INVENTOR'S HANDBOOK
Everything You Need to Know to Navigate the Tech Transfer Process and Protect Your Intellectual Property.
Table of Contents
Technology Transfer Basics and BioVentures
Technology transfer refers to the process of transferring technology from one organization to another. This can involve transferring intellectual property such as patents, copyrights, and trademarks, as well as technical knowledge and expertise. Tech transfer is often used to bring new technologies and innovations to the marketplace, where they can be used to create new products, services, and businesses. In some cases, tech transfer is used to help organizations commercialize the technologies they have developed, such as by licensing the technology to other companies or forming partnerships to bring the technology to market.
BioVentures is the technology transfer office at the University of Arkansas for Medical Sciences (UAMS) that is responsible for protecting, managing, licensing, and commercializing all forms of intellectual property (e.g., patents, copyrights, and trademarks) developed at UAMS. The team at BioVentures consists of experts in licensing, business development, healthcare sciences, and legal matters, who have extensive experience in transferring technology across various fields.
- All intellectual property developed at UAMS is owned by UAMS. Any UAMS employee or team member who wishes to commercialize their intellectual property is obligated to disclose their invention to BioVentures per University mandate.
- Protecting intellectual property gives an invention the best chance to be commercialized and make an impact. Without intellectual property protection, most companies will not work to bring a product to market, which can improve lives.
- Inventors can benefit financially if their inventions are commercialized. If UAMS profits from your intellectual property, part of the profits are given to the inventors.
- Inventors are not responsible for the costs of patents and/or copyrights. Protecting intellectual property can be extremely expensive. BioVentures fully covers the costs.
- Protecting intellectual property by securing patents, trademarks, or copyrights for their inventions can help prevent others from copying or using the technology without permission and can provide legal recourse if infringement occurs.
- Participating in technology transfer can enhance the reputation and visibility of a researcher or innovator, promote their work and accomplishments, provide opportunities for recognition and career advancement, fulfill the mission of the university or research foundation, and broaden the reach of the inventor’s discoveries by working with BioVentures and actively seeking potential licensees.
The Bayh-Dole (pronounced bye-dōl) Act is a United States federal law passed in 1980 that governs the commercialization of federally funded research. The law is named after its sponsors, former Senators Birch Bayh and Bob Dole. The Bayh-Dole Act allows universities, small businesses, and non-profit institutions that receive federal funding for research to own and license patents resulting from that research. Before the law’s passage, the federal government retained ownership of any inventions or discoveries made with federal funding. The purpose of the Bayh-Dole Act is to encourage the development of new technologies and facilitate their commercialization, promoting economic growth and improving public health. The law has been credited with spurring innovation and entrepreneurship in the United States by enabling universities and other institutions to take a more active role in technology transfer and commercialization.
The Tech Transfer Process
Working with the BioVentures Tech Transfer Office as an inventor involves a collaborative and iterative process aimed at effectively transferring your technology to the commercial realm. Here are different aspects of commercialization where BioVentures and inventors can work together:
- Advice and Consultation: The BioVentures team is here to help you as an inventor. Whether you have questions about public disclosure, working with companies, or any other queries, we are here to assist you. Contact us at BioVentures@uams.edu for more information.
- Initial Disclosure: Begin by fully and adequately disclosing your invention to BioVentures by submitting an invention disclosure form. This form provides a comprehensive overview of your technology, its potential applications, and any supporting data or prototypes. BioVentures will review this information to evaluate the commercial potential and intellectual property aspects of your invention.
- Evaluation and Assessment: Once your invention disclosure is received, BioVentures will conduct a thorough evaluation, assessing the market need for the technology, potential competitors, patentability considerations, and any regulatory or legal aspects. BioVentures may engage with you in further discussions to gather additional information or clarify certain aspects of your invention.
- Licensing Strategy and Negotiation: Once intellectual property protection is in place, BioVentures will develop a licensing strategy for your technology, aiming to identify potential industry partners or licensees with the expertise and resources to bring your invention to market. Licensing negotiations will be initiated when a potential licensee expresses interest in your technology, discussing the terms and conditions of the licensing agreement, including financial considerations, milestone requirements, royalty rates, and any sublicensing provisions.
- Technology Transfer and Commercialization: Once a licensing agreement is finalized, the licensee will gain the rights to develop, manufacture, and market your technology. BioVentures will monitor the licensee’s progress and ensure compliance with the terms of the agreement. Throughout this process, BioVentures may provide guidance and support to both you and the licensee to facilitate the successful commercialization of your technology.
Here is an estimated timeline for the key steps involved in the tech transfer process:
- Invention Disclosure: Submit the invention disclosure form to BioVentures. Estimated time for review by the BioVentures team: 1-2 weeks.
- Patent and Copyright Committee Meeting: Once the invention disclosure is accepted, schedule a meeting with the Patent and Copyright Committee. Estimated time to schedule the meeting: 1-2 months.
- Filing a Provisional Patent Application: After the Patent and Copyright meeting, file a provisional patent application to secure 12 months of protection. This step is typically completed within a few weeks.
- Technology Assessment: Approximately 9 months after filing the provisional patent application, evaluate the progress and potential of the technology.
- File a PCT (Patent Cooperation Treaty) Application: If the technology shows promise, file a PCT application to seek international patent protection. The filing of a PCT application generally takes a few weeks.
- National Phase Applications: Within 30-31 months from the priority date (usually the filing date of the provisional application), file national phase applications in the desired countries where patent protection is sought. The timing and duration may vary based on specific country requirements and the complexity of the technology.
- Licensing Strategy and Negotiation: Develop a licensing strategy, identify potential partners or licensees, and engage in negotiation discussions. The duration can vary depending on the market demand for the invention, the complexity of the technology, and the agreement terms.
- Technology Transfer and Commercialization: Upon finalizing the licensing agreement, collaborate with the licensee for technology transfer and commercialization efforts. The timeline for commercialization is influenced by factors such as further development, regulatory requirements, manufacturing, and market adoption. It can range from several months to years.
It is important to note that these timelines are estimates and can be influenced by various factors specific to the technology and the circumstances surrounding the tech transfer process. Effective communication, collaboration, and proactive engagement between the inventors and the technology transfer office, such as BioVentures, can help ensure a smoother and more efficient tech transfer process.
