The following is a Guide on Technology Transfer adapted to AUB with permission from the University of Michigan Inventor’s Guide.
Technology Transfer OverviewTechnology Transfer ProcessOwnership of Intellectual PropertyPatents and Other Legal Protection Research Consideration and Material Transfer AgreementsInvention Disclosures Invention Disclosure AssessmentConsiderations for a Start-up CompanyLicense AgreementsCommercializationUseful Links
TECHNOLOGY TRANSFER OVERVIEW
What are the standards of the patentability of an invention?A patent for an invention is usually granted when the invention meets the following requirements: - It is new- It involves an inventive step (is non-obvious)- It is capable of industrial application
Why would a researcher want to participate in the technology transfer process?The reasons are unique to each researcher and may include:
THE TECHNOLOGY TRANSFER PROCESS How is Technology Transferred?Technology is typically transferred through a license agreement in which the university assigns the defined technology to a third party for a period of time, often limited to a particular field of use and/or region of the world. The licensee (the third party licensing the technology) may be an established company or a new business start-up. Licensing agreements usually include terms that require the licensee to meet certain performance obligations and to make financial payments to the University. These payments are distributed among the inventors and Departments/Units, and AUB administration to provide support for further research and education, In accordance with AUB’s Intellectual Property Policy. How do Faculty Members Work with TTU?Faculty Members are encouraged to contact TTU at the early stage of their research activities to be aware of the options that will best leverage the commercial potential of their research. TTU assists Faculty Members with questions related to marketability, funding sources, commercial partners, patenting and other protection methods, new business start up considerations and University policies and procedures.
What are the Typical Steps in the Process?The process of technology transfer is summarized in the steps that follow. These steps can vary in sequence and may often occur simultaneously.
1- Research: observations and experiments during research activities often lead to discoveries and inventions. An invention is any new useful process, machine, composition of matter, or any new or useful improvement of the same. Often, multiple researches may have contributed to the invention.
2- Pre-disclosure: any early contact with TTU personnel to discuss the invention and to provide guidance with respect to the disclosure, evaluation, and protection processes described below.
3- Invention disclosure: the written notice of invention to TTU begins with the formal technology transfer process. An invention disclosure remains a confidential document and should fully document the invention so that the options for commercialization can be evaluated and pursued.
4- Assessment: this is the period in which the Faculty member, the TTU representative and the IP advisory committee, review the invention disclosure, conduct patent searchers (if applicable), and analyze the market and competitive technologies to determine the invention’s commercialization potential. The IP advisory committee is established by the Provost and the Director of OGC to help in implementing the technology transfer policy and evaluating the patentability potential of an invention, IP protection action, waiver requests, policy amendments, and ownership of inventions. This evaluation process, which may lead to a broadening or refinement of the invention, will guide the strategy on whether to focus on licensing to an existing company or creating a new business start-up. Unless there is convincing and explicit evidence that the IP was developed without the use of university resources and/or facilities (which may include, but is not limited to, any of the following: use of equipment, laboratory, or office space, university time of originator and/or personnel under their control, funds supplied by the University and/or funds originating from sponsored research projects and/or donations to university/affiliated companies, etc.), ownership of the IP rests with the University and the originators are obliged to sign the appropriate legal assignment documents. For more information please see AUB’s Intellectual Property Policy.
5- Protection: the process in which protection for an invention is pursued. Patent protection, a common legal protection method, begins with the filing of a patent application in the Ministry of Economy and Trade of Lebanon, and when appropriate, with foreign patent offices.
6- Marketing: in cooperation and coordination with the Faculty Member, TTU identifies candidate companies that have the expertise, resources, and business networks to bring the technology to market. This may involve partnering with an existing company or forming a start-up. The active involvement of Faculty member is essential and necessary to effectively market the technology and shorten the process.
7- Form a start-up: if creation of a new business start-up is chosen as the optimal commercialization path a business plan is needed for TTU to assist in planning and formation of the start-up.
8- Licensing: a license agreement is a contract between the University and a third party in which the University’s rights to a technology are licensed, without relinquishing ownership, or financial and other benefits. A license agreement is used with both a new start-up business or with an established company.
9- Technology advancement: The licensee continues the advancement of the technology and makes and or attracts 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.
10- Revenues: revenues received by the University from licenses are distributed to the relative departments, central administration, and inventors to fund additional research, support education, encourage further innovation, or to be used as gap funding.
