Technology Transfer Process
Technology transfer is the formal transfer of rights from Rensselaer to another party for the use and commercialization of new discoveries and innovations resulting from scientific research. The process of transferring Rensselaer technology generally includes identifying, protecting, and licensing Rensselaer intellectual property.
What is IP?Defines the term intellectual property and provides an overview of the different types of IP.
Commercializing Rensselaer IPExplains the various ways Rensselaer IP is commercialized.
You created IP at Rensselaer. What now?Focuses on the duty to disclose IP to IPO under RPI’s IP Policy and on best practices related to…
Best practices for disclosing your inventionProvides tips to creators regarding the type of information required to properly disclose an…
What is the patent system and how does it work?Provides an overview of the patent system and its underpinnings in the US Constitution.
Who owns an Invention
Rensselaer owns inventions developed by faculty, staff, students and fellows of Rensselaer whose conception, creation, development, or first reduction to practice involved significant use of Rensselaer support. Each inventor must assign their rights in the intellectual property to Rensselaer. This includes all faculty, staff, students and fellows who have an appointment at Rensselaer. When in doubt, it is best to contact us a 518-276-6023 or email at @email.
Assessment of Intellectual Property
Working closely with the inventor, IPO will perform a commercial and technical evaluation of the invention. The decision to pursue patent protection is based upon the following
• Patentability and ability to enforce the patent
• Marketability and commercial potential of the invention
Protection of Intellectual Property
If IPO decides to file for patent protection, it will engage a law firm that specializes in the subject matter of the invention. The law firm will identify the inventors, construct claims, and submit the required paperwork to the U.S. Patent and Trademark Office and applicable foreign patent offices. The inventor works personally with attorneys to review drafts and to ensure the technology is thoroughly understood.
Licensing and Commercializing an Invention
The appropriate path for commercializing an invention depends upon marketplace conditions, attributes of the technology, the expertise of potential entrepreneurs, and the availability of funds. Certain technologies, particularly software packages, may be licensed directly from IPO’s website. Terms of these agreements vary, but may include up-front fees payable to Rensselaer, royalty percentages and schedules payable over a number of years, or further research funding with options to license the resulting technology.
What is technology transfer?
Technology transfer is the formal transfer of rights from Rensselaer to another party for the use and commercialization of new discoveries and innovations resulting from scientific research. The process of transferring Rensselaer technology generally includes identifying, protecting, and licensing Rensselaer intellectual property (IP). Technology transfer can also include transfer of knowledge through training and educating students, extension and outreach services to existing and startup companies, cooperative education and internships, consulting services, and collaborative research activities.
What are the benefits of technology transfer?
Successful commercialization efforts or the transfer of technology can yield many benefits:
- Enables society to benefit from your work
- Provides principal investigators (PI) with a sense of personal fulfillment
- Attracts research funding/sponsors
- Forms industrial partnerships
- Places graduate students in rewarding jobs
- Offers recognition and financial reward for you and Rensselaer
- Meets the obligations of a research contract
What is intellectual property?
Intellectual property (IP) refers to creations of the mind or intangible property. IP rights are exclusive rights defined by patent, trademark, copyright, and trade secret statutes. Examples of IP include: inventions, which are protected by patents; literary and artistic works, which are protected by copyrights; designs, which are protected by design patents and/or trademarks; and symbols, names and images used in commerce, which are protected by trademarks. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish.
Examples of patentable inventions include:
- Machines (i.e. electronic devices, robotics, etc.)
- Composition of matter (i.e. materials, therapeutics, pharmaceuticals, etc.)
- Processes (i.e. algorithms, formulas, methods for creating compounds, etc.)
Examples of technologies without patents/copyrights include:
- Laws of nature
- Natural phenomena
- Abstract ideas
When should I contact IPO?
Intellectual property should be disclosed early in the development process. Disclosure of IP to IPO should be made before disclosing (oral or written) to the public. After the IP is disclosed, IPO evaluates both the patentability and commercial potential of the IP, and develops an appropriate protection and marketing strategy for IP it deems to have sufficient potential.
It is always best to check with IPO if you have any questions or concerns about disclosing or protecting your research. If any of the following are applicable to you, please contact our office:
- Have an idea for a new product or service or improvement to an existing product
- Have a functional prototype of your idea
- Preparing to disclose your research results in a presentation, publication, interview, poster session, dissertation, with other researchers, etc.
- Using federal funding or sponsored research which may yield IP
- A company has inquired about your research
- Need to share research information (send or receive data) with another institution
- Interested in launching a company with your idea or technology
Why Should Intellectual Property Not be Disclosed Prior to Public Disclosure?
After you publish, present or otherwise publicly disclose the invention, you have one (1) year from the first disclosure date to file a U.S. patent application. If you fail to file a U.S. patent application on or before the one-year public disclosure anniversary, all US patent rights in the invention may be lost. Moreover, no grace period exists for foreign patent applications. With very few exceptions, all foreign patent rights in the invention will be irrevocably lost if it is publicly disclosed before filing a patent application.
