Step 2 - Evaluating an Invention Disclosure
In many ways, submitting an invention to OTD is like submitting a paper for publication or applying for a grant. Each invention is weighed on its merits against other inventions. The key distinction, however, is that the merits weighed are quite different.
Please understand that most inventions submitted to OTD represent significant technological advancements. Any decision by OTD to not protect and pursue commercialization of an invention should not be viewed as a judgment about the quality of the science conducted in making the discovery or formulating the invention. Rather, OTD must focus on inventions for which a sufficiently sized market exists or is expected to develop, and for which adequate, enforceable intellectual property can be reasonably obtained to capitalize on the market opportunity.
Evaluation Process
How does OTD make this determination? We will be the first to say that predicting which inventions will be most valuable in the future is hardly a foolproof science, particularly given the early stage of many of the inventions we see. We fully acknowledge that no one can predict with 100% accuracy whether any particular invention will be successfully commercialized. That said, OTD strives to make the most informed decision possible in a reasonably timely manner. Furthermore, in situations where OTD decides not to protect an invention and pursue its commercialization, the inventors of the technologies are given the opportunity to protect and pursue those opportunities independently.
Six key factors contribute to the overall commercial potential "score" given to an invention:
- Intellectual property strength
- Level of development of the invention
- Magnitude of market potential
- Ease of implementation
- Timing
- Engagement of inventor(s)
For more detailed information about the strategies OTD uses to evaluate an invention on these six attributes, follow these links.
Inventor Interview
Primary and Secondary Market Research
Intellectual Property Review
Invention Assessment Committee’s Determination
Once the intellectual property review of an invention has been completed, it is added to the weekly meeting agenda of the Invention Assessment Committee, whose members include OTD's director of licensing, program managers, patent associate, and administrative operations manager.
The Invention Assessment Committee reviews the results of the intellectual property research and finalizes the composite assessment score, which determines whether or not an invention is to be protected and commercialized. At this meeting, the case manager and student interns involved in performing the assessment research, make a "pitch" for your idea, playing an advocacy role on behalf of your invention, while the rest of the committee plays "devil's advocate." You, as the inventor, are not only welcome but strongly encouraged to attend these meetings, to correct facts when necessary, to help answer questions from the committee, and even to participate in the pitch. While none of these levels of involvement is required, it certainly can have an impact on the “Engagement of Inventors” score.
Following the pitch and subsequent question-and-answer session, you will be excused from the meeting so the committee can finalize the composite score and make a decision. The committee will make one of three determinations:
- Engage - Protect and attempt commercialization of the invention
- Disengage - Decline to protect the invention, waiving rights back to any federal sponsors (if applicable) and/or making the invention available to the inventor(s) to commercialize
- Postpone - Request additional research, so a final decision can be made at a later Invention Assessment Committee meeting.
Assignment
When OTD decides to engage in an invention, you will be asked to execute a short Assignment Agreement, which clarifies that the intellectual property related to the invention is owned by the University, as set forth in Regents' Policy 4.4.1.on Intellectual Property. In return, it is the University's policy (RP 4.4.2) to share at least one third of the net proceeds related to the commercialization of the invention with you. OTD then moves forward to develop an intellectual property protection strategy and a commercialization strategy, while keeping you informed and engaged throughout the process.
When OTD decides to pass on an invention, you will be given the opportunity to commercialize the technology independently. If the research leading to the invention was not federally funded, you will be assigned the rights to the invention, provided that you have a credible plan to pursue commercialization of the invention. If the research was federally funded, however, OTD is legally obligated under the Bayh-Dole Act of 1980 to waive its rights back to the federal sponsor or sponsors. In these cases, OTD will assist you in petitioning the federal sponsor for the rights to the invention, though there is no guarantee you will be granted such rights, and even when such rights are granted, they often come with similar commercialization effort and other reporting requirements.
