The Office for Technology Transfer (OTT) encourages you to contact us early and often during your discovery process to ensure that you are aware of all options to develop the commercial potential of your research. OTT can assist with questions related to marketability, funding sources, commercial partners, patenting, new venture considerations, UA policies and procedures, and much more.
The process of technology transfer is summarized in the steps below. Note that these steps can vary in sequence and often occur simultaneously.
1. Research: Observations and experiments during research activities often lead to discoveries and inventions. An invention is any useful process, machine, composition of matter, or any new or useful improvement of the same. Often, multiple researchers contribute to an invention.
2. Invention Disclosure Form: The written notice and description of invention to OTT that begins the formal technology transfer process. An invention disclosure is a confidential document, and should fully document your invention so that the potential options for commercialization can be evaluated and pursued.
If you believe that your invention has the potential to be patent protected, the Invention Disclosure Form should be submitted as soon as possible, preferably a minimum of three months prior to any public disclosure or publication. Note that in most cases foreign protection is lost upon any enabling public disclosure of the invention.
All sponsors (i.e., government, industry, and foundation) must be informed if an invention is developed during a project. OTT (and the Office for Sponsored Programs) will work with you to notify the proper parties.
3. Assessment: UA’s Alabama Innovation and Mentoring of Entrepreneurs (AIME) Center conducts the initial Triage Process. The Triage teams are composed of students under the direction of Dr. Dan Daly. The goal of the triage process is to produce a written report and a PowerPoint presentation summarizing the team’s findings. These reports are shared with the inventors, updated as necessary, and provided to the IP Committee Members.
Assessment typically takes from 1 week to 3 months and we will keep you informed during the process.
4. IP Committee: The IP Committee is a ten member committee that meets monthly. At the meeting the inventor(s) are asked to prepare a 10 MINUTE presentation. Inventors are asked to provide the following information for the invention description: 1) a clear and concise statement as to what the invention is/does in non-technical terms; 2) a brief history of the field/technology; 3) how this technology is different from what is currently available; and 4) illustrate why this technology is better. Following the presentation, the committee discusses the technology and votes on the best path forward. It is important to note that the committee’s decision is based mainly on the market potential for a particular technology.
5. Protection: The process in which protection for an invention is pursued to encourage third party interest in commercialization. For potentially patentable inventions, OTT will work with an outside patent attorney and you to file a patent application with the U.S. Patent Office. Once a patent application has been filed, it will require several years and tens of thousands of dollars to obtain a U.S. patent. Other protection options include copyright and trademark.
Inventors work directly with UA’s outside patent attorneys to provide needed insight into the inventive elements and how best to make and use the invention. Inventors may also provide insight and analysis of other relevant “art.” Inventors review the completed patent application for accuracy and for supported claim coverage.
For additional information, see the Patents, Copyrights, & Trademarks section.
6. Marketing: Your contacts at companies may also be very important as we contact potential licensees during the marketing process. Ideally, one or more companies may express interest in the invention. Often non-disclosure agreements are signed to enable the interested company to review more detailed and unpublished data and information and to potentially visit your lab.
7. Selecting a Partner: Assuming more than one company is interested in the invention, OTT will identify the most appropriate licensing partner(s) for the invention. Our criteria includes the potential licensee’s overall ability to: 1) commercialize the technology, 2) obtain or provide funding to support development of the technology 3) leverage its other activities to assist in commercialization of the technology, and 4) provide management and technical personnel, as well as the licensee’s business plan for commercialization. Other factors include prior and ongoing relationships with the licensee, the willingness of one or more UA inventors to work with licensee, ability of the licensee to accept license terms required by the UA and more.
If creation of a new business start-up has been chosen as the optimal commercialization path, OTT can assist in planning, creating and funding the start-up.
For more information, see Commercialization Approaches.
8. Licensing: A license agreement is a contract between UA and a third party in which UA’s rights to a technology are licensed (without relinquishing ownership) for financial and other considerations. An option agreement is sometimes used to enable a third party to evaluate the technology for a limited time before making a decision about licensing.
The inventor’s involvement in the licensing process is very important. It is often the inventor’s knowledge, contacts, sustained effort, and ongoing interactions with his/her technical counterparts in the potential licensee that closes deals and helps turn the invention into a product. Licensing is a team approach involving both OTT and the inventor(s).
For details on various types of agreements, see the Types of Agreements section.
9. Commercialization: The licensee continues the advancement of the technology, and makes other business investments to develop the product or service. This step may entail further development, regulatory approvals, sales and marketing, support, training, and other activities. The inventor may have an opportunity to participate in additional research and/or consulting.
10. Revenue: Revenues received by UA from licensees are distributed to the Office for Research, colleges, departments, and inventors to fund additional research and education and to encourage further participation in the innovation ecosystem. For additional information, see UA’s Policy on Distribution of Royalties.