What’s the Process?

Steps in the Process

Disclosure

The first step in the commercialization process is the formal disclosure of your invention. An invention disclosure document describes the technology and is used to evaluate the commercial potential of the idea. New ideas must initially be reported to Emory's OTT for review. We provide the disclosure form and instructions on our website at OTT Forms.

OTT recommends disclosing invention information as soon as possible. Discussions with third parties or communication via emails and presentations may jeopardize patent protection. If not reported in a timely manner, your invention may not qualify for patent protection. It is critical that OTT is informed of all communications regarding your invention so that we can safeguard your technology and develop it to its fullest potential.

Assessment

OTT licensing associates investigate potential product applications, market potential, anticipate time to market, strategize invention marketing, and evaluate industry interest. All new invention disclosures are vetted internally using our comprehensive commercialization evaluation report (CER) process. Our CER reports summarize the key points of scientific background, protection and competition, and market environment that guide the invention evaluation. Each report is reviewed by our team during weekly meetings, leading to recommendations and decisions on how to move forward.

The detailed commercialization evaluation from the CER report offers a dynamic view of the market and patent landscape, helping guide the commercialization of your invention. If marketability justifies the expenditure of further resources, the key question to ask prior to pursuing a lengthy and expensive patent application is whether the invention, or some part of it, is already made publicaly available. A patent may not be available if the invention, or an important aspect of it, is publicaly available prior to filing a patent application, e.g., through journal publications, patent applications, conference posters, abstracts, or presentations. OTT staff will conduct a comprehensive assessment of commercialization potential based on a combination of the marketable and patentable aspects of your invention.

For additional information on the CER process please visit the commercialization evaluation page.

Protection

After determining whether your invention will make a viable product that will have commercial partner or investor interest, the next step in the process is protection of your invention. Quite often a US patent is utilized and provides protection for 20 years after the filing date, giving inventors an opportunity to fully develop and market products. This 20-year window 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, they protect new inventions or functional improvements to existing inventions. A design patent protects ornamental design, configuration, improved decorative appearance, or shape of an invention. A plant patent protects new and distinct asexually reproduced plants.

Emory OTT relies on guidance from our patent attorneys to navigate and draft the patent applications. Patent application packets contain many documents specified by the USPTO, including an abstract describing your invention, specific claims for the invention, a background discussion of publicaly available information, graphics or drawings of the invention, and a signed oath from the inventor. Our patent group works closely with our licensing associates to create the strongest application package possible, to give your invention the best IP protection.

For additional information on protection visit the intellectual property protection page.

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.

For additional information, visit the marketing page.

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. A license is an agreement where the IP owner grants another party permission to assume rights of the IP and authorizes the licensee to use the invention. Agreements describe 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. OTT licensing associates seek 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 is not the end of the commercialization process. As IP owner, Emory that 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.

Entrepreneur magazine had an informative article on royalty rates in various sectors which includes a nice infographic on the subject.

What about start-ups?

In some cases, inventions warrant creation of a new company to develop and promote the technology. Our OTT developed the Emory Venture Lab as a start-up assistance program to help nurture newly constructed companies achieve success. Start-ups offer unique challenges and require significant time commitments from the founders. It is critical for inventors to reflect and acknowledge how the roles of researcher and entrepreneur differ and sometimes conflict. Successful start-ups are more than great ideas and novel inventions. They require sound business plans, advisory boards, capital, space, and most importantly, people. OTT understands the complexities of start-ups and is well-equipped to advise faculty and investors interested in pursuing this path.

For additional information visit the start-ups page.

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

What can I expect after licensing?

Development. Additional development is often necessary after licensing an invention and may at times involve some participation from the inventor. 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.

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.

For additional information visit the compliance page.