Technology Transfer Process
Research - Protecting Your Inventions
Researcher Notebook Guidelines
Your success in obtaining a patent depends not only on the originality and utility of the invention, but also on how carefully you have kept a research notebook. In the US, being able to prove when you made an invention may be vital to getting a patent, and it is important to know that patent claims are regularly challenged by competitors. In such situations, inventors may have to present their notebooks for inspection.
All Drexel researchers, staff and students should take a few common-sense steps to protect themselves and their work. These practices not only help to back up patent claims, but also ensure against loss of valuable data, provide proof of fulfillment of contracts, and protect against allegations of conflict of interest or research fraud.
Unless done on a confidential basis, telling another party the details of your research may cost you patent rights. Such "public disclosure" can occur quite inadvertently when company executives or other researchers visit your lab or meet with you at conferences or other venues. Signing a written agreement prior to these meetings will document the intention of the parties to maintain the confidentiality of the information you provide to them. This can be achieved through a Confidential Disclosure Agreement (CDA) between you and the other party. Such agreements are commonplace when working with industry partners, but are relatively uncommon when speaking with colleagues from other universities. In the latter case, filing for patent protection before making such a disclosure preserves patent rights.
If you receive a company's CDA for signature, you should be aware that signing such an agreement can have broad impact on your work. Moreover, it can inhibit your ability to discuss or publish your work. As such, it is important to ensure that the terms are reasonable, and that you have a clear understanding of their implications.
Whether you wish to disclose unpublished information to another party, or receive information from them under the auspices of a CDA, please contact Drexel Applied Innovation to arrange the contract between you and the other party.
Materials Transfer Agreements
Materials transfer agreements (MTAs) are agreements between you, another researcher, and your respective institutions. An MTA allows you to share your tangible research materials, such as a cell line, an animal model, a chemical compound or a polymer, with another researcher purely for research purposes, while protecting your rights to the materials. You should always have an MTA in place before sending your research materials to someone outside your laboratory.
Timing: Disclosures and Publications
It is Drexel’s goal to see broad publication and dissemination of the results of your research, yet the very publication of those results can have a negative impact on your ability to patent new inventions. As a result, it can be difficult to maintain balance between publication and protection. This can be most easily managed by submitting your invention disclosures as early as possible, preferably before any public discussion of the technology, so that we can help you to obtain the maximum benefit from U.S. and international patent laws.
Public Disclosure More Than One Year Before Filing a U.S. Patent Application
If you fail to file a patent application within one year of disclosing your invention publicly, all possibilities of obtaining a patent are lost, both in the U.S. and in foreign countries.
Public Disclosure Less Than One Year Before Filing a U.S. Patent Application
The United States offers a one-year grace period from the time of public disclosure to the filing of a patent application. Thus, if you have already made a public disclosure of your invention but less than a year has passed since the date of the first disclosure, Drexel Applied Innovation should still be able to prepare a high-quality patent application on your work. Recent changes to U.S. patent laws will impact the scope of rights that we can obtain, so it is very important to get in touch with Drexel Applied Innovation as soon after the disclosure occurs as possible so that maximum patent protection can be obtained.
Please Note: There is no one-year grace period for filing foreign patents. ALL foreign patent opportunities for an invention are lost if ANY disclosure of that invention occurs prior to the filing of a patent application. For certain technologies, this can be a major loss, since foreign markets may account for 50 to 70 percent of the income value of a technology.
No Public Disclosure Prior to Filing a U.S. Patent Application
This is the best possible case. If the technology is patentable, U.S. and foreign patent rights may be obtained. Please note that if your research is supported in whole or in part by federal funding, you likely have an obligation to make a disclosure of the technology to Drexel Applied Innovation prior to any public disclosures.
Drexel Applied Innovation needs some lead-time to evaluate an invention disclosure and, draft a patent application. A total of three months is preferred, although accelerated handling is possible in some circumstances. Therefore, you should submit an invention disclosure to Drexel Applied Innovation at the same time you are preparing a manuscript for submission to a journal or are planning a poster session or public seminar. This also applies to dissertations being readied for submission to the library, abstracts and other disclosures that are not typically considered "publications" for academic purposes. Please note that publications are not restricted to traditional journal articles, talks at meetings or poster presentations. Making results available to people who are not members of the Drexel community in any form (print, audio, video, web) may constitute a public disclosure and compromise patent rights. These disclosure rules apply only to patents. Different rules apply to copyrights, biological materials and other intellectual property. Please give your licensing manager a call if you have any questions.
