OTC infographic pathway steps: Step 1: Innovator Education. Step 2: Innovation: Step 3: Disclosure. Step 4: Triage. Step 5: Market Analysis. Step 6: Intellectual Property Protection Step 7 Marketing. Step 8: Licensing. Step 9: Revenue Generation.

The Office of Technology Commercialization (OTC) is the organization responsible within UAH for translating and accelerating research at UAH into successful commercial ventures that benefit society. The pathway to translational research is a partnership between UAH innovators, OTC, industry partners, and the community, with the purpose of creating a positive impact on society and the economy.

Research and discovery with an innovation mindset is the first step along the pathway to translational research, which results in useful goods and services. During this step, OTC proactively engages UAH innovators as they embark on research. OTC strives to build a culture of innovation at UAH, one that nurtures out-of-the-box thinking. Educating innovators within an academic institution involves providing them with the necessary knowledge, skills, and resources to develop and implement innovative ideas that can lead to meaningful impact.

When an innovator meets with OTC to discuss their research, OTC works to get innovators thinking about the problems that they are solving and how the results of their research can be applied to solve real-world problems. OTC helps innovators focus both on fundamental research and its translation.

OTC endeavors to promote innovator education through a range of activities, including entrepreneurial training, innovation workshops, networking opportunities, mentorship, and access to funding, facilities, and resources.

Educating innovators within an academic institution involves providing them with a comprehensive ecosystem of resources, training, and support, which enables them to develop ideas and bring them to market. By fostering a culture of innovation and entrepreneurship, academic institutions can help to create a pipeline of new ventures that can drive economic growth and social impact.

This step of the pathway to translational research equips innovators to approach their problem-solving from the perspective of the marketplace.

UAH innovators should be aware that any work, discovery, or research they perform may have the potential for commercialization. UAH faculty, students, and researchers are encouraged to contact OTC if they have an innovation that may require intellectual property protection. They should do so early in the process.

There is an old saying: “Necessity is the mother of invention.” Innovation begins with problem identification, and the first question OTC asks innovators is, “What problem does your innovation solve?” OTC can help innovators look for an unmet need so that time isn’t spent finding a solution for a problem that doesn’t exist. Once the problem is identified, OTC can provide innovators with insight into the unmet needs of a market, competitors, and the opportunities that exist within the market. OTC can also present problems faced by UAH’s industry partners to its faculty and researchers, in the hopes of collaborating to find a solution.

OTC encourages innovators to ask:

  • What problems remain unsolved?
  • What is the magnitude of the problem?
  • What pathways exist to adjacent markets?
  • What are existing solutions to the problem, and who offers them?
  • What are the barriers to entering the marketplace?
  • How can your innovation be different from existing solutions?

OTC has identified five key stages of the innovation process: Ideation, Concept Development, Testing and Validation, Development and Implementation, Launch and Scale. The innovation process is a cyclical and iterative process that involves ongoing feedback and refinement as the innovation evolves from initial idea to final product or service. By following a structured approach that incorporates each of these stages, innovators can increase their chances of success. OTC supports innovators throughout the innovation process.

  1. Ideation: The first stage of the innovation process involves generating ideas for new products, services, or processes. This can involve brainstorming sessions, ideation workshops, or other methods for generating creative solutions to identified problems or opportunities.
  2. Concept Development: Once a set of potential ideas has been generated, the next stage involves evaluating and refining those ideas to determine their feasibility and potential value. This may involve developing initial prototypes or mockups, conducting market research, and analyzing the competitive landscape
  3. Testing and Validation: The third stage of the innovation process involves testing and validating the concept to determine whether it meets the needs of the target market and whether it can be produced or delivered at scale. This may involve user testing, experimentation, or other methods for gathering feedback and refining the concept.
  4. Development and Implementation: Once the concept has been validated, the following stage involves developing and implementing the final product, service, or process. This may involve building a team, securing funding or other resources, and creating a plan for bringing the innovation to market.
  5. Launch and Scale: The final stage of the innovation process involves launching the innovation and scaling it to reach a wider audience or customer base. This may involve marketing and sales efforts, partnerships with other organizations, or other methods for growing the innovation and achieving long-term success.

During the research and development of a product, it is important for innovators to keep detailed laboratory notebooks to document their data and the continuous progress of their innovation.

Once a new process, discovery, object, or novel improvement has been made, the innovator continues on the UAH pathway to translational research by submitting an Intellectual Property Disclosure (IPD) form to OTC.

The invention disclosure process at OTC is designed to facilitate the transfer of scientific discoveries and innovations from the academic setting to the marketplace. By providing resources and support to inventors, and by working to protect and commercialize intellectual property, OTC can help to bridge the gap between research and commercialization.

The disclosure step begins when an innovator submits an Intellectual Property Disclosure (IPD) form to disclose their innovation or discovery to OTC. The purpose of the IPD is to provide a complete description of the innovation and to prepare to protect it. The completed IPD will include dated electronic signatures of the inventor(s) and of the department chair, dean, and/or center director.

The submission of an IPD does not equal intellectual property protection, i.e., the filing of a patent application. It creates a record with the OTC (and UAH) that an inventor may have a discovery worth pursuing intellectual property protection.

Innovators should be aware that to protect their intellectual property (IP) and its potential for commercialization, they should not discuss it outside of work. Even a casual conversation or social media post can be ruled as public disclosure. Premature publication or any public disclosure can jeopardize chances of filing for IP protection, and with it, subsequent recognition and potential monetary compensation.

