Technology Transfer Process
Intellectual property is an invention and/or material that may be protected under the patent, trademark or copyright laws.
Observations and experiments during research activities often lead to discoveries and inventions. An invention is any useful process, machine, composition of matter, or any new or useful improvement of the same. Often, multiple researchers may have contributed to the invention.
An invention disclosure is the written notice of invention that begins the formal technology transfer process. An invention disclosure remains a confidential document and should fully document your invention so that the options for commercialization can be evaluated and pursued.
REVIEW & ASSESSMENT
Your invention disclosure will be submitted and presented to the Clemson University Intellectual Property Committee for review. The Committee will determine if Clemson has an ownership interest in the invention and will recommend actions for CURF. A CURF representative will be assigned to your disclosure and will work with you through the commercialization process.
Patent protection, a common legal protection method, begins with the filing of a patent application with the U.S. Patent and Trademark Office and, when appropriate, foreign patent offices. Once a patent application has been filed, it will typically require several years and tens of thousands of dollars to obtain issued U.S. and foreign patents. Other protection methods include copyrights, trademarks and trade secrets.
With your active involvement, your CURF representative will identify candidate companies that have the expertise, resources and business networks to bring the technology to market. This may involve licensing the technology to an existing company or forming a start-up company.
A license agreement is a contract in which rights to a technology are licensed to a third party, without relinquishing ownership, for financial and other benefits. A license agreement is used with both a new start-up business or with an established company.
The licensee continues the advancement of technology and makes other business investments to develop the product or service. This step may entail further development, regulatory approvals, sales and marketing support, training, and other activities.
Revenues received from licenses are distributed to units, university administration, and inventors to fund additional research and education and to encourage further participation in the technology transfer process. Clemson University’s Intellectual Property Policy governs distribution of revenue received by CURF from licenses.
The process of protecting technology and finding the right licensing partner may take months – or even years – to complete.
- Contact CURF when you believe you have created or discovered something unique with potential commercial or research value.
- Complete and submit the Confidential Invention Disclosure Form before publicly disclosing your technology or submitting a manuscript for review and publication.
- Contact CURF before holding any discussions with people outside of the Clemson community.
- Respond to CURF and outside patent counsel requests.
- Keep CURF informed of upcoming publications or interactions with companies related to your intellectual property.
Yes, but since patent rights are affected by these activities, it is best to submit an invention disclosure well before communicating or disclosing your invention to people outside Clemson.
Yes, but it is important to document carefully the date and conditions of use so that CURF can determine if this use may influence the ownership and license rights of your subsequent research results. A Material Transfer Agreement must be completed for any materials that are transferred into or out of Clemson.
Yes. However, it is important to document items that are to be shared with others and the conditions of use.
The Sponsored Research Agreement should specify the intellectual property rights of the sponsor. Clemson generally retains ownership of the patent rights and other intellectual property resulting from sponsored research. However, the sponsor may have rights to obtain a license to the defined and expected outcomes of the research.
Clemson’s policies regarding intellectual property ownership can be found on the CURF Inventor’s Resources page.
When you disclose your invention, it starts a process that could lead to commercialization of your technology. If government funds were used for your research, you are required to file a prompt disclosure, which will be reported to the sponsoring agency. Similar requirements may exist for other sponsored projects.
You are encouraged to submit an invention disclosure for all inventions and developments that you feel may solve a significant problem and/or have significant value. If you are in doubt, contact CURF to discuss the invention and strategies for commercialization.
You should complete an invention disclosure whenever you feel you have discovered something unique with possible commercial value. This should be done well before presenting the discovery through publications, poster sessions, conferences, press releases, or other communication. Once publicly disclosed (i.e. published or presented in some form), an invention may have restricted or minimal potential for patent protection outside of the United States. Differences exist between the U.S. and other countries on the impact of early publication on a potential patent. Be sure to inform CURF of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal, dissertation/masters thesis, publication, or other public presentation including the invention.
Yes, if your new tools would benefit other researchers and you are interested in providing them to researchers and to other third parties.
Effective July 1, 2015 invention disclosures must be submitted via Inventor Portal. Click on the following link for detailed instructions: Accessing the Inventor Portal
An inventor is an individual who has made a contribution to the conception of an invention.
4If two or more persons work together to make an invention, and each had a share in the ideas forming the invention, they are joint inventors. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor.
All persons that may have contributed to the ideas leading to a discovery should be mentioned in your disclosure, even if they are not Clemson employees.
Review & Assessment
Each invention is reviewed to determine the novelty of the invention, protectability and marketability of potential products or services, relationship to related intellectual property, size and growth potential of the relevant market, amount of time and money required for further development, pre-existing rights associated with the intellectual property, and potential competition from other products/technologies. You will be contacted to schedule a meeting with a Technology Commercialization Officer within two weeks of your disclosure submission to discuss your technology. Within sixty-five (65) days from your disclosures submission, CURF will decide whether to proceed with patent prosecution.
CURF will work with you to develop the appropriate commercialization strategy for the invention. We will try to accommodate inventors’ commercialization wishes. The final decision, however, will be determined by our assessment of which strategy will produce the most benefits for the general public, consistent with governmental or institutional policies and other obligations.