Disclosing to Drexel Applied Innovation
The first step in disclosing your discovery -- whether it is a patentable invention, technique and know-how, a tangible research material, or another form of intellectual property -- is to fill out an Invention Disclosure Form (IDF). It may be downloaded and submitted to Drexel Applied Innovation electronically, or printed and sent through interoffice or U.S. mail.
After receiving your form, a licensing manager will contact you to set up a meeting to discuss your invention (see below for a description of this meeting).
Important note: If you anticipate publicly disclosing your invention in less than three months time or face other urgent circumstances, please contact a Drexel Applied Innovation as soon as possible.
Invention Disclosure Form (IDF)
The IDF asks you to provide information on the discovery, pre-existing technologies of which you are aware, any pending or already-published articles on your new technology and potential partners who can bring the technology to market. This information is used by Drexel Applied Innovation to review funding sources and obligations for notification requirements and other rights. It also aids Drexel Applied Innovation in determining whether the invention will meet the Patent Office's criteria for patenting, or whether the invention can be protected by a means other than patenting or copyright. It is important to have this information on record as early as possible, in case a patent is obtained and later challenged. Further, it assists Drexel Applied Innovation in its evaluation of the invention and its potential for being developed in the marketplace.
Invention Disclosure Tips
Under the federal Bayh-Dole Act (1980), any invention arising from federally funded research conducted on behalf of Drexel University MUST be disclosed to Drexel Applied Innovation by the inventor(s). The University’s Patent Policy and Copyright Policy supplement the Bayh-Dole Act, and define the rights and obligations of innovators here at Drexel. These policies indicate that University personnel and students are required to disclose inventions to Drexel Applied Innovation as soon as is reasonably practicable following the creation or reduction to practice of the invention.
Every year, Drexel Applied Innovation reviews over 100 invention disclosure forms submitted by Drexel faculty, staff and students. Patent or copyright protection and licensing are pursued for about half of these innovations.
University research often results in brand new discoveries that have never before been observed. As such, some disclosures may not be selected for patenting because more research is needed to develop additional results that support the initial observations, and enhance the patentability and marketability of an invention. Researchers may pursue funding through the Drexel-Coulter Translational Research Partnership or Drexel Applied Innovation innovation fund to obtain research support in addition to more traditional government or foundation grants.
Other inventions, as meritorious as they may be on a technical basis, may have a very limited commercial market or may not be protectable with intellectual property. In such situations, patenting and licensing may not be practical.
A critical part of the disclosure process involves helping Drexel Applied Innovation to make the best possible commercial evaluation of your invention. You know your technology better than anyone else and are likely to be in the best position to define your invention's economic and commercial advantages. Before meeting with Drexel Applied Innovation, please think about and list the commercial advantages and applications of your discovery.
- Commercial advantages: Improved performance, operating and/or purchase cost savings, etc. How is it faster/better/cheaper than existing technologies? Does it address high value markets, or markets that are not well-served by existing technologies? No matter how good technically, an idea can't be effectively licensed without such advantages.
- Key benefits over existing products: What are the benefits over existing products to the buyer or user? To the manufacturer? These advantages must be great enough for a company to take the risk and commit the resources necessary to commercialize the invention.
- List companies that may be interested in a license: However, any contact with companies prior to the filing of a patent application should be conducted in coordination with Drexel Applied Innovation, as this could affect our ability to obtain patent protection.
The meeting to discuss your invention gives you an opportunity to explain your invention to Drexel Applied Innovation. It is the first step in the process by which we whether an invention should be patented or pursued commercially, and will be held with your assigned licensing manager.
If possible, please send a completed IDF or some other brief, written summary of the invention (comparable to an abstract) to your licensing manager prior to the meeting. In addition, please bring any publications, abstracts, theses, etc. that relate to the invention, including draft manuscripts. Publications and patents from others describing closely related technologies are also valuable to consider, so please have copies of these items available for discussion. More information is better, as it gives Drexel Applied Innovation and patent counsel a better basis on which to evaluate the invention and its patentability.
