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.
When to submit an invention disclosure
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.
How to submit an invention disclosure
Effective July 1, 2015 invention disclosures must be submitted via Inventor Portal.
Accessing the Inventor Portal
Upon receipt of the invention disclosure, CURF works with the inventor to assess the patentability and commercial potential of the technology. 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.
Inventors are contacted to schedule a meeting with a Technology Commercialization Officer within two weeks of submitting an invention disclosure. 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.
Intellectual Property Protection
Once a technology is reviewed and accepted, CURF files a patent application, if warranted, with the U.S. Patent and Trademark Office to protect the technology. For general information concerning intellectual property, please visit the Clemson University Library Patent and Trademark Depository Library page.
Who is responsible for patenting?
CURF contracts with outside patent counsel for intellectual property protection, thus assuring access to patent specialists in diverse technology areas.
Why does Clemson only protect some intellectual property?
Due to the expense and the length of time required to obtain a patent, patent applications are not possible for all Clemson intellectual property.
Who decides what gets protected?
CURF assesses each invention disclosure submitted and makes decisions regarding protection and commercialization.
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.
How are licensees found?
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.
How do I assist in marketing my invention?
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.
Once a licensee is found, CURF negotiates a license agreement granting rights of the technology to a third party.
How is a company chosen to be a licensee?
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.
What is gained from a license?
A share of any financial return from a license is provided to the inventor(s) according to the patent policy.
What is the relationship between an inventor and licensee?
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.
What is a start-up company and why choose to create one?
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
During commercialization, 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 during
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.
Can an invention be licensed to another entity?
Licenses typically include performance milestones that, if unmet, can result in termination of the license. This termination allows for subsequent licensing to another business.