Ownership of Intellectual Property
Intellectual property (IP) refers to creations of the mind, such as inventions, artistic works, designs, and symbols, that may be eligible for legal protection under patent, trademark, copyright, and trade secret laws. IP rights enable creators to protect their work, control its use, and potentially benefit from its commercialization.
Ownership of intellectual property depends on the terms of your employment, affiliation with an institution, or any contractual agreements in place. In the context of UAMS, IP rights to inventions or discoveries belong to the institution if they were created within the scope of your employment or using institutional resources.
To find the University of Arkansas for Medical Sciences (UAMS) policy on ownership of inventions, visit the University of Arkansas policy website here. You can also consult with BioVentures, and we can point you to the appropriate policies.
Yes, students can contribute to an invention or discovery. If a student has made a significant contribution to the creation of intellectual property, they should be listed as an inventor on the Invention Disclosure and any resulting patent applications. It is important to acknowledge all individuals who have made significant contributions to the invention to ensure proper recognition and assignment of ownership rights.
Invention Disclosures
An Invention Disclosure is a document that provides information about an invention or development, including how it works and its features and benefits. If you are planning to publish or publicly disclose information about your invention, it is important to notify BioVentures. To submit an Invention Disclosure, go to BioVentures.tech/inventors and complete the online form.
Submitting an Invention Disclosure to BioVentures initiates a process that may result in the commercialization of your technology. This process may include the pursuit of legal protection and the identification of external development partners on the part of BioVentures.
Determining whether your discovery qualifies as an invention and warrants submission of an Invention Disclosure is an important step in the tech transfer process. Here are some considerations to help you assess whether your discovery meets the criteria for an invention:
- Novelty: An invention must be new or novel, meaning it should not have been publicly disclosed or known before. If your discovery introduces a new concept, process, composition, or application that hasn’t been documented or made available to the public, it may qualify as an invention.
- Inventive Step: An invention typically involves an inventive step or non-obviousness. This means it should not be an obvious or straightforward advancement from existing knowledge or prior art. If your discovery demonstrates a unique and inventive approach or solution to a problem, it may qualify as an invention.
- Industrial Applicability: An invention should have practical utility or industrial applicability. It should be capable of being manufactured, used, or applied in an industry or commercial context. If your discovery has potential applications or can be developed into a useful technology, it may qualify as an invention.
- Potential Commercial Value: Consider the potential commercial value or marketability of your discovery. If it has the potential to be monetized or licensed to external parties for further development and commercialization, it may be worth submitting an Invention Disclosure.
Submitting an Invention Disclosure to BioVentures is a proactive step to initiate the tech transfer process and explore the commercialization potential of your discovery. It allows you to formally disclose your invention to the technology transfer office and begin the evaluation and assessment process. The Invention Disclosure provides a comprehensive overview of your technology, including its description, potential applications, supporting data, and any prototypes. Even if you are uncertain about whether your discovery qualifies as an invention, it is advisable to submit a Invention Disclosure. The experts at BioVentures can evaluate the disclosure and assess its commercial potential and patentability. They will provide guidance and support throughout the process, helping you determine the best path forward for your technology.
An Invention Disclosure should be completed when you believe you have come up with something new and potentially valuable for commercial use. It is important to complete a Invention Disclosure before sharing the information publicly, such as through presentations or press releases, as doing so may limit your ability to secure patent protection for the technology outside of the United States.
Yes, you should disclose research tools in your Invention Disclosure if they are novel, have potential commercial value, or if they significantly improve upon existing tools. Examples of research tools include reagents, cell lines, animal models, software, and databases. Disclosing research tools can lead to licensing opportunities, industry partnerships, or other avenues for commercialization.
Yes, you should list visiting scientists on your Invention Disclosure if they have made significant contributions to the invention or discovery. Including all individuals who have contributed to the creation of the intellectual property helps ensure that appropriate credit and ownership rights are assigned.
To submit an Invention Disclosure, follow these steps:
- Visit the BioVentures website at BioVentures.tech/inventors.
- Locate and click on the “Submit an Invention Disclosure” link or button.
- Complete the online form with all the relevant information about your invention, including a description of the technology, its features and benefits, and any potential applications or markets.
- Attach any supporting documents, such as drawings, diagrams, or technical specifications, if applicable.
- Review your submission to ensure all the necessary information is provided and accurate.
- Click “Submit” to finalize your Invention Disclosure.
BioVentures evaluates Invention Disclosures through a multi-step process, which may include the following:
- Initial Review: Upon receiving an Invention Disclosure, BioVentures conducts an initial review to determine if the information provided is complete and clear. They may reach out to the inventor(s) for additional details or clarification if necessary.
- Technical Assessment: BioVentures assesses the technology’s technical merits, considering factors such as its novelty, potential advantages over existing solutions, and feasibility of development.
- Market Analysis: BioVentures evaluates the commercial potential of the technology, including potential applications, target markets, and the competitive landscape.
- Intellectual Property Assessment: The IP viability of the technology is assessed, including the potential for patent protection or other forms of IP protection, as well as any existing IP rights that may be relevant.
- Strategy Development: Based on the above assessments, BioVentures develops a commercialization strategy, which may include seeking legal protection, identifying potential partners for development, and exploring licensing or startup opportunities.
- Decision Making: BioVentures makes a decision on whether to proceed with commercialization efforts for the technology based on the assessments and potential return on investment.
In some cases, an invention may be reassigned to an inventor if the institution or technology transfer office, such as BioVentures, decides not to pursue commercialization or cannot secure IP protection for the technology. The reassignment process typically involves a formal agreement between the institution and the inventor outlining the terms and conditions under which the inventor regains control of the intellectual property. The inventor may then choose to pursue commercialization independently or seek alternative avenues for the technology’s development.
Patents
A patent is a legal document that gives the holder the exclusive right to prevent others from making, using, selling, and importing an invention for a limited time period, usually 20 years from the date of filing. In exchange for this exclusive right, the holder must publicly disclose the details of the invention so that others can learn from it and build upon it. To obtain a patent, an inventor must apply for a patent with the appropriate government agency, and the application must meet certain requirements, including novelty, non-obviousness, and usefulness.
Technology that can be patented includes inventions, processes, and products that are novel, non-obvious, and have a useful purpose. This includes things like software, hardware, medical devices, and chemical compounds. It is important to note that ideas and concepts cannot be patented, only the tangible manifestation of those ideas.
