTC) then evaluates the innovation for Intellectual Property (IP) protection. Along with the legal requirements for a patent (novelty, usefulness, non-obviousness), the evaluation includes a limited search for existing patents and prior art, a study of possible commercial markets, and an estimated return on investment. Additional factors such as market saturation may also affect OTC’s decision about pursuing IP protection.
If the inventor expects to publish the innovation, OTC should be notified as soon as possible. In this way, temporary IP protection (for one year) can be provided by a provisional patent, which establishes inventorship and date of conception of the innovation.
Possible IP protection methods include patents, copyrights, trademarks, and trade secrets.
A patent grants the right for an inventor "to exclude others from making, using, offering for sale, or selling the invention in the U.S." [source: USPTO]. U.S. patents are recognized in the U.S. and its territories. Enforcement of the patent is the responsibility of the patent holder.
If the University chooses not to file for IP protection, rights to the innovation are retained by the University unless released to the inventor.
3. Patent Prosecution
Patent prosecution is the process by which the U.S. Patent and Trademark Office (USPTO) validates the patentability of an innovation. Patent applications undergo lengthy legal and technical scrutiny. Patent examiners search public literature as well as U.S. and foreign patents related to the innovation.
Office Actions (OAs) are conclusions of the USPTO which usually require clarifications about the innovation by the inventor. There may be several rounds of OAs before a patent is granted or before the patent application is denied.
4. Marketing and Commercialization (Production)
OTC works closely with inventors to select licensees as commercialization partners. These licensees may be established companies or startup companies. OTC collaborates with the UAH College of Business Administration to provide assistance to startup companies.
The commercialization process generally includes negotiating license agreements, building a prototype of the invention, establishing a manufacturing process, and marketing the invention. Following production and sales, royalties are distributed according to University policy.