The Office of Technology Commercialization assists in protecting, marketing and licensing university inventions with commercialization potential. Questions? Contact Grant McGimpsey, firstname.lastname@example.org or call 330-672-0717.
Kent State University employs a market-centered approach to technology transfer. It starts when a researcher submits an invention disclosure to the Office of Technology Commercialization by completing an invention disclosure form. We work closely with the inventor at each step of the process to support the activities related to commercialization either through licensing the technology to an existing company or by creating a start-up company. Though not every invention may be ready for commercialization, we assist researchers in obtaining external funding to validate the technology in order to determine its commercial viability.
Each invention disclosure is evaluated for its commercialization potential -- whether the invention has the potential to fill a market need -- and identifying opportunities and challenges. The commercialization potential is based on the strength of intellectual property (IP), the invention’s stage of development and the estimated time and resources needed to market it. A summary of the data is provided to the university’s patent board, composed of faculty, inventors, technology commercialization professionals and legal advisors, to determine if the university should invest in patenting the technology. The board members recommend whether to file for IP protection or not. The final decision is made by the board’s chair, the vice president for research.
If an invention is considered for IP protection, the Office of Technology Commercialization works with the inventor and an external patent counsel. If the invention is not considered for IP protection, the researcher may continue to work on it and file a new invention disclosure in the future.
Our office actively markets those inventions identified through the evaluation using your network, our contact network and market reports to identify potential licensees.
If an existing company expresses interest in finding out more about the technology, we start the discussion. Once a potential licensee is identified, our office will negotiate a license agreement with mutually agreeable business terms. The license allows the companies to use the invention in exchange for a license fee and royalties to the university.
After a license agreement is executed our office ensures that the company is in compliance with the commercialization obligations and with the payment terms to the university. Any license fee and/or royalty payments received for commercializing an invention will be shared:
Our office also supports the creation of a start-up company by the inventor and will assist in transferring the technology to the company through favorable license terms.
In order to protect unpublished results of your inventions, research protocols or software code while you are in the process of discussing a potential collaboration with an institute or a company, we make sure that such information is shared under a valid nondisclosure agreement (NDA). An NDA outlines the nature and conditions for sharing the information between the university and a third party. Information that is shared (orally, or in writing as a conference abstract or online or by email) without a valid NDA is considered public disclosure of information and is not considered confidential under an NDA. Kent State researchers also have an obligation to protect a third party’s confidential information as well under a mutual NDA.
If research materials related to biological, chemical or engineering protocols are exchanged or transferred between researchers outside of Kent State, an MTA should be executed. An MTA outlines the nature and conditions for sharing the research materials between Kent State and a third party, which could be a company, a research institute or a university. Materials that are not unique to the university and are readily available from other commercial sources generally do not need an MTA.
The common issues with NDAs and MTAs and sponsored research agreements are restrictions on publications, free licenses, assignment of future inventions and creations under the agreement and general legal provisions. Our office works to protect your research results and your ability to publish by negotiating mutually amenable terms through these agreements with the third parties.
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