The United States Patent and Trademark Office (PTO) is a federal agency responsible for issuing patents for new inventions and trademarks for brand names, logos, and other intellectual property. The PTO also examines and approves applications for patents and trademarks to ensure that they meet certain requirements and do not infringe on existing intellectual property rights.
An inventor on a patent is a person who has created a new, original, and useful idea that has been reduced to practice in a physical form. It is the individual or group of individuals who are responsible for the conception and reduction to practice of the invention. The determination of inventorship is made by the United States Patent and Trademark Office (USPTO) based on the information provided in the patent application.
A provisional patent application is a temporary filing that allows you to establish an early effective filing date for your invention. It does not undergo examination and will expire after 12 months. A regular or utility patent application is a more formal and thorough application that is examined by the patent office and, if granted, provides legal protection for your invention.
When deciding whether or not to convert a provisional patent application to a international Patent Cooperation Treaty (PCT) application, several factors should be considered:
- International Protection: The most significant advantage of a PCT application is the potential to secure patent protection in numerous countries (currently about 153 contracting states). If you believe that your invention has market potential in many countries, a PCT application might be the best route to protect your intellectual property globally.
- Cost: PCT applications are more expensive than provisional applications. You must consider the initial filing costs, along with the fees for national phase entry in each country where you wish to seek protection. Additionally, professional fees for patent attorneys can be quite substantial. Therefore, it’s essential to consider whether the potential global market for your invention justifies the cost.
- Time to Market: The PCT process can take a long time – it can be 30 months or more from the priority date until you need to start the national phase entry process. If you’re in a rapidly evolving field, this delay may mean that the market may have moved on before you secure your patent rights. On the other hand, this extended period could give you more time to assess the invention’s commercial viability and secure funding or licensing deals.
- Competitive Landscape: If there’s a lot of competition or existing patents in your field, it might be harder to secure a patent or to commercialize your invention. Therefore, it’s essential to conduct a thorough prior art search and possibly a freedom-to-operate analysis before deciding to pursue a PCT application.
- Strength of the Invention: PCT applications require full patent specification, including detailed description, claims, abstract, and often drawings. You should consider if your invention is well-developed and well-documented enough to meet these requirements.
- Changes in the Invention: If your invention has undergone significant changes since the provisional application was filed, you might need to file a new provisional application before proceeding to the PCT phase to ensure that the new matter is adequately protected.
- Business Strategy: Lastly, your overall business strategy should factor into the decision. If you intend to license the technology to companies in multiple countries, a PCT application could be beneficial. On the other hand, if you’re a startup focusing on a specific market, it may not be worth the time and money to pursue a PCT application.
Foreign patent protection refers to the process of obtaining patent protection in a country outside of the one in which the patent was originally filed. This process can be more complex and time-consuming compared to obtaining patent protection within the same country. It also requires a thorough understanding of the patent laws and regulations in each individual foreign country. Additionally, foreign patent protection may be more costly due to the need for translation services and the requirement for local counsel in each country.
There is no such thing as an international patent, but the Patent Cooperation Treaty (PCT) provides a way for applicants to file for patent protection in multiple countries through a streamlined process. For U.S. applicants, a PCT application can be filed one year after a corresponding U.S. application has been submitted. The PCT application must later be filed in the national patent office of any country where the applicant wants to seek patent protection.
The patenting process involves several steps and can vary depending on the jurisdiction in which the patent is filed. Here is a general overview of the process for obtaining a patent:
- Invention disclosure: The inventor(s) submit a detailed description of their invention to the technology transfer office, outlining its features, benefits, and potential applications.
- Patentability assessment: The technology transfer office evaluates the invention’s novelty, non-obviousness, and usefulness to determine if it meets the criteria for patentability.
- Prior art search: A search is conducted to identify any existing patents, publications, or other materials that may be relevant to the invention and its patentability.
- Patent application preparation: A patent attorney or agent, in collaboration with the inventor(s) and technology transfer office, prepares a patent application that includes a detailed description of the invention, drawings (if necessary), and claims that define the scope of the invention’s protection.
- Patent application filing: The patent application is filed with the appropriate patent office (e.g., the United States Patent and Trademark Office (USPTO) for U.S. patents).
- Patent examination: A patent examiner reviews the application to determine if the invention meets the patentability criteria and if the application complies with all legal and formal requirements.
- Office actions and responses: During the examination process, the patent examiner may issue “office actions” that raise objections or require clarification. The patent attorney or agent, in collaboration with the inventor(s) and technology transfer office, responds to these office actions to address the examiner’s concerns and provide any necessary amendments to the application.
- Patent issuance: If the patent examiner is satisfied that the invention is patentable and all requirements have been met, the patent is granted. The issued patent provides the inventor(s) and their assignee (usually the institution) with exclusive rights to the invention for a certain period, typically 20 years from the filing date.
- Patent maintenance: After the patent is granted, periodic maintenance fees must be paid to keep the patent in force. The technology transfer office typically manages the payment of these fees.
The full patent process commonly takes three to five years from application submission to patent issue by USPTO. During this time, BioVentures licensing associates coordinate with outside patent counsel and the inventors and respond to official communications from the USPTO to determine the scope of eventual patent rights.
BioVentures, as the technology transfer office for the University of Arkansas for Medical Sciences (UAMS), protects intellectual property through patenting to achieve several important objectives:
- Commercialization and Economic Benefit: By obtaining patents, BioVentures aims to facilitate the commercialization of UAMS inventions. Patents provide legal protection, granting exclusive rights to the inventors and UAMS, which can be licensed to companies or industry partners for further development, manufacturing, and commercialization. This process promotes the translation of UAMS discoveries into products, therapies, or services that benefit society and generate economic value.
- Attracting Industry Partners and Investment: Patents signal the novelty, inventiveness, and potential market advantage of UAMS inventions. By securing patent protection, BioVentures enhances the attractiveness of these technologies to industry partners, investors, and potential licensees. Companies are more likely to engage in collaborations or licensing agreements when they have confidence that the intellectual property is adequately protected.
- Intellectual Property Management: Patents enable effective management and control of UAMS intellectual property. They provide a legally recognized framework for defining and enforcing ownership rights. Patents also serve as a deterrent to potential infringers and help ensure that UAMS retains control over the commercialization of its inventions.
