University of Utah Technology Transfer Office Handout

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d. If needed, we may request a patentability opinion from an outside attorney (however, this can be quite expensive, e.g. $5,000 to $10,000, so this may only be done if there is a compelling reason or if it is very difficult to tell if a specific reference may wipe out the value of our own application). 4. Market Assessment a. A Non-Confidential Summary (NCS) for the invention that summarizes the important concepts, advantages, and applications may be produced to help to assess interest and attract potential licensees. b. If companies request additional information it is provided under a Confidential Disclosure Agreement (CDA). c. The TTO may also place the company in contact with the researcher so that technical details can be discussed. Such discussions should only occur after a CDA has been signed. • If the technology appears both patentable and marketable, the TTO will then undertake the patent process and begin searching for a commercial partner. Writing a patent requires the input of the inventors. You can expect to spend time on the phone and by e-mail passing on information and patent drafts (this is a bit like writing a manuscript, but with a somewhat different point of view). • If the technology does not appear to be patentable and/or marketable, the TTO will notify the inventor and a decision on how to proceed can then be made. 5. Licensing a. As a public educational and research entity, the University is prohibited from engaging in commerce. Therefore, the University controls intellectual property through the University of Utah Research Foundation (UURF). The University transfers rights to make, use, sell and import intellectual property through license agreements whereby the University retains ownership and management of the intellectual property. N.B.: You do not lose your right to practice your invention by licensing. LICENSES STATE THAT THE UNIVERSITY RETAINS RIGHTS FOR ACADEMIC USE. b. There are three basic types of license agreements although each may have a number of variations. o Option agreements – For a smaller fee than a license, the option gives an interested company a short time (generally six months to two years) to evaluate (BUT NOT to make, use, sell or import) a technology. o Non-Exclusive License – Gives rights to a company to make, use and/or sell the patented technology with the understanding that those rights can be extended to other parties by the UURF as well. o Exclusive License – Gives rights to a company to make, use and/or sell the patented technology with the understanding that the UURF will not offer the same rights to any other parties. Multiple exclusive licenses may be executed for a single technology, however, if there are multiple uses for a technology (Fields of Use) or companies only want rights in certain parts of the world, etc. Exclusive licenses also generally allow the licensee to sublicense a technology to other parties.
c. The University must ensure that each company to which it grants a license has the ability to develop the technology and make it available to the public. This obligation is one of the implied aspects of the Bayh-Dole Act. 6. Diligence a. Disclosures – As additional presentations or publications come out, we need to know so that we can report these to sponsors. The TTO also needs to know if improvements are made in a technology so that patents can be filed as needed. We need to be notified of address changes both for notification purposes and so that royalty distributions can be made. b. Patents – Once a patent is filed there are ongoing patent prosecution procedures to be addressed. The originally filed application is virtually guaranteed to be rejected in all or part. Each argument made must be rebutted (requiring legal and scientific input and generally additional paperwork). Once the patent is accepted all the figures must be correctly formatted, all the paperwork must be completed, and the issue fee and maintenance fees over the life of the patent (20 years) must be paid. This process is repeated in each country in which a patent is pursued. c. Licenses – Once a technology is licensed our office monitors the licensee to verify that fees and royalties are paid, that the licensee is using the technology and not just holding it away from others, and that we don’t see other companies that are using our technology without permission (infringing). We may also be involved in arbitration or litigation for breach of contract or for infringement. 7. Other Services a. Signature Authority – The TTO can provide legally binding signatures for the University on contractual agreements related to IP and materials. Researchers and students cannot legally sign documents on behalf of the University nor should they sign documents that may obligate them to actions violating University policy or sponsor obligations. The TTO is happy to review such documents for you. b. Notary Services – The office has three notaries. c. Confidential Disclosure Agreements (CDAs) – Before disclosing the details of a technology to anyone outside the university (particularly any commercial or private group) d. Review of Sponsored Research Agreements (SRAs) – The TTO reviews clauses related to IP e. Inter-institutional Agreements (IIAs) – When you are planning to collaborate or have collaborated with researchers outside the university or you are leaving the U and plan to take any materials or practice any patented methods owned by the U. f. Material Transfer Agreements (MTAs) – for materials coming in or going out g. Software Access h. Copyright (as per the PPM) i. Trademarks j. Grants – the TTO administers or offers services related to both Technology Commercialization Projects (TCPs) and Centers of Excellence (COE) grants.
Page 1 and 2: University of Utah Technology Trans
Page 3 and 4: INTELLECTUAL PROPERTY What is Intel
Page 5 and 6: TECHNOLOGY TRANSFER The Patent and
Page 7: SERVICES OF THE TTO Management of d
Page 11 and 12: 1. Brief Summary of Invention: (Thi

University of Utah Technology Transfer Office Handout

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