What’s the Process?

Steps in the Process

Disclosure

The first step in the commercialization process is the formal disclosure of your invention. To do this, you’ll submit a disclosure form to Emory OTT describing your technology. This is used to evaluate the commercial potential of your idea.

When it comes to invention disclosures, there are a few do’s and don’ts.

  • Do disclose your invention information as soon as possible.
  • Do not have discussions with third parties – whether it’s emails, presentations, or other forms of communication – as this may jeopardize patent protection.
  • Do not wait to submit. If not reported in a timely manner, your invention may not qualify for patent protection.
  • Do keep OTT informed of all communications regarding your invention so that we can safeguard your technology and develop it to its fullest potential.

Assessment

After you disclose your invention, OTT licensing associates internally vet it using our comprehensive commercialization evaluation report (CER) process.

A CER report summarizes the key points of scientific background, protection and competition, and market environment that guide the invention evaluation. This helps our licensing associates investigate potential product applications, market potential, anticipate time to market, strategize invention marketing, and evaluate industry interest. Each report is reviewed by our team during weekly meetings, leading to recommendations and decisions on how to move forward.

How does Emory OTT make decisions about commercialization?

We use CER reports to gain a dynamic view of the market and patent landscape, helping guide the commercialization of your invention. If its market potential justifies the lengthy and expensive patent application, we determine if the invention, or some part of it, has already been made publicly available. A patent may not be available if the invention, or an important aspect of it, is publicly available prior to filing a patent application (e.g., through journal publications, patent applications, conference posters, abstracts, or presentations).

Protection

After determining whether your invention will make a viable product that will have commercial partner or investor interest, the next step is protection of your invention. A U.S. patent provides protection for 20 years after the filing date, giving inventors an opportunity to develop and market products fully. This 20-year window also allows inventors, commercial partners, and investors to recoup significant financial investment during the commercialization process.

There are three types of patents: utility, design, and plant.

  • Utility patents are the most common and they protect new inventions or functional improvements to existing inventions.
  • Design patents protect ornamental design, configuration, improved decorative appearance, or shape of an invention.
  • Plant patents protect new and distinct asexually reproduced plants.

The Emory Patent Group, and occasionally outside counsel, navigate and draft the patent applications. Patent application packets contain an abstract describing your invention, specific claims for the invention, a background discussion of publicly available information, graphics or drawings of the invention, and a signed oath from the inventor. Licensing associates work closely with our patent attorneys to create the strongest application package possible and work to give your invention the best IP protection.

Marketing

Great ideas need to be promoted. And while often you, the inventor, are the best resource for marketing through publications, collegial networking, and consulting efforts, Emory OTT also uses many avenues to market your invention.

With an active marketing initiative supported by two full-time marketing associates, we promote Emory technologies through our website, technology exchanges, and outreach. Our website features technology briefs, non-confidential invention summaries, catalogs of promising inventions, monthly featured technologies, and video demonstrations. We’re also an active player in technology exchanges, which facilitate collaborative marketing among universities and corporations. In addition, OTT attends regional events that highlight technologies and encourages networking among local entrepreneurs and business development professionals. Finally, using our technology briefs and catalogs, we implement specific campaigns to actively market your technologies to potential company partners throughout the year.

In addition to the above tactics, we’ll lean on our already strong relationships with industry leaders, and our licensing team will help identify potential commercial partners that have the resources and capacity to bring your technology to market. In these ways, Emory OTT is well-positioned to develop a marketing campaign for your invention.

Licensing

Because Emory does not directly commercialize technologies, inventions owned by the University are licensed to third parties, which gives the third-party permission to commercially develop the technology.

Terms to know

  • License: An agreement where the IP owner grants another party permission to assume rights of the IP and authorizes the licensee to use the invention.
  • Agreement: A document describing the rights and responsibilities of both parties, serving as a framework for business development, length of term, exclusivity, and reporting.

OTT negotiates licensing agreements on behalf of inventors, and we seek out industry partners capable of bringing inventions to commercial fruition to benefit the public and University. To this end, licensees agree to achieve milestone performance measures and are held accountable to OTT for reasonable business development. Given that most University inventions are in early-stage development, finding licensees and negotiating agreement details often take substantial time. The average time from initial disclosure to final license agreement is 5.5 years and is usually followed by several additional years for further commercial development.

Negotiating a license agreement is a major success; however, it’s not the end of the commercialization process. As IP owner, Emory OTT must maintain post-license compliance. License compliance monitoring ensures scheduled development of technologies, appropriate payment of royalties and fees to Emory, and proper adherence to license terms and agreements. In this way, OTT maximizes the value of your invention.

What about start-ups?

In some cases, inventions warrant creation of a new company to develop and promote the technology. Forming a start-up for your invention can be rewarding, but it’s not without its time commitments and challenges. The roles of researcher and entrepreneur are very different – and sometimes conflict. Start-ups require sound business plans, advisory boards, capital, space, and most importantly, people. It’s up to you to decide if you’re able to take on those responsibilities in addition to your research duties. Fortunately, Emory OTT’s Faculty and Start-Ups team is here to help and advise you if you’re interested in pursuing this path.

Additional information can also be found on the start-ups section of the blog site.

What can I expect after licensing?

Development. More development is usually necessary after licensing an invention. The licensee can be expected to invest resources in further developing the invention, confirming performance, conducting additional studies, altering specification, performing clinical trials, and participating in other critical pre-market activities. However, this stage after licensing may also involve some participation from you, the inventor.

Revenues. Revenues realized through successful licensing of inventions are shared among the inventor, University, and department. Inventors are awarded a percentage share of revenues, from 25% to 33%, according to Emory's policy depending on total monetary income. Income sources include licensing fees, royalties, and equity received from a licensee company or start-up structure. Distribution of cumulative net revenue is outlined in Emory University's IP policy. The University and its departments reinvest revenue in teaching and research goals.