- Technology Transfer and Knowledge Exchange: Patents play a vital role in facilitating technology transfer and knowledge exchange between UAMS and external entities. Patents provide a means to document and disclose the technical details of UAMS inventions, making them accessible to the wider scientific and business communities. This promotes collaboration, fosters innovation, and encourages further research and development in related fields.
- Research Funding and Academic Reputation: Patents can contribute to the acquisition of research funding by demonstrating the inventiveness and potential impact of UAMS discoveries. They also enhance UAMS’s reputation as a leading research institution by showcasing its innovative contributions to scientific and medical fields. This recognition can attract further funding opportunities, foster collaborations, and strengthen UAMS’s position in the academic and research landscape.
Overall, patenting intellectual property through BioVentures allows UAMS to protect and leverage its inventions, promoting commercialization, attracting industry partnerships, and contributing to the advancement of science, healthcare, and the local and global economy.
In the context of BioVentures, the decision regarding which technologies or inventions should be protected through patents is typically made through a collaborative evaluation process involving various stakeholders, including the inventors, BioVentures’ technology transfer professionals, and the Patent and Copyright Committee. Here’s an overview of the decision-making process:
- Inventor’s Input: The inventors play a vital role in providing detailed information about their technology, its potential applications, and any supporting data or prototypes. They communicate their understanding of the novelty, inventiveness, and commercial potential of the invention.
- Evaluation by BioVentures: The BioVentures team, which includes technology transfer professionals with expertise in intellectual property and commercialization, conducts an initial evaluation of the invention. This evaluation considers factors such as market potential, patentability, potential competitors, and the overall commercial viability of the technology.
- Patent and Copyright Committee Involvement: The Patent and Copyright Committee, comprising experts in healthcare fields and intellectual property, plays a crucial role in the decision-making process. They review the invention and assess its patentability, novelty, and potential impact in the healthcare or related industries.
- Committee Decision: Based on the input and evaluations from the inventors, BioVentures team, and the Patent and Copyright Committee, a decision is reached regarding which technologies should be pursued for patent protection. The committee’s expertise helps ensure a comprehensive and informed assessment of the invention’s patentability and potential commercial value.
It’s important to note that the decision-making process for patent protection may also consider other factors such as market demand, financial feasibility, the availability of resources for patent prosecution and maintenance, and alignment with the strategic goals of UAMS and BioVentures. Ultimately, the decision regarding patent protection is a collaborative effort involving the inventors, BioVentures’ technology transfer professionals, and the Patent and Copyright Committee. This multi-disciplinary approach ensures a comprehensive evaluation and increases the likelihood of protecting inventions with strong commercial potential and significant impact in the healthcare field.
The cost of filing for and obtaining a patent can vary widely depending on several factors, including the complexity of the invention, the jurisdiction(s) in which the patent is filed, the patent attorney or agent fees, and any additional costs associated with the examination process. Here are some common costs associated with obtaining a patent:
- Patent Attorney or Agent Fees: These fees can vary depending on the complexity of the invention and the experience of the attorney or agent. The cost for preparing and filing a patent application can range from a few thousand dollars to tens of thousands of dollars.
- Filing Fees: Patent offices charge fees for filing patent applications, which can vary depending on the jurisdiction and the type of applicant (e.g., small entity, large entity, or micro-entity). In the United States, for example, the basic filing fees for a utility patent application can range from a few hundred dollars to over a thousand dollars, depending on the applicant’s entity status.
- Examination Fees: These fees are charged by patent offices to cover the cost of examining the patent application. In the United States, examination fees range from a few hundred dollars to over a thousand dollars, depending on the applicant’s entity status.
- Prosecution Costs: During the examination process, additional costs may arise for responding to office actions, amending claims, or addressing other issues raised by the patent examiner. These costs can include attorney or agent fees and additional fees charged by the patent office.
- Patent Issuance Fees: Once the patent is granted, a fee is typically charged by the patent office to issue the patent. In the United States, issuance fees can range from a few hundred dollars to over a thousand dollars, depending on the applicant’s entity status.
- Maintenance Fees: After the patent is granted, periodic maintenance fees must be paid to keep the patent in force. These fees typically increase over time and can range from a few hundred dollars to several thousand dollars, depending on the jurisdiction and the applicant’s entity status.
- International Filing Costs: If you are seeking patent protection in multiple countries, the costs can increase significantly. Each country has its own set of filing fees, and additional attorney or agent fees may be required for managing the application process in each jurisdiction.
In summary, the total cost of filing for and obtaining a patent can range from several thousand dollars to tens of thousands of dollars or more, depending on various factors. It is important to consult with a patent attorney or agent to get a better understanding of the specific costs associated with your particular invention and filing strategy.
If you have created an invention jointly with someone from another institution or company, it is essential to involve BioVentures, the tech transfer office of UAMS, in the process of protecting and commercializing the invention. Here’s what you should consider:
- Collaboration Agreement: When inventions are created jointly, it is crucial to have a collaboration agreement or similar legal document in place that outlines the rights and responsibilities of each party involved. This agreement should address intellectual property ownership, patent filings, commercialization plans, and any potential revenue-sharing arrangements. BioVentures can provide guidance and support in developing such agreements to ensure clarity and protect the interests of all parties involved.
- Intellectual Property Ownership: The ownership of intellectual property in joint inventions can be complex and may depend on various factors, including the specific collaboration agreement and the laws governing intellectual property in the relevant jurisdiction. BioVentures can help navigate this process and determine the appropriate ownership structure based on the specific circumstances and applicable laws.
- Technology Transfer and Licensing: In cases where joint inventions are created, BioVentures will work with you and the other institution or company involved to establish a collaborative technology transfer and licensing strategy. This strategy will aim to secure the necessary intellectual property protection and determine the best approach for commercialization and licensing of the joint invention. BioVentures will negotiate agreements with external parties, considering the interests of all collaborators and facilitating the transfer of technology to the marketplace.
- Revenue Sharing and Royalties: If the joint invention generates revenue through licensing or other commercialization activities, BioVentures, in collaboration with the other institution or company, will establish a revenue-sharing mechanism or royalty arrangement. This ensures that all parties involved in the creation of the invention receive their fair share of the financial benefits.
- Collaboration and Communication: Effective collaboration and communication between BioVentures, UAMS, and the collaborating institution or company are crucial throughout the tech transfer process. Open and transparent discussions among all parties will help address any potential issues, align interests, and ensure a smooth and successful commercialization of the joint invention.