How Long Does the Technology Transfer Process Take?The process of protecting the technology 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.
How Can Faculty Help in this Process?If a faculty member believes that he/she has a potentially patentable idea, he/she are highly advised to contact TTU in order to avoid risking his/her patent rights and possibly hindering the opportunity to market an invention in the future.
OWNERSHIP OF INTELLECTUAL PROPERTYWhat is “Intellectual Property”?Intellectual property is an invention and/or material that may be protected under a patent, trademark and/or copyright laws, or by a contract.
Who owns what I create?Ownership depends upon the employment status of the creators of the invention and their use of University facilities. In general, AUB owns inventions made by its employees while acting within the scope of their employment or using more than incidental University resources. However, ownership might depend on various considerations such as:
- What is the source of the funds or resources used to produce the invention?- What was the employment status of the creators at the time the intellectual property was made?- What are the terms of any agreement related to the creation of the intellectual property?
Who owns rights to discoveries made while I am consulting?The ownership of inventions made while consulting for an outside company depends on the terms of the researcher’s consulting contract. It is important to clearly define the scope of work within consulting contracts to minimize any issues with ownership of inventions created from University research.Who owns rights to discoveries made while on sabbatical?Generally, if the researcher is on a sabbatical paid by the University, AUB still retains rights to any discoveries connected to his/her scope of employment.
Should I list visiting scientists or scientists at other institutions on my Invention Disclosure?All persons that may have contributed to the ideas leading to a discovery should be mentioned in the disclosure, even if they are not AUB employees. TTU, along with legal counsel, will determine the rights of such persons and institutions. In US patent law, inventorship is determined by US patent office (USPTO). All those involved in the research must be listed and their roles identified to help TTU determine inventorship. It is prudent to discuss with TTU all working relationships (preferably before they begin) to understand the implications for any subsequent inventions.
Can a student contribute to an invention?Yes, many students work on inventions at AUB under a wide variety of circumstances. AUB promotes student entrepreneurship, and students can be named as Inventors under AUB intellectual property (IP) Policy. Typically, a student will own his or her rights to an invention unless the invention was created by a student who is also an AUB employee and/or the student used more than incidental AUB resources.
PATENTS AND OTHER LEGAL PROTECTION
What type of subject matter can be patented?Patentable subject matter includes processes, machines, compositions of matter, articles, some computer programs, and methods (including methods of making compositions, methods of making articles, and even methods of performing business).
Is there such a thing as a provisional patent?No. However, there is a provisional patent application, which is described below.
What is the difference between a provisional patent application and a regular (or “utility”) patent application?In certain circumstances, U.S. provisional patent applications can provide a tool for preserving patent rights while temporarily reducing costs. This occurs because the application is not examined during the year in which it is pending and claims are not required. A regular U.S. application and related foreign applications must be filed within one year of the provisional form in order to receive its early filing date. However, an applicant only receives the benefit of the earlier filing date for material that is adequately described and enabled in the provisional application. As a result, the patent attorney often needs your assistance when an application is filed as a “provisional.”
How to register a patent at the national level and at the international level?At the national level, the invention is registered at the Lebanese Ministry of Economy and Trade and this registration gives the inventor the exclusive right to exploit the invention subject matter of a patent for twenty years from the date of filing the application, as stipulated in Article 10 of the Lebanese Patent Law.
Article 8 of the Lebanese patent law describes the procedures for filing an invention. The downloadable forms for registration of an invention can be found under The “Intellectual Property Right” section of the Ministry of Economy and Trade.
At the international level, foreign patent protection is subject to the laws of each individual country, although in a general sense the process works much the same as it does in the United States. In foreign countries, however, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing the patent application. In contrast, the United States has a one-year grace period. For more information see the following useful links:
· United States Patent and Trademark Office · European Patent Office (EPO) · World Intellectual Property Organization (WIPO)
Who decides what gets protected?TTU and the inventor(s) consider relevant factors in making recommendations about filing patent applications. Based on a recommendation from the licensing consultant, the IP advisory committee ultimately makes the final decision as to whether to file a patent application or seek another form of protection.
