I. Patent Process
An Invention Disclosure Form
must be submitted to the Technology Commercialization Office by researchers/inventors.
Each Invention Disclosure is analyzed in two ways: a) Patentability, and b) Commercial
potential.
Patentability of the technology is determined by the following factors:
a. Uniqueness
b. Usefulness
c. Obviousness and/or conflict with Prior Art
A Provisional Patent Application is made to the United States Patent and Trademark
Office (USPTO) when the technology clears the two areas of Patentability and Commercial
Potential.
The researchers/inventors continue experimentation on the technology, developing
prototypes and providing Proof of Concept results for the technology.
Twelve months after applying for a Provisional Patent Application a determination
is made if to proceed on a Non-Provisional Patent Application. This decision is
made based on commercial company interest in the technology. If there is sufficient
commercial interest, the University files for a Non-Provisional Patent Application.
This is done in the US as well as foreign countries through the PCT process.
Overview of the Patenting and Licensing Process
[Visual chart, click here]
1. Idea
2. Completion of
Invention Disclosure Form along with
Marketing Abstract
3. Evaluation of Patentability and Commercial Potential
4. File Patent, Attorney Review, Search and Assessment
5. Market to Interested Companies
6. License Technology
II. License Process
After the invention is properly patented, the Technology Commercialization Office
works with inventors to identify the companies that may be interested in licensing
the University owned technologies.
In conjunction with the Invention Disclosure Form, a Marketing
Abstract Sheet is developed with the inventors in order to disseminate
the technology to outside interested parties.
If a company expresses interest in the technology, a Confidential Disclosure Agreement
(CDA) is prepared by the Technology Commercialization Office.
After the CDA is secured, the Technology Commercialization will set up meetings
with the appropriate individuals from the company in order to discuss the technology.
If the company demonstrates that it has the resources to commercialize the
technology, then Drexel and the company can develop licensing arrangements.
Examples of license terms include: upfront licensing fee, reimbursement of patent
costs, royalty, product development milestones, maintenance fees, sublicense fee,
field of use, etc.
Once the terms are agreed to then the license agreement is signed by the University
and the company.
In order to continue to improve the technology and implement the technology at the
company, a Sponsored Research Agreement is often included as part of licensing terms.
The University has a generous
Intellectual Property distribution for inventors.
Up to 50% of royalties received from the University are shared with the University
inventors.
For more details, please contact us.