By involving BioVentures in the management of jointly created inventions, you can leverage their expertise and experience in technology transfer, intellectual property, and licensing to navigate the complexities of protecting and commercializing the invention in a collaborative and mutually beneficial manner.
BioVentures and the patent and copyright committee consider various factors, including the return on investment, market expectations, and the ability to find a licensee when deciding whether to initiate or continue patenting activity. While the presence of an identified licensee can enhance the commercialization prospects of a patent, BioVentures may still initiate or continue patenting activity even without an identified licensee. Here are a few key points to consider:
- Market Potential: BioVentures evaluates the market potential and commercial viability of an invention when determining whether to proceed with patenting. If the invention demonstrates strong market potential, even in the absence of a specific licensee, BioVentures may still pursue patenting to protect the intellectual property and maximize its value.
- Licensing Opportunities: Although having an identified licensee can be advantageous, BioVentures recognizes that licensing opportunities may arise after the patent has been filed or granted. By securing patent protection, BioVentures enhances the attractiveness of the technology to potential licensees, enabling them to engage in licensing discussions and negotiations at a later stage.
- Future Commercialization Prospects: Patent protection provides a valuable asset that can be leveraged in the future. It enhances the technology’s market position, provides exclusivity, and enables BioVentures to actively pursue licensing opportunities or collaborations. Patents can attract potential investors, partners, or licensees who may be interested in further developing and commercializing the invention.
- Case-by-Case Evaluation: Each invention and its commercialization prospects are evaluated on a case-by-case basis. BioVentures considers a range of factors, including the invention’s market potential, patentability, and competitive landscape. These factors, along with the availability of resources, budget constraints, and strategic priorities, influence the decision to initiate or continue patenting activity.
In summary, while an identified licensee can positively impact the decision-making process, BioVentures may still initiate or continue patenting activity in the absence of a licensee. The decision is based on a comprehensive evaluation of various factors, including market potential, future commercialization prospects, and the strategic goals of maximizing the value and impact of UAMS inventions.
Other Forms of IP Protection
A copyright is a form of legal protection given to the creators of original works, such as music, literature, art, and software. It allows the creators to control how their works are used and reproduced and grants them the exclusive right to profit from those works. Copyrights are useful because they provide a financial incentive for creators to continue producing new and innovative works and they help prevent unauthorized use or reproduction of those works.
A trademark or service mark is a unique and distinctive symbol, word, or phrase used to identify and distinguish a product or service from those of other businesses. Trademarks and service marks are useful in protecting a company’s brand and reputation by ensuring that only authorized products and services can be marketed and sold under that company’s name. They also help consumers identify and differentiate products and services in the marketplace.
Trademark registration is the process of legally registering a brand or logo as a trademark with the appropriate government agency. This process helps protect a company’s intellectual property and ensures that others cannot use the same or similar trademark without permission. Trademark registration also allows a company to take legal action against anyone who infringes upon their trademark rights.
Commercialization
During the commercialization process, various activities take place to transform an invention into a marketable product or service. These activities may include:
- Intellectual Property Protection: Securing patents, trademarks, copyrights, or other forms of IP protection to safeguard the invention.
- Market Research and Analysis: Identifying target markets, potential applications, and understanding the competitive landscape.
- Licensing: Negotiating and executing licensing agreements with partners or companies interested in developing and marketing the invention.
- Product Development: Refining, testing, and optimizing the technology or product to meet market requirements and regulatory standards.
- Manufacturing: Establishing manufacturing processes, scaling up production, and ensuring quality control.
- Marketing and Sales: Promoting the product, creating marketing materials, and establishing distribution channels to reach target customers.
- Regulatory Approvals: Obtaining any necessary regulatory approvals or certifications for the product or technology.
- Fundraising and Financing: Securing funding through investors, grants, or other sources to support the commercialization process.
As an inventor, your role during commercialization may include:
- Providing technical expertise and guidance throughout the product development process.
- Collaborating with the technology transfer office, such as BioVentures, to secure IP protection, identify potential partners, and develop marketing strategies.
- Assisting with licensing negotiations and due diligence by providing information about the invention and its development.
- Supporting the licensee or start-up company by participating in meetings, presentations, or other events to promote the technology.
- Keeping up-to-date with developments in your field to identify new opportunities and potential applications for your technology.
BioVentures markets inventions by:
- Identifying potential industry partners and licensees through targeted outreach and market research.
- Promoting the technology at industry events, conferences, and trade shows.
- Leveraging their network of contacts within the industry and investment community.
- Showcasing the technology on their website, through marketing materials, and via social media.
- Collaborating with the inventor(s) to develop marketing strategies and materials that effectively communicate the benefits and potential applications of the technology.
As an inventor, you can assist in marketing your invention by:
- Collaborating with BioVentures to develop a compelling marketing strategy and materials.
- Actively participating in industry events, conferences, and trade shows to present and promote your technology.
- Leveraging your professional network to identify potential partners, licensees, or investors.
- Engaging with potential licensees to provide technical expertise and support.
- Staying informed about developments in your field to identify new opportunities and potential applications for your technology.
If commercialization is successful, BioVentures may generate revenues through various streams, including:
- Licensing Fees: Upfront fees paid by a licensee to secure the rights to develop and commercialize the invention.
- Royalties: Ongoing payments based on a percentage of the licensee’s sales or profits generated from the commercialized technology.
- Milestone Payments: Payments made by the licensee upon achieving specific development or commercialization milestones.
- Equity: Ownership stake in a start-up company that may increase in value as the company grows and succeeds.
These revenues are typically shared between the institution, BioVentures, and the inventor(s) according to a pre-determined revenue-sharing agreement.
If a start-up company or licensee is unsuccessful in commercializing your invention, the licensing agreement may be terminated, and the rights to the invention may revert to BioVentures. In this case, efforts can be made to find a new licensee or explore alternative commercialization strategies. The invention may be licensed to another entity, provided that any previous licensing agreements have been properly terminated and the technology’s IP rights are still valid and enforceable.
License Agreements
A license is a legal agreement that allows someone to use a product or service under certain conditions. There are many different types of licenses, and they are often used in the context of software, music, and other creative works. A license typically specifies how the product or service can be used, how many copies can be made, and whether the user is allowed to modify or distribute the product or service. Some licenses also place restrictions on the use of the product or service, such as prohibiting commercial use or requiring that the user attribute the work to the original creator.