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.

After OTC has successfully processed the innovator’s IPD, OTC conducts a triage step to evaluate the innovation for intellectual property (IP) protection and identify any patentability or marketability issues.

Protection of IP is not sought or granted for every innovation. Before initiating patent prosecution, UAH evaluates each innovation based on the legal requirements for a patent and strategic business decisions.

  • Is the invention novel, useful, and non-obvious?
  • Is there a market for your invention?
  • Is a potential market large enough to recoup the costs of patenting, marketing, and producing your invention?

The triage also 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 University chooses not to file for IP protection, rights to the innovation are retained by the University unless released to the inventor.

If the invention is deemed to have potential for commercialization, OTC may file a provisional or non-provisional patent application to protect the invention’s intellectual property rights. This may involve working with outside patent attorneys or agents to draft and file the patent application.

OTC meets with innovators to perform a market analysis together and develop a commercialization strategy. Two common strategies are to license the invention to an existing company or to form a start-up company.

The market analysis will consider potential applications, the target market, competing solutions, potential marketing strategies, prototype feasibility, the manufacturing process, and regulatory requirements. Any additional research and product development will be considered. OTC works with innovators to make informed decisions and establishes a plan to bring the innovation to the marketplace.

The pathway to translational research continues if OTC decides to pursue intellectual property (IP) protection for an innovation. Possible IP protection methods include patents, copyrights, and trademarks. Copyright protection is acquired quickly. Patent applications take years to process. As an institution of higher education, UAH typically will not hold trade secrets.

The innovator works with OTC and an outside patent attorney to file a patent application, which is then subject to patent prosecution. Patent prosecution is the process by which the U.S. Patent and Trademark Office (USPTO) validates the patentability of an innovation. Patent examiners search public literature as well as U.S. and foreign patents related to the innovation.

The innovator’s input and subject matter knowledge are critical during the patent application filing and patent prosecution process. Patent applications undergo lengthy legal and technical scrutiny. Office Actions (OAs) are conclusions of the USPTO which usually require clarifications about the innovation by the inventor. OTC guides innovators through the patent application process in order to prove the invention novel, useful, and non-obvious. There may be several rounds of OAs before a patent is granted or before the patent application is denied.

The marketing step is key to accelerating translational research to the marketplace. At this step, the innovation is added to UAH’s available technologies portfolio, and the commercialization strategy developed during the market analysis is initiated.

Together with the innovator, OTC connects with potential industry partners. The innovator provides important insights on the technology and industry. OTC helps identify business contacts and assesses next steps of the business plan. This may involve hosting networking events or attending trade shows to promote the invention.

If the business strategy is to form a start-up company, OTC can connect innovators with resources to support a start-up.

OTC works closely with innovators to select licensees as commercialization partners and negotiate license agreements. These licensees may be established companies or startup companies.

OTC helps innovators choose an appropriate commercialization partner that will provide the best opportunity to bring the innovation to market. Some considerations in a commercialization partner include adequate resources and funding, industry expertise, product portfolio, management, and past technology transfer successes.

If a potential licensee or partner expresses interest in the invention, OTC may enter into negotiations to develop a licensing agreement. This may involve negotiating financial terms, defining the scope of the license, and addressing any other legal or business considerations related to the commercialization of the technology.

The licensee’s role is to advance the development of the innovation by providing the necessary resources, obtaining regulatory approvals, and establishing a business plan for marketing, manufacturing, and distribution.

During the licensing step, OTC communicates licensing progress to the innovator. OTC manages compliance to the licensing agreement during the term of the agreement.

OTC manages revenue generated from the license of UAH’s intellectual property through a variety of mechanisms. Here is how revenue from license agreements is managed by OTC:

  1. Royalties: The most common way that OTC generates revenue from license agreements is through royalties. These are payments made by the licensee to UAH based on a percentage of the revenue generated from the sale of products or services that incorporate the licensed technology. Royalty rates can vary widely depending on the industry, the technology, and the specific terms of the license agreement.
  2. Equity: In some cases, UAH may receive equity in the form of stock or ownership stakes in the licensee’s company as part of the license agreement. This can be particularly common in cases where the licensee is a startup company that is heavily dependent on the licensed technology for its success.
  3. Upfront Fees: UAH may also charge upfront fees for license agreements, which can help to offset the costs associated with managing and commercializing intellectual property. These fees can vary depending on the technology, the licensee, and the specific terms of the agreement.
  4. Cost Recovery: UAH is also required to recover from its licensees the costs associated with developing and patenting the licensed technology. These costs can include legal fees, patent filing fees, and other expenses related to commercializing the technology.
  5. Reinvestment: Finally, UAH also reinvests revenue generated from license agreements back into their technology transfer offices as well as its research programs. This can help to support ongoing innovation and commercialization efforts and ensure that the university continues its efforts in technology development and commercialization.

Managing revenue from license agreements is a complex process that requires careful negotiation, monitoring, and enforcement to ensure that the university’s intellectual property is being used effectively and that the institution is receiving appropriate compensation for its valuable innovations.

Any innovation developed during employment with UAH is assigned to The Board of Trustees for the University of Alabama System, as per Board Rule 509. If the innovation is brought to market, the patent will be filed in the inventor’s name. Following production and sales, royalties are distributed according to University policy (07.03.03), with the inventor receiving a percentage of royalties.