The meeting is an informal discussion. Expect to be asked what is new in your invention and how it can be applied for practical use. Your comments concerning the invention's likely commercial value, possible categories of potential licensees and individual companies that may have licensing interest are very valuable and allow Drexel Applied Innovation to make a more informed decision about patenting and licensing.
It is a good idea for as many of the people who contributed to the invention to attend the meeting as possible. Who qualifies as an inventor is a legal determination under U.S. patent law, and the attorney who eventually drafts a patent application on your invention will review the facts and list the actual inventors in accordance with Patent Office requirements.
Drexel Applied Innovation Decision Making Process
In many ways, bringing an invention to Drexel Applied Innovation is like submitting a paper for publication or applying for a federal grant. Each invention is evaluated for its likelihood for commercialization. The Drexel Applied Innovation team meets bi-weekly to review the disclosures received since the previous meeting.
Drexel Applied Innovation evaluates new inventions not only on their technical merit, but also on their commercial potential. Many technologies brought to Drexel Applied Innovation represent significant technological advancements. But unless a reasonably sized, enforceable market exists or is expected to develop in a reasonable time frame, these technologies are unlikely to be accepted for patenting and licensing. Drexel Applied Innovation will share the results of its evaluation of a technology’s commercial potential with the inventors, including cases where it decides to not pursue patent protection and commercialization.
If Drexel Applied Innovation Accepts an Invention
If Drexel Applied Innovation accepts an invention, it will apply for a patent and begin the processes of marketing and licensing. Drexel Applied Innovation pays all patent and licensing costs; there are no costs to Drexel University inventors or authors for this service. All inventor(s) are entitled to share a portion of the licensing income, if any, as defined in the University’s Patent Policy and Copyright Policy.
Patenting and licensing efforts permit Drexel Applied Innovation to contribute substantial support to Drexel University. Approximately 95% of university inventions that are licensed never earn more than $10,000. Furthermore, it typically takes on average four years from invention disclosure to license a university technology in the physical or engineering sciences, and seven years in the case of a life science technology.
The odds of successful licensing can be improved substantially by your contributions of knowledge about the marketplace, likely commercial applications of your work and specific companies that are possible licensees. Licensing efforts are also enhanced by your availability to talk to licensees along with Drexel Applied Innovation personnel, and your willingness to provide follow-up information, samples of materials and similar assistance. In addition, your relationships with researchers in industry are invaluable, as 65% of all university licenses to industry are a result of a relationship that the University inventor has with the company.
If Drexel Applied Innovation concludes that an invention might best make its way to market through the creation of a start-up, the University will consider providing start-up assistance. Drexel connects innovators with entrepreneurs, small business incubator/accelerators in the region, angel investors and venture capital firms, and other business services. Drexel University policies allow researchers to be involved in a new business in a variety of ways. Drexel Applied Innovation considers it critical to have industry-experienced entrepreneurs involved in the new company, and works closely with the inventors to identify compatible executives to lead the venture.
If Drexel Applied Innovation Declines an Invention
If Drexel Applied Innovation declines an invention for any reason discussed above, the inventors are free to deal with the invention as they please, subject to the rules governing federally-funded inventions and to any contracts covering the invention, such as with a commercial funder of the research.
Once Drexel Applied Innovation has decided to pursue patenting and licensing for your technology, a number of activities begin to take place. Drexel pays for the patent and licensing costs associated with your invention.
This section provides a summary of the patent process used by Drexel Applied Innovation. You may visit the U.S. Patent and Trademark Office website to review the U.S. Patent statutes and other details.
Occasionally, technologies are disclosed to Drexel Applied Innovation that involve collaboration between Drexel researchers and researchers at another institution. In order for a patent to be valid, all inventors, however located and affiliated, must be named on the patent application.
Some of these other inventors may have contractual agreements with their institutions or other employers concerning intellectual property rights. In such situations, Drexel Applied Innovation will arrange an Inter-Institutional Agreement with the other institution to permit clean licensing of the invention.