What does it cost to file for and obtain a patent?In Lebanon, and as stipulated in Article 10 of the Law, filing a regular patent application will cost at registration an average of L.L.100,000. On the first day of every year following the application filing, the following payment schedule is followed:
Annuity of second year 150,000 Lebanese LirasAnnuity of third year 200,000 Lebanese LirasAnnuity of fourth year 250,000 Lebanese Liras Annuity of fifth year 300,000 Lebanese Liras Annuity of sixth year 350,000 Lebanese Liras Annuity of seventh year 400,000 Lebanese Liras Annuity of eighth year 450,000 Lebanese Liras Annuity of ninth year 500,000 Lebanese Liras Annuity of tenth year 550,000 Lebanese LirasAnnuity of eleventh year 600,000 Lebanese LirasAnnuity of twelfth year 650,000 Lebanese LirasAnnuity of thirteenth year 700,000 Lebanese Liras Annuity of fourteenth year 750,000 Lebanese LirasAnnuity of fifteenth year 800,000 Lebanese LirasAnnuity of sixteenth year 850,000 Lebanese LirasAnnuity of seventeenth year 900,000 Lebanese LirasAnnuity of eighteenth year 950,000 Lebanese LirasAnnuity of nineteenth year 100,000 Lebanese LirasAnnuity of twentieth year 105,000 Lebanese Liras
The fees paid after the due dates and within a grace period of 6 months shall incur an additional fine of one thousand Lebanese Liras.For information on filing fees of a patent in the United States of America please see the website of the United States Patent and Trademark Office (USPTO). For information on filing fees for a patent in Europe please see the document of the European Patent Office (EPO).
RESEARCH CONSIDERATIONS AND MATERIAL TRANSFER AGREEMENTS
Will I be able to publish the results of my research and still protect the commercial value of my 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 AUB. There are significant differences between the U.S. and other countries as to how early publication affects a potential patent. Once publicly disclosed (published or presented in any form), an invention may have restricted or minimal potential for patent protection outside of the United States. Be sure to inform the TTU staff of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation/ master's thesis, publication, or other public presentation including the invention.
May I use material or intellectual property from others in my research?Yes, but it is important to document carefully the date and conditions of use so that we can determine if this use may influence the ownership and license rights of your subsequent research results. If you wish to obtain materials from outside collaborators, an incoming Material Transfer Agreement (MTA) should be completed. Contact the TTU manager for the MTA template and for assistance.
Will I be able to share materials, research tools or intellectual property with others to further their research?Yes. However, it is important to document items that are to be shared with others and the conditions of use. If you wish to send materials to an outside collaborator, an outgoing Material Transfer Agreement (MTA) should be completed for this purpose. It also may be necessary to have a Confidentiality/Non Disclosure Agreement completed to protect your research results or intellectual property. Contact TTU manager to assist you on this.
What rights does a research sponsor have to any discoveries associated with my research?The Sponsored Research Agreement should specify the Intellectual Property (IP) rights of the sponsor. The University 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. Often, sponsored research contracts allow the sponsor a limited time to negotiate a license for any patent or intellectual property rights developed as the result of the research. Therefore, it is important to define the scope of work within a research agreement.
Sponsored research projects are handled by OGC. OGC personnel work closely with TTU on IP issues in sponsored research agreements. If you have questions about sponsored research, please contact TTU or send your question to email@example.com
What is an Invention Disclosure?An Invention Disclosure is a written description of the invention or development that is provided to TTU. The Invention Disclosure should list all collaborating sources of support and include all of the information necessary to begin pursuing protection, marketing, and commercialization activities. This document will be treated as “University Confidential.” Based on the Invention Disclosure, TTU with the Faculty Member assistance will generate a non-confidential description of the invention in order to assist in marketing the technology. Once potential partners have been identified, and confidentiality agreements have been signed, more detailed exchanges of information can be made.
Why should a faculty member submit an Invention Disclosure?When a Faculty member discloses an invention to TTU, a process that could lead to the commercialization of a technology is initiated. This may involve beginning the legal protection process and working to identify outside development partners. For sponsored research, Faculty member might also be required to file a prompt disclosure, which will be reported to the sponsoring agency.
How do I know if my discovery is an invention?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 TTU to discuss the invention and to determine its novelty, applicability or non- obviousness, and strategies for commercialization.
Should I disclose research tools?Yes, if new research tools would benefit other researchers and you are interested in providing them to those researchers and to other third parties. Typically, research tools are materials such as antibodies, vectors, plasmids, cell lines, mice, and other materials used as “tools” in the research process. Most research tools do not necessarily need to be protected by patents in order to be licensed to commercial third parties and/or to generate revenue for your laboratory. If you have research tools that you believe to be valuable, or wish to provide to others (including research collaborators), TTU will work with you to develop the appropriate protection, licensing, and distribution strategy.
