Patenting and Licensing Process

 

  • Invention Disclosure - When you disclose an invention to ORC, it begins the process that could result in the commercialization of your technology. (Notice of Invention Form)
  • Assessment - After the invention disclosure, ORC will work with you to complete a Technology Assessment. This document will help inform you and ORC about the commercial potential of your invention, and is continually updated throughout the process.
  • Patent Application - If the Technology Assessment unveils commercial viability, a Provisional Patent will be filed (and paid for) by the university.
  • Invention Marketing - Once the patent application is filed, the licensing team assembles a non-confidential summary and begins marketing the technology to potential licensees.
  • License to Company - If a match is found and a company is interested in your technology, the licensing team negotiates a term sheet and a license agreement for the rights to the technology. Sometimes, the best path to commercialization includes forming a Startup Company around the technology.
  • Research Collaboration - Other times, a company or organization may be interested in funding further research with the option to license the technology later. The licensing team negotiates these agreements as well.
  • Commercialization - Once the deal is finalized, ORC manages all aspects of the partnership, including revenue distribution. Direct benefits of commercialization efforts for the inventor include personal income, research support income and societal impact.

Patenting and Licensing Process Details

Decision Points

  • DP 1 - Decision Point 1 relates to the decision to file a around the Provisional Patent Application. As soon as an invention disclosure is submitted, a licensing manager will be assigned to the technology. The licensing manager will then begin the evaluation process for the technology. Once the evaluation is completed, the licensing manager will provide the inventor with a comprehensive Technology Assessment document, detailing ORC's findings regarding the invention's commercial potential. The possible outcomes of this assessment are 1) ORC will file a Provisional Patent Application for the technology, 2) ORC will request that the inventor continue the research in order to produce more data prior to filing a Provisional Patent Application, or 3) ORC will discontinue commercialization efforts.
     
  • DP 2 - Decision Point 2 relates to the decision to convert the Provisional Patent Application to a Non-Provisional Patent Application. At this point, the licensing manager will have completed extensive marketing efforts for the technology, seeking potential licensees. If the marketing efforts were successful (for example, a company has already signed a license for the technology), and/or indicate high commercial potential, then ORC will file to convert the application to a Non-Provisional Patent Application. The licensing manager will provide the inventor with an updated Technology Assessment document detailing the reasons for filing a Non-Provisional Patent Application or discontinuing commercialization efforts.
     
  • DP 3 - Decision Point 3 relates to the decision to filing worldwide patent applications. Once again, the licensing manager will conduct more marketing research and update the Technology Assessment at this stage. If the technology is already licensed exclusively, this decision will likely be made in conjunction with the licensee. If there is no license, and no vital and compelling justification that can be presented to continue supporting worldwide patent filings, they will be discontinued or maybe licensed back to the inventor.