The Patent Application
Drexel Applied Innovation retains experienced outside patent attorneys to draft its patent applications. Before the attorney handling your invention begins to draft the application, your licensing manager will arrange for you and any co-inventors to meet with the attorney to explain the invention and supply other information. You will review the patent application before it is filed. In addition, you will be asked to sign a Declaration of Invention and a formal assignment document that is recorded in the Patent and Trademark Office.
Your input is crucial, both at the drafting stage and later, when the patent attorney must respond to Patent Office questions and comments. Although the attorney is responsible for writing the application and meeting Patent Office administrative requirements, it is difficult for a patent application to proceed smoothly without the committed participation of a lead inventor (usually the faculty member most intimately involved with the research). The whole process, from filing the application to obtaining a patent, may take anywhere from a year to several years.
When the patent attorney describes the invention in a patent application, the description must be complete enough to enable a person skilled in the field to actually practice (duplicate) the invention. In other words, this enabling disclosure must reveal the best mode of practicing the invention. The best mode is the version of the invention that the inventor considers to be the best at the time the patent application is filed. If the disclosure is not enabling, the application will be denied. If the best mode is not revealed, and the patent is later challenged in a lawsuit, a court may find the patent invalid.
A patent application ends with a numbered series of statements called claims, each summing up the invention in a single sentence. Each claim looks at the essence of the invention in a slightly different way. The claims set the metes and bounds of the invention covered by the patent.
Patents may be pursued both in the United States and around the world. The University has the option of filing patents directly in the United States, or taking an intermediate step and filing a patent application via the Patent Cooperation Treaty (PCT). In this case, the patent application may then be pursued in the United States and any other country in the world that has signed the treaty.
Prior Art and Barring Events
Relevant past technology that may be considered by the Patent Office in evaluating novelty and non-obviousness is sometimes called the prior art. Prior art is the knowledge of prior artisans, that is, people skilled in the relevant fields. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale or sold for at least one year prior to the application's filing date becomes part of the prior art for the application, no matter who did the publishing, using or selling.
For example, if an article is published and then a year passes before a patent application is filed on an invention, the Patent Office will not grant a patent on the invention unless it finds that the invention is novel and non-obvious when compared to the published article. The one-year anniversary of a publication, public use, sale or offer for sale is commonly referred to as a bar date. After this date passes, the inventor cannot receive a patent on the invention.
In talking about published information, the patent statute refers to information disclosed in a printed publication. However, this term is understood very broadly. For patent purposes, "published" means any printed, photocopied, typed, microfilmed or otherwise fixed communication that is available non-confidentially and is findable by those in the field.
Not only standard academic publications, but also abstracts, master's theses, Ph.D. dissertations and even tape recordings of speeches become "printed publications" once they are delivered to subscribers, distributed at a meeting, shelved and cataloged in a library, etc. Even Internet communications are normally considered printed publications.
While the U.S. offers a one-year grace period after publication, public use, sale or offer for sale, most foreign countries have no such grace period. Furthermore, even oral disclosures can have the same effect in foreign countries as publications. For example, while a talk or poster session (without handouts or an abstract) may not have an effect on a U.S. patent application, either could immediately bar a patent overseas. As such, public disclosure of the invention prior to filing a patent application will prevent receiving a patent anywhere outside of the United States.
This discussion of prior art and barring events is only a summary overview. The law includes various exceptions and a seemingly common term, such as "printed publication," may have a special meaning in patent law. The U.S. or foreign effects of a particular event may not be obvious. Always tell the attorney drafting your patent application about any possible barring events so that the attorney can determine their importance.
The patent attorney must be informed about anything that could be prior art for another vital reason. Deliberate failure to notify the Patent Office of prior art relevant to an application can make the patent invalid.
Patent Office Activities
After a patent application is filed in the U.S. Patent and Trademark Office, as well as other patent offices around the world, a patent examiner reviews it for utility, novelty, non-obviousness and enabling disclosure. The patent examiner corresponds with the patent attorney about the application, issuing formal comments and opinions called office actions. Commonly, the examiner's first office action rejects some or all of the claims. The attorney's responses and other efforts to adjust the claims and convince the examiner to accept or allow them is called patent prosecution.
You will be asked at times to help the attorney do the best job of answering these office actions. A quick, detailed reply to an office action is important because the patent office sets time deadlines for response.
