IP Transfer Process

In order for the IP Transfer Process to work smoothly, the IPSCE staff must be very knowledgeable in Intellectual Property, a first class communication and customer service, efficient and proficient in workflow management and team-oriented workers. These types of services and people help us to stay focused on the task at hand and define a distinct and clear line of communication between the customer and IPSCE at all times.

IPSCE is responsible in providing early non-disclosure communications, invention disclosures, IP assessments, IP protection, marketing, and commercialization, which include, licensing of each patentable invention and the creation of start-up companies.

Non-disclosure Communications

IPSCE will be responsible for teaming a knowledgeable and personable staff member with the potential member to obtain their necessary personal data information in order to move to the next step. Once this has been completed, the potential member will be assigned to a knowledgeable IP analyst to discuss with the potential member their potential idea, the invention disclosure, the IP assessments, and IP protection rights.

Invention Disclosures

This is where the member will provide a written description of their invention, which begins the formal IP Transfer Process. This process begins with confidentiality statement or non-disclosure agreement between the member and IPSCE. Once the written description has been submitted and reviewed by an IP technology evaluator, the technology evaluator will determine whether to file a document disclosure form and/or to file a provisional or non-provisional application.

If the technology evaluator determines that the potential idea needs immediate protection, the filing of an application will need to begin as soon as possible.

IP Assessments

During the IP assessment stage, the technology evaluator will request that a thorough search be performed to see whether the potential idea has already been patented and/or find the closest technology art to the member’s potential. Once the search has been completed, it will be determined whether the member should continue, or go back to the drawing board to improve the potential idea, or discontinue the process. If the process continues, a patent application (non-provisional or non-provisional) will need to be filed. One this has been done, marketing and licensing analysis will be performed to determine the invention’s commercialization potential.

This assessment process generally lasts one week to one month depending on the technology and the customer will be constantly keep up to date on the progress of the IP assessment stage.

IP Protection

During this stage, IPSCE will assign a patent attorney or agent to work directly with the member in filing the patent application (non-provisional or non-provisional). The attorney or agent will discuss with the member the U.S. Patent Laws and Statutes that are used to determine patentability. Also, the attorney or agent will discuss the U.S. Patent Office Patent Process from the time the application has been filed to the time the patent application has been allowed. Also, the customer will be informed on the requirements of post-allowance by the attorney or agent.

The attorney or agent will discuss claims, specifications, Patent Office Responses (rejections and allowed subject matter), restriction requirements, patent prosecution, and 35 USC 101, 102 and 103 statutes to name a few. In addition, other statutes, regulations and patent processes and procedures will be discussed if necessary.

Marketing

IPSCE will assist the customer in finding potential companies that have the necessary resources, expertise, and business contacts to bring the licensed invention or potential invention to market.

Licensing

Once a patent application has been filed, IPSCE and the customer can begin seeking potential licensees. Prior to the filing of any application, it is imperative that the customer and any potential licensee enter into a confidentiality or mutual non-disclosure agreement. A license agreement is where the member grants a licensee the rights to make, use or sell any products or goods generated by the licensed invention. IPSCE will assist in the execution, and negotiation of the license agreement. In addition, the license agreement can also include copyrights, trademarks, bio-technology materials, research processes and technical documents.

The duration of a license agreement may extend for any number of years up to the life of a patent. The license agreement should have provisions that give the member the right to take back the technology, if the development of the invention it is not pursued in an aggressive manner; financial terms including a licensee fee and/or an up front payment; establishing at least minimum royalty percentages, as well as, royalty figures on the net sales of any license products or goods sold. The agreement will also provide the option of having non-exclusive, exclusive or co-exclusive rights. This agreement will also set forth that the licensee be granted sufficient time and rights to develop a product that will be both profitable and beneficial to the public.

Commercialization

IPSCE will provide the necessary tools, training and assistance to help colleges and universities to improve the quality of life, through enhanced research and development. It is a given that aggressive commercialization efforts will lead to the expansion of colleges and universities research opportunities. Also, this aggressive commercialization will pave the way for creating more job opportunities and positive economic development opportunities for the local community and the world.

Furthermore, this aggressive commercialization, allows the licensee to continue enhanced production and/or marketing of the licensed invention and its products.

Revenue

All revenues received by the customer from the licensees may be distributed in different percentages to colleges and universities, their departments and schools, and inventors as set forth by the license agreement under the royalty and distribution section. These different percentages allows for funding to be allocated to fund additional research, education, operations and encourage more participation in the technology transfer process through innovative thinking and training.

Forming A Business Start-Up

IPSCE will assist any customer as a part of the commercialization effort in planning, and creating the start-up of a small business or company. IPSCE will also assist in finding resources and funding for the new business start-up.