If Clemson decides not to pursue patent protection and/or CURF chooses not to continue actively marketing an invention, rights in an invention may be transferred to an inventor according to the Clemson University Intellectual Property Policy. Reassignment of inventions funded from U.S. Government sources requires the Government’s prior approval.
For general information concerning intellectual property, including patents, copyrights and trademarks, please see the Office of Technology Transfer Intellectual Property page or the Clemson University Library Patent and Trademark Depository Library page.
CURF contracts with outside patent counsel for intellectual property protection, thus assuring access to patent specialists in diverse technology areas.
Due to the expense and the length of time required to obtain a patent, patent applications are not possible for all Clemson intellectual property.
CURF assesses each invention disclosure submitted and makes decisions regarding protection and commercialization.
If you created the invention under a sponsored research or consulting agreement with another institution or company, your CURF Technology Commercialization Officer will need to review that contract to determine ownership and other rights associated with the contract. Your CURF Technology Commercialization Officer will work with the other institution or company to negotiate the appropriate agreement addressing protection and commercialization of the invention.
Yes. Often a patent application is filed before a licensee has been identified. At times, CURF must decline further patent prosecution after a reasonable period of attempting to identify a licensee.
CURF Technology Commercialization Officers use many sources and strategies to identify potential licensees and market inventions, such as existing relationships of the inventors, the CURF staff and other researchers, market research, other complementary technologies and agreements, the CURF website, and faculty publications and presentations.
A majority of licensees are known to the inventor prior to licensing. Thus, research and consulting relationships are often a valuable source for licensees. Licensees are also identified through existing relationships of the CURF staff.
It can take months and sometimes years to locate a potential licensee depending on the attractiveness of the invention, its stage of development, competing technologies, and the size and intensity of the market.
Your active involvement can dramatically improve the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies.
Contact CURF of your interest and a Technology Commercialization Officer can discuss the steps that are involved and provide some helpful resources and contacts.
Yes, an invention can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies each for a unique field-of-use (application) or geography.
License Agreements describe the rights and responsibilities related to the use and exploitation of intellectual property.
A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established company with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a start-up company is a better option.
A share of any financial return from a license is provided to the inventor(s) according to the patent policy.
CURF does not require an inventor’s participation with a licensee in the commercialization of an invention. Licensees may request the active assistance of the inventor to facilitate their commercialization efforts, especially in the early stages of development. This can range from infrequent, informal contacts to a more formal consulting relationship.
A start-up is a new business entity formed to commercialize one or more related inventions. Forming a start-up company is an alternative to licensing the intellectual property to an established business. A few key factors when considering a start-up company are:
- Development risk (often companies in established industries are unwilling to take the risk)
- Potential for multiple products or services from the same technology (few companies survive on one product alone)
- Sufficiently large competitive advantage and target market
- Potential revenues sufficient to sustain and grow a company
An inventor may choose to establish a new company to commercialize intellectual property. Inventors can contact CURF for information and resources useful for starting a new business venture.
Clemson inventors typically serve as technology consultants, advisors or in some other technical development capacity.
Starting a company requires a considerable amount of time and effort. Until the start-up team is identified and engaged, the faculty member will need to champion the formation effort.
CURF can accept equity as part of the financial terms of the license.
No. As a separate entity, the start-up must pay for its own legal matters, including all business incorporation matters and licensing expenses.
In addition to corporate counsel, the start-up may have its own intellectual property counsel to assist with corporate patent strategy, especially if the company will be involved in a patent-rich area. The start-up’s counsel must be separate from Clemson or CURF counsel. Also, it is wise for inventors to have agreements regarding their roles with the start-up reviewed by their own counsel.
Most licensees continue to develop an invention to enhance the technology, reduce risk, prove reliability and satisfy the market requirements for adoption by customers. This can involve additional testing, prototyping for manufacturability, durability, and integrity, and further development to improve performance and other characteristics. Documentation for training, installation and marketing is often created during this phase. Benchmarking tests are often required to demonstrate the product/service advantages and to position the product in the market.
Your role can vary depending on your interests and involvement, on the interest in the licensee in utilizing your services for various assignments, and on any contractual obligations related to the license or on any personal agreements.
Most licenses have licensing fees that can be very modest or can reach hundreds of thousands of dollars. Royalties on the eventual sales of the licensed products can generate revenues. Equity, if included in a license, can yield returns.
Licenses typically include performance milestones that, if unmet, can result in termination of the license. This termination allows for subsequent licensing to another business.
CURF is responsible for managing the expenses and revenues associated with technology agreements. Revenues from license fees, royalties and equity – minus any unreimbursed patenting, filing, and marketing expenses – are shared with inventors in accordance with the Clemson University Intellectual Property Policy.
License revenues are typically taxed as Form 1099 income.
Revenues waived by inventors are distributed to the associated school/college and department/unit.
While there may be some variation in the procedure, typically when an invention disclosure is submitted, a revenue distribution plan is created to document the formula used to distribute any subsequent revenues.
When CURF equity is liquidated, the resulting funds are distributed in accordance with the revenue distribution plan and Clemson policy.
NOTICE These FAQs are based on the “Inventor’s Guide to Technology Transfer” published by the University of Michigan with adaptations for Clemson University and the Clemson University Research Foundation. We are very thankful to the University of Michigan Tech Transfer staff for their permission to use this material and to the University of Michigan for the use of its copyright.