The patent prosecution may take anywhere from a few months to several years. There is always a possibility that a patent may never be obtained, or if obtained, may not include the key desired claims that create commercial value. But if the application is granted, then the patent issues and the revised text of the application is published as a patent document.
Currently in the United States, a patent has a life of 20 years from the date the utility patent application is filed. New patent law set forth in the 1999 American Inventors Protection Act allows for patent term adjustment to extend the life of a patent that has taken longer than three years to issue due to U.S. Patent Office delays.
A detailed flowchart of the patent process in the U.S. may be found at the USPTO website. Each foreign jurisdiction follows a similar path, but with specific elements unique to each country or region.
There are a set series of events along that occur along the patent life of a technology, each occurring along a well-defined time frame:
Your Licensing Team
Upon submission of an invention disclosure, it is assigned to a Drexel Applied Innovation licensing manager. These licensing managers have technical degrees and experience in marketing and contract negotiations. Your primary contact on licensing and commercial issues is your licensing manager but your licensing manager is also part of a larger team that will work together to patent and license your technology.
The entire team consists of the following:
- You and your co-inventors.
- Outside patent counsel prepares your patent application.
- Your licensing manager has the most knowledge of your technology and shepherds it through the patenting and licensing process.
- Support staff make certain that royalties are paid on time and that other agreement obligations are met.
One very important service provided by Drexel Applied Innovation is license agreement administration. Information on license agreements is entered into a database system, including license fee and royalty details, payment dates, development plans and report timetables, and licensee and Drexel Applied Innovation obligations. If any anomalies occur, the licensing manager reviews it and works with staff and the licensee to resolve.
How You Can Help
Drexel Applied Innovation fully recognizes the busy schedules that Drexel University researchers maintain. Once a patent application has been filed and patent office objections are dealt with, Drexel Applied Innovation can usually proceed with the licensing process with limited time involvement on your part.
Experience has shown, however, that when the inventor is willing to spend a reasonable amount of thought and time in assisting with licensing efforts, the licensing success rate is much higher than when the inventor is not available. Here are some ways you can help:
Educate Your Team: Your licensing manager and patent attorney all have strong technical backgrounds. You are likely to find them "quick studies," but they need you to clearly explain the technical details of your discovery in order to do the best job for you. Remember that your technology, by the very definition of a patent, is novel and non-obvious even to skilled researchers in your field.
List Potential Licensees: As an inventor, you read the technical journals and trade magazines in your field. You also know the industry people who call you and visit your lab, as well as those who are active with competing technologies. Provide this information to your licensing manager. As stated above, often the best potential licensees are those already known to the inventor. Give your licensing manager old copies of the publications you read, materials from meetings you attend and any other information that relates to the marketing and commercialization of your own or related technologies.
Help to Identify Commercial Advantages: Sometimes there may be other ways to accomplish the same or similar results as with your technology. Tell your licensing manager about these competing technologies as well as the potential commercial advantages of your invention. If you inform Drexel Applied Innovation about these issues in advance, your licensing manager will be in a better position to properly represent your technology to potential licensees. Be candid in this process. Drexel Applied Innovation always wants to present potential licensees with a full and accurate picture of all technologies. Credibility is an essential aspect of licensing.
Be Available to Answer Questions: Unexpected questions often arise when your licensing manager is meeting with potential licensees. You are the best and perhaps only source to fully answer these questions. Sometimes these very questions are a source of ideas for future research that may further increase the benefits of your technology.
Be Curious: Your role at many of the research conferences you attend may be primarily research-oriented. However, please take the time to look at any commercial exhibits:
- Is there an exhibitor directory that might be useful to your licensing manager?
- Does it look like any company is already using your technology?
- Are companies using other methods to get a similar result?
- How might your technology help them?
Please give your licensing manager a call as soon as possible after research meetings to discuss your observations while they are still fresh in your mind.