Our most common license is an exclusive license agreement. An exclusive license is a type of license that grants the licensee the exclusive right to use a product or service within a certain territory or for a certain period. This means that the licensee is the only person or entity allowed to use the product or service within the specified territory or period, and no one else can use it without the licensee’s permission.
The process of choosing a business to be a licensee involves a careful evaluation and selection process to ensure a mutually beneficial partnership. While the specific steps may vary depending on the circumstances and the technology being licensed, here are some general considerations:
- Market Alignment: The licensee should have a strong presence and expertise in the relevant market or industry that aligns with the technology being licensed. A thorough assessment of the licensee’s capabilities, resources, and track record in the specific market segment is crucial to determine their ability to successfully commercialize the technology.
- Technical and Operational Capacity: The licensee should have the technical capabilities and operational infrastructure necessary to develop, manufacture, and bring the technology to market. Evaluating their existing research and development capabilities, manufacturing capacity, quality control processes, and regulatory compliance history is essential.
- Financial Stability: Assessing the financial stability and resources of the potential licensee is important to ensure they have the financial means to invest in the development, marketing, and distribution of the licensed technology. This includes reviewing their financial statements, funding sources, and previous successful commercialization efforts.
- Track Record and Experience: Consider the licensee’s previous experience in successfully commercializing similar technologies or products. Their track record in licensing agreements, product launches, and market penetration can provide insights into their ability to effectively bring the licensed technology to market.
- Business Plan and Commercialization Strategy: Evaluate the licensee’s business plan and commercialization strategy for the licensed technology. This includes assessing their marketing approach, distribution channels, pricing strategy, and competitive positioning. A well-defined and realistic plan demonstrates the licensee’s commitment and understanding of the market dynamics.
- Intellectual Property Management: Consider the licensee’s approach to intellectual property management and their willingness to protect and enforce the licensed technology’s intellectual property rights. This includes reviewing their history of respecting intellectual property rights and their strategies for patenting, trademarking, or protecting the licensed technology.
- Compatibility and Collaboration: Assess the potential licensee’s compatibility with your organization’s goals and values. It is important to establish a positive and collaborative working relationship with the licensee to ensure effective communication, cooperation, and alignment throughout the licensing process.
The selection of a licensee is a crucial decision that requires careful evaluation and consideration of various factors. BioVentures, as the technology transfer office, plays a pivotal role in facilitating this process by conducting due diligence, negotiations, and ultimately making the decision in collaboration with the inventors and relevant stakeholders. The goal is to identify a licensee who possesses the necessary capabilities, resources, and market presence to maximize the commercialization potential of the licensed technology.
Licensing your intellectual property (IP) can offer several potential benefits depending on the specific terms of the licensing agreement and the success of the licensed technology in the market. Here are some common advantages you can expect to gain if your IP is licensed:
- Financial Returns: Licensing agreements typically involve financial considerations such as upfront payments, milestone payments, ongoing royalties, or a combination of these. These financial gains can provide a direct return on your invention and can be a significant source of revenue, especially if the licensed technology achieves commercial success.
- Market Reach and Commercialization: By licensing your IP, you can leverage the resources and expertise of the licensee to reach a broader market. The licensee may have an established distribution network, manufacturing capabilities, and marketing expertise that can expedite the commercialization of your technology. This allows you to tap into their existing market presence and customer base, increasing the potential for widespread adoption of your invention.
- Technology Development and Scale-Up: Licensees often invest in further development, optimization, and scaling up of the licensed technology. This can accelerate the advancement of your invention, leading to enhancements, improvements, or new applications that may not have been feasible without the licensee’s resources and expertise. The licensee’s efforts can contribute to the growth and evolution of your technology.
- Market Expertise and Industry Knowledge: Licensees often have extensive industry experience and market knowledge. By partnering with a licensee, you can benefit from their insights, market research, and understanding of customer needs. This collaboration can help refine your technology, tailor it to market demands, and increase its chances of success.
- Reduced Business Risks: Licensing your IP to a capable and committed licensee can help mitigate some of the risks associated with technology commercialization. The licensee assumes responsibilities such as product development, manufacturing, regulatory compliance, and marketing, reducing the burden on you as the inventor. This allows you to focus on further innovation or other pursuits while sharing the risks and workload with the licensee.
- Validation and Credibility: When a reputable company or industry leader licenses your IP, it validates the novelty, potential, and market value of your invention. This association can enhance your reputation as an inventor and attract further opportunities, collaborations, or investments. It adds credibility and validation to your work and can open doors to new partnerships and ventures.
It is important to note that the specific benefits you can expect from licensing your IP may vary depending on the nature of your invention, the market conditions, the licensing agreement terms, and the success of the commercialization efforts. Working closely with BioVentures or a technology transfer office can help maximize the potential benefits and ensure a successful licensing outcome for your IP.
The time it takes to find a potential licensee can vary greatly depending on factors such as the technology’s stage of development, the market demand, and the level of competition. It can take anywhere from several months to several years to identify and secure a suitable licensee.
Yes, there can be more than one licensee for a technology. In some cases, a technology may be licensed to multiple parties, either for different applications, different geographical regions, or under different terms and conditions. This approach, known as non-exclusive licensing, can help maximize the commercial potential and impact of the technology. However, the specific licensing strategy will depend on factors such as the technology’s market potential, competitive landscape, and the preferences of the inventor and the technology transfer office.
The relationship between an inventor and a licensee is a collaborative partnership based on the licensing agreement. Here are some key aspects of the inventor-licensee relationship:
- Technology Transfer: As the inventor, you transfer the rights to your intellectual property (IP) to the licensee through the licensing agreement. The licensee gains the rights to develop, manufacture, market, and potentially sublicense your technology.
- Communication and Collaboration: Effective communication and collaboration are essential for a successful inventor-licensee relationship. You will engage with the licensee to provide technical expertise, guidance, and support related to the technology. This collaboration can involve sharing knowledge, addressing technical inquiries, and working together to address challenges or refine the technology.
- Milestone Reporting: Depending on the terms of the licensing agreement, you may be required to provide milestone reports to the licensee. These reports update the licensee on the progress of your research or development, demonstrate milestones achieved, and highlight any advancements or improvements made to the technology.
