Technology Transfer Process: FAQ

You have a novel idea, invention or technology that you think has societal benefit and is marketable. 

The first step in safeguarding intellectual property resulting from UD related work is to file an invention disclosure. Filing a disclosure protects the rights, prior to publishing or presenting, and allows you to continue your research with additional developments.


The Invention Disclosure Form begins the process of bringing your innovation to life. In the meantime, the information below can help you understand the technology transfer process and how it facilities commercialization of your innovation.

 

Bringing Your Innovation to Life


Read about the different phases and actions related to the commercialization process.

closeup of laboratory work

Members include representatives of the OEIP Technology Transfer Associates and the DE Small Business Development Center, who partner with University Innovators to provide mentorship throughout the commercialization experience.

The Commercialization Committee supports the innvovator(s) from the point of disclosure and continues through an iterative process of feedback and support. The committee will assist in assessing and developing a commercialization strategy and potentially pursue, at no cost to the innovator, patent(s), license agreements with established companies and/or start-ups.

curating a unique path forward

Research 

A novel idea is developed or a laboratory discovery is made that solves a problem and shows a potential societal benefit.

SUBMIT

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1. Download INVENTION DISCLOSURE FORM

2. Complete INVENTION DISCLOSURE FORM including all signatures.

3. Technology Transfer Office receives documents from innovators through UD's internal webforms.

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EVALUATE

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4. UD tracking number is assigned and acknowledgements are sent via email. 

5. Inventors are invited to attend the first available weekly COMMERCIALIZATION COMMITTEE to discuss the invention with committee members. 

6. COMMERCIALIZATION COMMITTEE reviews invention in light of its (1) legal protectability (usually patentability), (2) commercial viability, and (3) stage of development. 

7. COMMERCIALIZATION COMMITTEE makes a decision to pursue or abandon the case and communicates their decision to the inventors in the days following the meeting.

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FILE

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8. If the COMMERCIALIZATION COMMITTEE decides to move forward, a Case Manager is assigned and legal protection is filed to protect INTELLECTUAL PROPERTY. For patents, legal protection is usually in the form of a PROVISIONAL PATENT application that is filed in-house. 

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Market

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9. Case Manager determines commercialization strategy and works with the inventors to market/showcase the technology to seek LICENSING PARTNERS with established companies or start-ups. 

10. In the case of a provisional application the COMMERCIALIZATION COMMITTEE makes a decision approximately nine (9) months from the filing date as to whether to convert to a regular utility patent and/or Patent Cooperation Treaty application. If the decision is to abandon, the invention is usually assigned back to the granting agency or inventors. 

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LicensE

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11. Case Manager continues to seek licensee for the invention with assistance from the inventors. Commercialization Committee continually reviews the commercial potential and decides whether continued support towards its legal protection is warranted. 

12. In the event that a licensee expresses interest in commercializing the technology, the Case Manager coordinates with the inventor and Commercialization Committee,  to establishes a license agreement with the company. 

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Commercialization 

Commercializing is a process of advancing ideas, research, and concepts into viable products that obtain marketplace acceptance, adoption, and ultimately generate a financial return. Additional benefits provide a vibrant UD community for researchers, and public trust.

STARTUP COMPANY

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When a license is available the technology can be matched with a startup company wishing to bring it to the marketplace. The option exists for the Innovator to license their own technology and partner with UD in forming a startup company.

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ESTABLISHED COMPANY

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The Technology Transfer Office will work to find an industry match for the technology which may lead to an improvement on existing technology, new technology, or a product for societal benefit.

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Frequently Asked Questions

Patents

Ownership of intellectual property developed at the University will be determined according to the Intellectual Property Policy.

Inventions must meet the following criteria in order to be patentable:

  • Useful - meaning that the invention is functional and beneficial.
  • Novel - meaning  that the invention is not previously known
  • Non-obvious -  meaning that the invention would not be considered obvious by someone “having ordinary skill in the art”

The University will do its best to protect and commercialize the invention.

The University will protect and commercialize the invention and cover all the costs to pursue commercialization.  If the technology is licensed, a portion of the royalty revenue will be distributed to the inventor as well as the college and department. 

The Commercialization Committee will decide if a patent application will be filed.

The entire process varies for each patent application and can take anywhere from three to six years to issue.

YES!  Please contact the technology transfer office as early as possible prior to any type of publication. In the United States, there is a one year grace period from the date of public disclosure to file a patent application. Foreign patent rights can be lost.  Grant proposals are not considered a public disclosure until it is posted and available to the public for review.

Confidential Disclosure Agreements (CDA)

CDAs are legal agreements for the protection of proprietary information. A CDA is necessary before any transfer of proprietary information from one party to another.  It is critical to contact the technology transfer office before disclosing any information to another party. 

Please contact technology transfer before you disclose any details to or with the company.  We will work to ensure that a confidential disclosure agreement is executed that will protect your patent rights. We can also discuss the possibility of establishing a partnership with the company for further research.

Material Transfer Agreements (MTA)

MTAs are legal agreements for protection of tangible research materials created by researchers that may be useful to others for research or commercial development.  It is critical to contact the technology transfer office before disclosing any information to another party.

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Contact Technology Transfer
591 Collaboration Way, Suite 204, Newark, DE 19713
302-831-7140