How is technology transferred through IPO?
These are the basic steps involved in the commercialization process:
- Submit an Invention Disclosure
Rensselaer innovators have a responsibility to disclose creations to IPO. Generally, this includes completing an Invention Disclosure Form.
- Invention Evaluation
After we receive the invention disclosure form, we’ll follow-up with you to discuss:
- Funding sources
- Your plans to publish or disclose the invention
- We collaborate with outside law firms to determine the patentability and marketability of the invention. We then determine the best protection strategy for technologies most likely to transfer from the laboratory to the marketplace. The evaluation process typically takes less than four months to complete.
- IP Protection
If the invention meets the evaluation criteria for technology commercialization, steps will then be taken to protect the intellectual property. This may involve filing one or more applications to secure a patent, trademark, and/or copyright.
- Technology Marketing
Once a patent application has been filed, we will begin to seek commercial partners for the invention. Commercial partners are often referred to as licensees and may include existing companies or entrepreneurs and investors to help form a new start-up company. The best strategy depends upon the specific technology, the commercial opportunities, and development level of the invention. For example, a start-up business could further develop the technology to demonstrate proof-of-concept, i.e., prototype development or clinical trials, before partnering with a larger company, which may have greater resources to take the product to market.
Most licensees continue to develop an invention to reduce risk and satisfy market requirements for adoption by customers. This phase varies depending on the product, additional development and testing needed, available resources, etc.
- Royalty Distribution
If the invention gets licensed, IPO manages the fee collection and distribution process. IPO will apply the initial royalties to cover any legal or patenting costs incurred. Additional royalties earned will be distributed among inventors and departments according to the Rensselaer IP Policy.
What is IPO’s role in technology transfer?
Our office engages with potential inventors and entrepreneurs even before the submission of an invention disclosure. We work closely with inventors on the invention disclosure process. We share valuable information gained from our various assessments and if a patent application is filed, we work closely with the inventor to either license it to industry or form a start-up around the technology.
IPO considers a number of factors to determine if intellectual property protection will be pursued. However, IPO does not assess an invention's scientific merit. We review patentability and commercial opportunities to determine the best course of action. IPO evaluates each invention according to United States Patent and Trademark Office (USPTO) guidelines: all inventions must be new, useful, and non-obvious.
How long does the technology transfer process take?
The process of protecting the invention and finding the right licensing partner may take months—or even years—to complete. The amount of time will depend on the development stage of the technology, the market for the technology, competing technologies, the amount of work needed to bring a new concept to market-ready status, and the resources and willingness of the licensees and the inventors.
What is the role of the researcher and inventor in the technology transfer process?
Rensselaer innovators have a responsibility to disclose their inventions to IPO. Generally, this includes completing the invention disclosure form. Inventor involvement is important to the entire patenting and licensing process. Inventors typically provide technical evaluation of previous patents and publications in their field, supply information to the patent attorney to assist with writing the patent, review draft applications and responses to patent office actions, and discuss technical aspects with interested companies.
We strive to keep inventors well informed during the process and will always consider your input when making decisions about protecting and licensing the invention. Final responsibility for all protection and licensing decisions rests with IPO.
What happens if a faculty member or a student who has a useful technology/product doesn’t want to start a business? Is there still an advantage of patenting an invention or method?
Under Rensselaer’s IP Policy, if a creator believes its IP may have value, they are obligated to disclose the IP to our office. If they have no interest in starting a business, that may be all they do. However, if we can license the IP, the inventors will share 35% of the revenue generated – even if they do no more than disclose the invention and participate in the patent prosecution process. In addition, being an inventor on a patent adds to your reputation and can often lead to more opportunities for you.
How can researchers and inventors help with marketing materials and identifying potential licensees?
You are an essential part of the marketing process! The first step of marketing your invention is development of the marketing materials. These materials consist of a high-level overview of the invention, called a marketing slick, and a list of potential licensees that will be contacted. Prior to beginning the marketing process, IPO will provide you with draft versions of both the marketing slick and list. Please review the information to ensure (1) the marketing slick accurately depicts the technology and (2) the marketing list encompasses companies that may have an interest or need for your technology. If you have already had contact with a company regarding your technology, please let IPO know. This will prevent IPO from reaching out to companies in which you have already formed a relationship. By reviewing both the marketing slick & list, IPO can make the most of the marketing efforts.
What is the Bayh-Dole Act
The Bayh-Dole Act allows small businesses, nonprofits, universities and research institutes to own inventions that result from federally funded research. In exchange, the research institutes are required to report each disclosed invention to the funding agency. Since the act was passed in 1980, the number of technologies patented, licensed, and commercialized through university technology transfer offices has grown rapidly. The Act allows Rensselaer to use licensing revenues to support patenting and licensing, pursue additional research and education, and provide proceeds to inventors.