A-to-Z Index

FOR INVENTORS

The Process of Technology Commercialization

The technology commercialization process starts with an innovative idea and is considered successful when it goes into the marketplace as a product or service available to the public. Factors determining potential licensing success include the commitment of:

  • the inventor to properly document and disclose the invention,
  • the OTT to protect and market the invention,
  • the industrial partner for development and commercialization.

Inventions include:

  • processes
  • products
  • tools or instruments
  • compositions of matter
  • living organisms
  • Improvements to existing technology in the categories above.

Key elements in the Technology Commercialization Process center on Invention:

I. Groundwork
II. Disclosure
III. Evaluation
IV. Protection
V. Marketing

I. Invention Groundwork
Invention seldom occurs by sheer accident. Inventions involve hard work, precise experimentation, and organized record keeping. Researchers should consider the possibility of creating an invention from the beginning of their research and document the date of the invention's conception to show who was involved in the development of the original idea. This proof is necessary if questions should arise about ownership.

Remember that publicly disclosing your invention or idea prior to the submittal of Intellectual Property documentation to the Office of Technology Transfer, in either text or verbal form, may result in a lost opportunity to protect and commercialize your invention. If you think you may have created an invention, contact the Office of Technology Transfer Office (OTT) before submitting a manuscript for publication. After calling to establish personal contact right away, the OTT will guide you through the Invention Disclosure Form. A completed Invention Disclosure Form is the first step in the process of protecting your invention.

A key aspect of inventorship is the ability to think commercially, or understanding how your research efforts match up with trends and forces driving change in the marketplace. Think "application." Ask yourself how your technology can work outside the university to solve a problem faced by people in society.


Good documentation in laboratory notebooks serves two purposes:

  1. streamlining the invention disclosure and possible patent application
  2. defending an issued patent.

U.S. patents are granted on a "first to invent" basis, whereas most other countries grant patents on a "first to file" basis. Maintaining adequate laboratory notebook records is essential to identifying the conception and reduction to practice of an invention.

An inventor on a U.S. patent must prove two points: initial conception (formation of the idea) of a novel process or product coupled with "reduction to practice" or how the idea would actually work. Reduction to practice must follow initial conception or else other inventors could be granted the patent if they were first to reduce the invention to practice. Filing for patent protection is best when there is ample experimental evidence describing "how to do" or "how to make" a compound, device, or process. Patent filing should precede a public disclosure (abstract or article publication, seminar or poster presentation, or similar delivery of inventive information to any group not covered by a confidentiality agreement).

There are two means of supporting patent claims:

1. Laboratory notebooks are the most important source of invention documentation. The following standards present a reliable format to prevent claims of fraudulent insertion or deletion of entries.

  • Use bound notebooks with pre-numbered pages.
  • Sign your full name and date every page.
  • Use ink when recording ideas and experiments.
  • Use a single strike if anything is crossed out and initial as "strike-outs."
  • Do not skip pages or leave empty spaces. Draw a line through any unused portion and initial and date the marking.
  • Initial across the edge of auxiliary material: i.e., figures and computer printouts that are pasted into the notebook.
  • Do not place results printed on thermal paper in your notebook as it fades over time (copy the data and place it in the notebook).
  • Digital records can be submitted as evidence of an invention, but it is highly recommended that these records be supported with written documentation; courts do not favor digital records.
  • Label ideas or proposals to differentiate them from work actually performed.
  • Have records "witnessed" with signature and date by someone who understands the content of the work on a weekly basis. The witness should not be a direct contributor to the work being reported.
  • Try to preserve the "first samples" of new materials produced by new methods.
  • Retain records of purchase orders for components required for testing.

2. Invention Disclosures provide additional support determining the date of an invention. For this reason, it is important to file an Invention Disclosure with the OTT immediately after the initial conception and before reduction to practice. This confidential, signed, and dated document is an official university record that may be helpful in interference proceedings. (top)

II. Invention Disclosure
The disclosure process begins with submitting the Invention Disclosure Form to the OTT. This form requires a description of the invention, relevant background information, dated signatures of all inventors, contact information, funding sources, and percentage of each inventor's contribution if more than one inventor is involved. This information is used during the evaluation process and possibly the patent application. Submit an original form signed by the inventor(s) and an electronic version to the OTT. The disclosure is reviewed by the Intellectual Property Committee, who makes a decision on university ownership in accordance with the Intellectual Property Policy .