How do I submit an Invention Disclosure?You can download a Disclosure Form and follow the simple instructions. Should you have any questions, call TTU at 2979 or email us at: firstname.lastname@example.org.
ASSESSMENT OF AN INVENTION DISCLOSURE
If the inventors believe that all IP should be licensed non-exclusively to all potential users for the public good, will AUB honor our request?TTU will work with faculty members to develop the appropriate commercialization strategy for the invention. Some technologies lend themselves to non-exclusive licensing (licensing to multiple third parties), while others will only reach the commercial marketplace, and therefore the public, if they are licensed on an exclusive basis.
Is an invention ever assigned to an Inventor?If TTU decides not to pursue patent protection and/or chooses not to actively market the invention; the University may transfer ownership to the inventor(s). Among the key factors in deciding to assign are whether additional University resources or private resources could best improve marketability.
CONSIDERATIONS FOR A START-UP COMPANY
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 IP 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. While working with inventors and others, TTU uses this information to identify the most appropriate licensing partner(s), which could either be established businesses or new startups.
Who decides whether to form a start-up?The choice to establish a new company for commercializing IP is a joint decision made by TTU, The IP Advisory committee and the inventors. If a new business start-up is chosen as the preferred commercialization path, TTU will assist in planning and executing the process. TTU acts as business formation consultants, providing hands-on assistance and access to University and outside resources.
What role does an inventor usually play in a company?AUB faculty members typically serve as technology consultants, advisors or in some other technical developmental capacity. Faculty members might choose to leave the University and join the start-up. The Faculty member’s role is usually determined by the start-up investors and management team.
How much of my time and effort will it take?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. After the team is in place, effort is required for investor discussions, formal responsibilities in or with the company, and University processes such as conflict of interest policy.
Will the University pay for incorporating a start-up company?No. As a separate entity, the start-up must pay for its own legal matters, including all business incorporation matters and licensing expenses.
How does TTU market my inventions? TTU uses several sources and strategies to identify potential licensees. Sometimes existing relationships that the inventors might have, the TTU staff, and other researchers are useful in identifying such licenses to market the invention. TTU also posts inventions on international databases, at conferences and industry events. Faculty publications and presentations are often excellent marketing tools as well.
How long does it take to find a potential licensee?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. Most university inventions tend to be in the early stage in the development cycle and thus require substantial commercialization investment.
How can 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 interested companies are identified and vetted (SAM, UN and Ofac), where a copy of the results is saved in the project files, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful tech transfer results are obtained when the inventor and the licensing professional work together as a team to market and sell the technology.
Can there be more than one licensee?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.
What is a license?A license is a permission that the owner or controller of intellectual property grants to another party, usually under a license agreement.
What is a license agreement?License agreements describe the rights and responsibilities related to the use and exploitation of intellectual property developed at the University. University license agreements usually stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good and provide a reasonable return to the University. The agreement sets milestones to meet, royalties and fees to be paid.
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 noting that all the companies are vetted early on (SAM, UN and Ofac), where a copy of the results is saved in the project files.
What can I expect to gain if my IP is licensed?According to AUB’s Intellectual Property Policy, a share of any financial return from a license is provided to the inventor(s). Inventors enjoy the satisfaction of knowing their inventions are being deployed for the benefit of the general public. New and enhanced relationships with businesses are another outcome that can augment one’s teaching, research and consulting. In some cases, additional sponsored research may result from the licensee.
What other types of agreements and considerations apply to tech transfer?
• Non-Disclosure Agreements (NDAs) protect propriety information shared between parties. They are also used to protect the confidentiality of an invention during evaluation by potential licensees. TTU drafts and manages NDAs on behalf of the University.
• Material Transfer Agreements (MTAs), are agreements used for incoming and outgoing materials at the University, and are administered by TTU. These agreements describe the terms under which University researchers and outside researchers may share materials, typically for research or evaluation purposes. Intellectual property rights can be endangered if materials are used without a proper MTA.
These agreements are signed by the Director or Assistant Director of TTU.
What is my role during commercialization? Your role can vary depending on your interest and involvement, and in the interest of the licensee in utilizing your services for various assignments, and any contractual obligations related to the license or any personal agreements.
What will happen to my invention if the Start-up Company or licensee is unsuccessful in commercializing the technology? Can the 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.