Technology Transfer

What is technology transfer?

At UNMC, technology transfer is the process of moving research from the bench to the bedside. Inventions, ideas, knowledge, skills and discoveries are shared with individuals in other organizations as a result of technology transfer.

Why should I participate in technology transfer?

In addition to other benefits, technology transfer activities can protect and draw attention to your discoveries, attract commercial support for your research, safeguard your future research, and move your inventions into commercial use for public good.

What is UNeMed?

UNeMed is a University of Nebraska company that is tasked with collecting, protecting, evaluating and commercializing discoveries from UNMC research.

 

Agreements

What is a Material Transfer Agreement (MTA)?

MTAs are contracts which specify what the recipient can and cannot do with the materials or information being exchanged. When used properly, MTAs can enhance your future research, publications and inventions. Not utilizing MTAs or agreeing to unfavorable terms within an MTA can have a detrimental impact on your research or even prevent you from moving forward in the direction you prefer. MTAs can only be signed by the designated UNMC administrator. Contact UNeMed whenever you receive an MTA or believe one may be needed.

What is a Confidential Disclosure Agreement (CDA)?

Also known as a Non-Disclosure Agreement (NDA), a CDA is a contract for the protection of proprietary information. CDAs require one or both parties to keep specific information confidential. Without a CDA, the individual or company receiving your information is free to use and transmit this information to others. CDAs help preserve the value of your invention or other intellectual property.

How is the license income distributed to University inventors?

Per UNMC Policy 7001, UNeMed recovers sunk costs (mostly patent expenses) and retains a 10% administrative fee for overhead costs (salaries, equipment, office supplies, etc.). One third of the remaining net proceeds are distributed to University inventors directly responsible for the creation of the licensed intellectual property. The remaining two-thirds is distributed to UNMC and used to support further research on campus.

 

Inventions

What is an invention?

An invention is a new discovery, concept, design, devise, composition, system or software program.

When should I report my invention to UNeMed?

It’s best to report your invention after you have supporting data and before you publish or otherwise describe your invention to someone outside the University of Nebraska. When in doubt, contact a UNeMed licensing specialist to discuss your particular circumstances.

Who owns the invention and any resulting patents?

According to the Board of Regents Policy 4.4.2 “Each invention by a member or members of the faculty or staff of the University resulting from performance of duties within the scope of University employment, or resulting from the use of University personnel, property, facilities, or other University resources, except where such use is minimal, shall be solely owned by the University.” The corresponding patents are also owned by the Board of Regents. To document this ownership, inventors are asked to sign Assignments.

Who is an inventor and how is inventorship defined?

Inventorship is a matter of law and involves conception as well as certain aspects of reduction to practice. Conception can occur at a variety of levels – from the broad conception of an idea to the more specific conceptions which occur during reduction to practice. For legal purposes, it doesn’t matter at what level conception occurred – all are treated equally in terms of qualifying an individual as an inventor.

Is a grant proposal considered public disclosure?

Yes, your funded grant proposals are considered public disclosure and therefore qualify as prior art for patenting purposes. Guidelines for protecting proprietary information in your grant applications can be obtained from UNMC’s Sponsored Programs Administration.

How are inventions assessed?

UNeMed considers many factors when assessing inventions including: commercial potential, stage of technology development, patentability, partnerships, federal funding and the inventor’s commitment to future research. UNeMed utilizes the expertise of various professions as needed to complete each evaluation.

 

Patents

What makes an invention patentable?

To be patented, an invention must: 1) be novel, 2) have utility, and 3) be non-obvious. To be novel, the invention must be new. This means that the invention must be different in some way from all other ideas that have already been disclosed to the public in any form (publications, presentations, posters, dissertations, etc.). To have utility, the invention must perform some useful function and benefit society in some manner. Lastly, the invention must not be obvious to anyone knowledgeable in that area of science or be an obvious extension of prior art.

Who writes the patent application?

UNeMed engages a wide variety of outside patent counsel to write and prosecute patent applications on the University’s behalf. All of these attorneys are experienced in patent prosecution and are experts in a specific area of science. The majority of these patent attorneys have doctorate degrees and conducted research in industry and/or academia before attending law school.

What will be expected of University inventors during the patenting process?

Inventor participation in the patenting process results in better patents. Overall, University inventors are encouraged to participate in the patenting process to the extent they are able. Inventor participation is needed at some stages of the process including: reviewing draft patent applications, signing necessary legal documents such as Declarations and Assignments. reviewing lists of known prior art references for inclusion in an Information Disclosure Statement, and during the prosecution process when the Examiner request additional data, clarification, etc.

Why are patent applications written in a specific format?

The United States Patent and Trademark office requires that patent applications contain specific sections and designates both the content and order in which these sections may appear in the patent application.

How long will it take to obtain a U.S. patent for my invention?

The entire process will take 3-7 years. After the patent application has been filed it will take 2-4 years before an Examiner at the United States Patent and Trademark Office reviews the application. Then there will be another 1-3 years of patent prosecution in which the applicant and Examiner exchange comments regarding the patentability and scope of the invention.

How much will it cost to obtain a patent and who will pay?

The cost of a U.S. biotech or biomedical patent typically ranges from $12,000 to $22,000. The University will pay all legal expenses and fees related to the patent application. However, these costs will be recovered later from future licensees.

What is the difference between a provisional patent application and other U.S. patent applications?

Provisionals are a procedural type of patent application which cost less than other types of patent applications to file, but never issue as patents. Provisionals have a one year life span during which a second, nonprovisional patent application must be filed to protect the technology described in the provisional application. There is much more flexibility in the formatting of provisional applications than with other types of patent applications.