The sooner OTT is aware of discoveries, even if only a conception, the better we can understand your interests and help you by analyzing the intellectual property space in world patents to be aware of similar inventions and potential companies for partnering and eventual licensing opportunities.

Public disclosures, which include posters, grant applications, speeches on the topic and submitted papers, may limit the ability to protect the idea. Contact the OTT if you have questions or uncertainties. If you are submitting a grant proposal to an industrial sponsor containing information about an invention, mark "Confidential Information of JMU" on pages that contain proprietary information and state in the cover letter that proprietary information is included. (top)

III. Invention Evaluation
Upon receipt of an Invention Disclosure, the OTT assigns a technology ID number. The disclosure is reviewed and an interview may be conducted with the inventor(s) for collecting additional information to fully understand the disclosed invention. The evaluation process involves the OTT, the inventor(s), and in some cases, third party reviewers who operate under confidentiality. The OTT uses a variety of databases and contacts to develop a clear understanding of the invention's technical merit, patentability, and commercial potential. The evaluation process determines whether funds will be expended to patent an invention and explores commercialization strategy. (top)

IV. Intellectual Property Protection
Intellectual property (IP) exists in a legalistic contractual environment and cannot be summarized in straightforward layman terms. It is important for the researcher to understand the IP language. Not paying attention to the details of a contract can result in serious repercussions beyond loss of inventions.

There are several ways to protect IP; Patenting is the most common, the most expensive, and may take two to five years to complete. Other methods include confidential disclosure agreements , trademarks , copyrights , and trade secrets. The U.S. Patent and Trademark Office provide comprehensive information on these and other topics. (top)

V. Invention Marketing
The OTT will market your invention, providing sufficient data exists to prove it works. Without reduction to practice (data or demonstration to show the invention works), conceptual inventions are difficult to market. However, proof-of-concept grant funding, from public (SBIR or STTR) or private sources (seed venture capital or innovation companies), may be a possibility. Be aware that grant funds may contain IP rights.

With input from the inventor(s), the OTT will complete a market analysis using a variety of resources to determine a preliminary value of the technology, including market size, market share, and associated risks or barriers. Within four months of receiving a completed disclosure, the OTT will make a decision whether to file for legal protection. It takes time to understand the technology and market, and to ensure a positive relationship with the inventor. This relationship is critical since successful technology transfer requires the inventor to be actively involved in all stages of the process, from working with patent attorneys to assessing prospective licensing candidates. The inventor must be willing and able to build solid working relationships with scientists or technologists of the prospective licensee and maintain them over the early stages of company involvement with the transfer of technology. This hands-on process involves the conveyance of know-how and technical ability.

If no potential licenses are readily apparent or the technology is deemed too narrow for a start-up company but the OTT determines there is commercial potential and decides to pursue patent protection, a non-confidential, abstract-length description of the invention will be posted on the Available Technologies OTT web page and may also be sent to potential licensees. If the technology is found to be unpatentable or unmarketable, the university may release the technology to the inventor at the inventors' request.

During the marketing process, the invention may be protected in some form, e.g., provisional patent, full patent, copyright, or trademark, and the inventor(s) should be prepared to speak with prospective licensees along with the OTT. (top)

WHAT WE DO


our MISSION... To promote innovation, enhance research by connecting inventors and industry, and foster economic development through protecting and commercializing intellectual property.

our VISION... To create a new and unique model for university technology transfer by analyzing our intellectual property potential in the marketplace, partnering with corporations, and assessing entrepreneurial management teams, start-up companies will be given a stronger opportunity for success.

we SERVE...Faculty, staff, and students producing innovative ideas and intellectual property with commercial potential and Corporations seeking to work collaboratively on JMU research projects to develop their products and business.