When Licensing Activities Begin: As a general rule, active licensing begins when a patent application has been filed with the Patent and Trademark Office. Once this has occurred, a company is able to evaluate the commercial opportunity value of Drexel’s intellectual property. By evaluating a company's response, Drexel Applied Innovation can in turn obtain an idea of the invention's commercial value. During this phase, you may be asked to review the technology with your licensing manager and to provide any post-disclosure developments affecting its value and marketability. This timetable is subject to change, depending on the circumstances. If you and your licensing manager are able to identify a good licensee, licensing activities may begin earlier. In other cases, the technology may be so advanced that the market has not yet caught up with it. Then, the best strategy may be to wait until a potential licensee is available who can fully understand the commercial value of the invention. The first step in a Drexel Applied Innovation marketing campaign is to contact qualified existing customers and licensees. We prefer to provide interested companies with a publication by the inventor describing the technology. If this is not available, your licensing manager will work with you to create a marketing package that provides sufficient detail to allow a potential licensee to evaluate the merits of your invention.
Marketing Activities: Your licensing manager will use one or several methods to license your technology, depending on what is warranted for the particular technology involved. Possible methods include:
Direct Personal Contacts: Before a technology is licensed, your licensing manager will discuss the technology personally with the potential licensee. Frequently, the first meeting will be the result of a telephone contact. This helps to clarify interest early in the process and enables the manager to meet many of the individuals who are interested in the technology from various perspectives.
Direct Marketing: A direct mail program is sometimes used to supplement direct contacts. This is particularly the case where there are many smaller potential licensees that can benefit from a processing method or other refinement. Inbound telemarketing with follow-up by your licensing manager is integrated with this program.
Drexel Applied Innovation Website: All of Drexel Applied Innovation active technologies are listed on our website and can be easily searched by technology field, keyword, inventor name and more.
Technical Presentations: Your own presentations and papers at scientific meetings can be important in licensing. Contacts made in connection with such presentations can be a good source of potential licensees. Please remember to send copies of these presentations to Drexel Applied Innovation along with any commercial contacts made.
Conferences and Trade Shows: Drexel Applied Innovation participates in a number of conferences and trade shows each year. Attendees at these shows include industry managers and directors of business development as well as representatives from technology transfer offices across the country. Our technology database is available at these meetings to run detailed technology searches for potential licensees.
The License Negotiation: During the entire licensing process, it is important to keep your licensing manager aware of your activities with potential licensees. If you receive direct contacts from potential licensees, please inform your licensing manager. Also please make an effort to answer a reasonable number of questions from potential licensees regarding your technology. This often significantly enhances the licensing process. At the same time, refer all commercial and contract matters to the licensing manager. If the potential licensee becomes too demanding of your time or too probing of your current research activities, please let your licensing manager know so that he or she can give the potential licensee a gentle reminder. Under no circumstance should a potential licensee consider you an unpaid consultant to their organization. Once the right licensee has been identified and makes a decision to obtain a license, your licensing manager will negotiate the details of an agreement with the interested company. Licensing negotiations deal with commercial matters, and at this point the inventor normally is not involved. Drexel Applied Innovation will discuss the licensing terms and strategy with you, and your licensing manager can normally answer your general questions concerning the status of the negotiations. The experience of Drexel Applied Innovation has been that even if we finalize an agreement with a reluctant licensee, problems with payment delays and other matters make the license marginal at best. Sometimes Drexel Applied Innovation is forced to move on to another potential licensee rather than continue with a difficult candidate.
Reasonable Expectations: In the end, many technologies patented by Drexel Applied Innovation are never licensed and many of those that are licensed never pay royalties exceeding their patent costs. We choose to absorb patent costs on technologies that are never licensed rather than risk allowing a commercially viable technology to remain unpatented. Moreover, while some technologies are licensed within a relatively short time, others need more time to let the market catch up with the technology.
Who will license the technology?
Typically, technologies fall into two broad categories, those that are sufficiently well-developed and related to platforms and processes that are currently in use or on the cusp of being used by industry, and those that are very new, novel and represent significant technological departures from what is currently in use in the market. In the case of the former, these types of technologies fit nicely into the established processes and R&D programs of existing companies, and exclusive or non-exclusive licenses with those established companies are the most likely outcome. In the case of the latter, the technological and business risk may be too much for an established company to bear, and an exclusive license to a new start-up company is most likely.
This has been a brief overview of the way your Drexel Applied Innovation team works to license and administer your technology. Please remember that you are also an important member of the team. If you have any questions on licensing, give your licensing manager a call.
This is detailed in Drexel’s Patent Policy and Drexel's Copyright Policy. All investors split the portion of income allocated to the Inventors or Authors of a work.