- Technical Support: The licensee may require your technical support during the technology transfer and early stages of commercialization. This can involve assisting with technology transfer activities, training the licensee’s team on the technology, or participating in joint development efforts. The level of technical support required will vary depending on the complexity of the technology and the capabilities of the licensee.
- Contractual Obligations: The licensing agreement defines the rights and responsibilities of both parties. It may specify obligations related to confidentiality, reporting, quality control, IP protection, and compliance with regulatory requirements. As the inventor, you are expected to comply with these contractual obligations to ensure a smooth and mutually beneficial partnership.
Regarding the time commitment required, it can vary depending on various factors such as the complexity of the technology, the stage of commercialization, and the level of involvement specified in the licensing agreement. Initially, more time may be required for technology transfer, initial training, and establishing a collaborative relationship. As the technology progresses, the time commitment may decrease, but periodic communication and updates with the licensee are still necessary.
The specific time commitment will depend on your availability, the needs of the licensee, and the ongoing collaboration required. It is important to have a clear understanding of the expectations and time commitments outlined in the licensing agreement and to maintain open communication with the licensee to ensure a successful and mutually beneficial relationship while balancing your other commitments and responsibilities.
Revenue Distributions
License revenues are typically distributed according to a pre-determined revenue-sharing agreement between the institution, technology transfer office (such as BioVentures), and the inventor(s). Here is a general outline of how license revenues are distributed:
- Institution’s Share: A portion of the license revenues is allocated to the institution (UAMS) to support its research and innovation activities. This share may be used to fund further research, infrastructure development, or other initiatives that benefit the institution as a whole.
- BioVentures’ Share: A portion of the license revenues is allocated to BioVentures to support its operations, including technology transfer activities, patenting, commercialization efforts, and administrative costs. This share helps sustain the technology transfer office’s activities and enables it to continue supporting inventors and commercializing UAMS technologies.
- Inventor’s Share: A portion of the license revenues is distributed to the inventor(s) as recognition of their contribution to the invention. This share provides financial rewards to the inventors and encourages further innovation and collaboration. The specific distribution percentages and terms are typically outlined in the institution’s intellectual property policy or the revenue-sharing agreement.
The exact distribution percentages and terms may vary depending on the institution’s policies, the nature of the invention, and the licensing agreement. It is important to review the institution’s intellectual property policy and consult with BioVentures to understand the specific revenue-sharing arrangements for your invention.
Our most common license is an exclusive license agreement. An exclusive license is a type of license that grants the licensee the exclusive right to use a product or service within a certain territory or for a certain period. This means that the licensee is the only person or entity allowed to use the product or service within the specified territory or period, and no one else can use it without the licensee’s permission.
Considerations for a Start-Up Company
A start-up is a newly established company typically focused on developing and commercializing innovative products, services, or technologies. Start-ups are often founded by entrepreneurs, researchers, or inventors who believe that their ideas have significant commercial potential. Creating a start-up can offer several advantages, including:
- Greater control over the development and direction of the technology or product.
- The potential for higher financial returns if the start-up is successful.
- Opportunities for collaboration with industry partners and investors.
- The ability to attract and retain talent with specialized expertise in the technology or market.
- Institution’s Share: A portion of the license revenues is allocated to the institution (UAMS) to support its research and innovation activities. This share may be used to fund further research, infrastructure development, or other initiatives that benefit the institution as a whole.
- BioVentures’ Share: A portion of the license revenues is allocated to BioVentures to support its operations, including technology transfer activities, patenting, commercialization efforts, and administrative costs. This share helps sustain the technology transfer office’s activities and enables it to continue supporting inventors and commercializing UAMS technologies.
- Inventor’s Share: A portion of the license revenues is distributed to the inventor(s) as recognition of their contribution to the invention. This share provides financial rewards to the inventors and encourages further innovation and collaboration. The specific distribution percentages and terms are typically outlined in the institution’s intellectual property policy or the revenue-sharing agreement.
The exact distribution percentages and terms may vary depending on the institution’s policies, the nature of the invention, and the licensing agreement. It is important to review the institution’s intellectual property policy and consult with BioVentures to understand the specific revenue-sharing arrangements for your invention.
Our most common license is an exclusive license agreement. An exclusive license is a type of license that grants the licensee the exclusive right to use a product or service within a certain territory or for a certain period. This means that the licensee is the only person or entity allowed to use the product or service within the specified territory or period, and no one else can use it without the licensee’s permission.
The decision to form a start-up is typically made by the inventor(s) in consultation with the technology transfer office, such as BioVentures, and other stakeholders. Factors that may influence this decision include the commercial potential of the technology, the inventor’s interest and capability to participate in the start-up, and the availability of resources such as funding and support to launch the company.
Research Considerations and Material Transfer Agreements
Yes, you can publish the results of your research while still protecting the commercial value of your intellectual property. It is essential to submit an Invention Disclosure and work with BioVentures before publicly disclosing your invention. We can help you initiate the process of securing IP protection, such as filing a provisional patent application prior to your publication.
Yes, you may use material or intellectual property from others in your research provided that you obtain the necessary permissions and abide by any terms and conditions associated with their use. This may involve entering into a Material Transfer Agreement (MTA) or a licensing agreement to ensure compliance with the IP owner’s requirements.
Yes, you can share material research tools or intellectual property with others to advance their research as long as you follow the proper procedures and guidelines. This may involve executing an MTA or a licensing agreement, which outlines the terms and conditions for sharing these resources. Consult with BioVentures to ensure compliance with any applicable policies and agreements.
The rights of a research sponsor to any discoveries resulting from your research depend on the terms and conditions specified in the research sponsorship or funding agreement. These agreements may grant the sponsor certain rights to the intellectual property, such as an option to license or a share in revenue. It is essential to review the terms of your research sponsorship agreement and consult with BioVentures for clarification. All research sponsorship agreements will be handled through the UAMS Office of Research and Sponsored Programs as well as BioVentures when appropriate.
When engaging in consulting activities, it is important to be aware of any potential conflicts with UAMS employment and intellectual property policies. Consulting agreements may include provisions related to the ownership of intellectual property created during the consulting relationship. All consulting agreements must be disclosed with the UAMS Academic Conflict of Interest Office.
Navigating Conflict of Interest
Please visit here to learn the most up-to-date definitions and submit your conflict of interest to UAMS. Please visit here for clear UAMS definitions of questions and answers. BioVentures defines a conflict of interest as a situation in which an individual’s personal, professional, or financial interests could potentially compromise, bias, or influence their objectivity, decision-making, or actions related to their responsibilities and obligations within the scope of their involvement with BioVentures or UAMS. Conflicts of interest can arise in various contexts, including but not limited to the following:
- Financial Interests: Financial conflicts of interest occur when individuals have a personal financial stake or interest that could be affected by their decisions or actions related to their involvement with BioVentures. This can include equity ownership, royalties, consulting fees, or any financial relationship that may create bias or compromise their objectivity.
- Intellectual Property Interests: Conflicts of interest can arise when individuals have a personal stake in the intellectual property being evaluated, transferred, or commercialized by BioVentures. This can include holding a significant ownership interest, inventorship, or any other intellectual property-related involvement that could influence their decision-making.
- Personal Relationships: Conflicts of interest can also arise from personal relationships that could influence or compromise an individual’s impartiality or objectivity. This can include relationships with collaborators, colleagues, family members, or any other connection that may impair decision-making or create the perception of bias.
- Dual Roles and Responsibilities: Conflicts of interest can emerge when individuals hold multiple roles or responsibilities that may create divided loyalties or competing obligations. This can include situations where an individual’s involvement with BioVentures conflicts with their role as an employee, consultant, or advisor to another organization or entity.
BioVentures emphasizes the importance of identifying and managing conflicts of interest appropriately to maintain the integrity, transparency, and impartiality of its activities. Measures are in place to ensure that conflicts of interest are disclosed, evaluated, and managed in accordance with relevant policies, regulations, and ethical guidelines. These measures may include disclosure requirements, review processes, recusal from decision-making, or other appropriate actions to mitigate or eliminate the conflicts of interest.
By effectively identifying and addressing conflicts of interest, BioVentures aims to promote ethical conduct, maintain public trust, and ensure that its activities are conducted in the best interest of UAMS, its inventors, and the broader community.
Please visit here to learn the most up-to-date definitions and submit your conflict of interest to UAMS. Please visit here for clear UAMS definitions of questions and answers. BioVentures defines a conflict of interest as a situation in which an individual’s personal, professional, or financial interests could potentially compromise, bias, or influence their objectivity, decision-making, or actions related to their responsibilities and obligations within the scope of their involvement with BioVentures or UAMS. Conflicts of interest can arise in various contexts, including but not limited to the following:
- Financial Interests: Financial conflicts of interest occur when individuals have a personal financial stake or interest that could be affected by their decisions or actions related to their involvement with BioVentures. This can include equity ownership, royalties, consulting fees, or any financial relationship that may create bias or compromise their objectivity.
- Intellectual Property Interests: Conflicts of interest can arise when individuals have a personal stake in the intellectual property being evaluated, transferred, or commercialized by BioVentures. This can include holding a significant ownership interest, inventorship, or any other intellectual property-related involvement that could influence their decision-making.
- Personal Relationships: Conflicts of interest can also arise from personal relationships that could influence or compromise an individual’s impartiality or objectivity. This can include relationships with collaborators, colleagues, family members, or any other connection that may impair decision-making or create the perception of bias.
- Dual Roles and Responsibilities: Conflicts of interest can emerge when individuals hold multiple roles or responsibilities that may create divided loyalties or competing obligations. This can include situations where an individual’s involvement with BioVentures conflicts with their role as an employee, consultant, or advisor to another organization or entity.
BioVentures emphasizes the importance of identifying and managing conflicts of interest appropriately to maintain the integrity, transparency, and impartiality of its activities. Measures are in place to ensure that conflicts of interest are disclosed, evaluated, and managed in accordance with relevant policies, regulations, and ethical guidelines. These measures may include disclosure requirements, review processes, recusal from decision-making, or other appropriate actions to mitigate or eliminate the conflicts of interest.
By effectively identifying and addressing conflicts of interest, BioVentures aims to promote ethical conduct, maintain public trust, and ensure that its activities are conducted in the best interest of UAMS, its inventors, and the broader community.
Please visit here to learn the most up-to-date definitions and submit your conflict of interest to UAMS. Please visit here for clear UAMS definitions of questions and answers. Conflict of interest reviewers are concerned with identifying and addressing situations that have the potential to create conflicts of interest. Here are some common issues that concern conflict of interest reviewers:
- Financial Interests: Reviewers closely examine financial interests that individuals involved with BioVentures or UAMS may have. This includes ownership stakes in companies, equity holdings, stock options, consulting fees, royalties, or any other financial relationships that could create conflicts of interest.
- Intellectual Property: Conflict of interest reviewers are attentive to any intellectual property interests that may pose conflicts. This includes situations where individuals involved with BioVentures hold patents, copyrights, or other intellectual property rights that could intersect with their responsibilities, decision-making, or commercialization efforts.
- Relationships and Affiliations: Reviewers pay attention to personal relationships, affiliations, or connections that could create conflicts of interest. This includes relationships with collaborators, family members, colleagues, or individuals with whom there may be personal, professional, or financial ties that could impact impartiality, objectivity, or decision-making.
- Dual Roles and Responsibilities: Conflict of interest reviewers assess potential conflicts that may arise from individuals holding multiple roles or responsibilities. This includes situations where individuals involved with BioVentures also have affiliations, employment, or advisory positions with other organizations or entities that could give rise to divided loyalties or competing obligations.
- Funding Sources and Grants: Conflict of interest reviewers consider funding sources and grants that individuals involved with BioVentures or UAMS receive. They examine whether the funding sources could potentially influence decision-making or create conflicts of interest in the context of the activities being performed.
- Policies and Regulatory Compliance: Reviewers ensure that individuals comply with relevant policies, regulations, and guidelines related to conflicts of interest. They focus on adherence to disclosure requirements, reporting obligations, and the proper management and mitigation of conflicts as per the established protocols.
- Impartiality and Objectivity: Conflict of interest reviewers are concerned with upholding impartiality, objectivity, and the avoidance of biases in decision-making processes. They carefully evaluate situations to determine whether there are any factors that could compromise the fairness, integrity, or transparency of the decision-making process.
By addressing these issues, conflict of interest reviewers strive to identify, assess, and mitigate conflicts of interest effectively. Their goal is to uphold the highest standards of ethics, transparency, and integrity in the activities of BioVentures and UAMS.