Thomas Family Center for Entrepreneurship

Technology Transfer

1. General Technology Transfer Process

The transfer of technology to industrial partners is the first step in achieving the intent of technology transfer. At the most basic level, companies looking to implement new technology must recognize the value of a technology to their business and be willing to make the investments necessary to bring it to the market. Intellectual property protection in the forms of patents, copyrights, and trademarks provide licensees with the security they require to justify the substantial investments necessary to transition these concepts into new products for the marketplace. Technology commercialization is a process that starts with an initial discovery and ultimately leads to license agreements to industry and their development of new products that are accessible to the public. The general process is: 

1.1 Research: The work done in university facilities should constantly generate new discoveries, many of which could be classified as an invention. Commonly known inventions include new drugs, new medical or non-medical devices, and new software programs. Less commonly known inventions, but frequently of equal importance, are methods of making, using or administering drugs, combinations of different technologies that make up a novel device, and new ways to use software.

1.2 Disclosure: This early step may be the most important in the commercialization process. A good technology disclosure includes a complete description of the technology and inventions along with supporting data. This information can be provided in manuscripts, grant applications, poster presentations, or other formats. In addition, the disclosure helps define the products and applications that can come from the invention, as well as potentially competitive technologies. A Patent Disclosure Form contains very specific questions that can guide preparation of the disclosure and must accompany each disclosure.

1.3 Assessment: Following submission of a disclosure, an evaluation is performed to guide intellectual property protection and commercialization strategy. The evaluation of the disclosure will be based on the following criteria:

1.3.1 Technical Merit: What is it? What is the stage of development? Are there competing technologies?

1.3.2 Type of protection necessary: Is a patent or copyright appropriate?

1.3.3 Have others conceived of the same or similar inventions?

1.3.4 Is other intellectual property required to practice this new invention?

1.3.5 Commercial Potential: What are the applications of the technology? What commercial markets does it address? Does an existing product address the same market needs? Who are possible licensees or competitors?

The assessment of technology disclosures is most effective when the inventors are involved with the process. Despite a staff's expertise with a wide variety of technologies, there is no better expert on a disclosure than the inventor. Inventors will be met with early in the disclosure process to ensure a complete understanding of the invention and its applications in the marketplace. It is important to keep in mind that following the assessment, some technology disclosures do not proceed to the intellectual property protection stage. Protectability considerations are the factors that most frequently impact this decision.

1.4 Intellectual Property Protection: Following the decision to proceed with protection, outside intellectual property counsel might be engaged to prepare the patent applications or copyright materials required to protect the invention. Attorneys are selected based on their technical expertise and prior experience with similar inventions. Inventors play a critical role in this process. They must work closely with counsel to review and comment on applications initially, as well as, assist counsel in arguing the uniqueness and merits of the invention before the patent office. The direct participation of the inventor can sometimes be the key factor in the issuance or rejection of a patent.

1.5 Commercialization Strategy: The technology that researchers develop will not benefit the public without a commercial partner. Hence the staff must actively seek to establish the necessary relationships that will result in the adoption of technologies by a commercialization partner that will ultimately bring the invention to the marketplace. Typically, two types of partners are available that can perform this function: established companies or new companies that are created to commercialize a particular technology. In either case, the staff seeks to negotiate a licensing agreement that gives the company the rights to use the technology. There are no hard and fast rules about which type of company is a better licensee, but some factors have historically provided good guidance in this regard. Typically, if a technology represents an evolutionary change over existing technologies and could fit into an established company's research and development program, a license to an established company is likely to be the best route for commercialization. If a technology represents a revolutionary change to existing technology, could spawn multiple products, or is disruptive to an industry, creating a new venture to commercialize the technology is frequently the right choice. In order to be considered as a potential licensee a new company (commonly referred to as a start-up) must have industry experienced management and a reasonable likelihood of obtaining the necessary financing to fund the company. If a qualified licensee is found, the staff works with the company (established or start-up) to negotiate the terms of a license. Financial terms of licenses typically include compensation in the form of cash and/or stock, which is paid over the duration of the license as initiation fees, maintenance fees, payments for achieving development milestones, and royalties on sales. There is no single fixed formula for the value of university licenses and the value of a license depends on a variety of factors like the stage of development of the technology, markets impacted, and product competition. Following completion of the license agreement, income paid by the licensee is distributed to the inventors and university stakeholders according to the existing Patent Policy or Copyright Policy to perpetuate the research process.

2. Overview of UNCP Office of Technology Transfer

Innovation is the key determinant of economic growth and an essential element for entrepreneurship in an era of rapidly increasing global competition. This Nation's economic future is dependent upon the ability to leverage both research and development for the creation of commercial opportunities. Universities have long been involved in the transfer of knowledge and technology through publication of research results in scientific journals, education of students, and consulting for other organizations. While scientific discoveries have and will always be shared within disciplinary communities, it is the university technology transfer function that enables these discoveries to flourish and realize full potential within local and global economies.

The UNCP Office of Technology Transfer (OTT) is responsibility for managing activities instrumental to determining and fostering the marketability of an invention including obtaining legal and industry counsel, engaging marketing and focus research, contracting for the development of prototypes, and all else necessary to comprehensively and optimally market inventions under its sphere of control.

The intent of the OTT is to transfer inventions and innovative knowledge to outside organizations for the benefit of society. OTT will serve as a bridge between UNCP researchers and the business community. Through technology transfer, innovations may be incorporated into products and services that directly benefit society, as well as research and education at UNCP. The OTT will support:

2.1   invention disclosure;
2.2    protection of UNCP's intellectual property;
2.3    obtaining and managing patents and trademarks derived from UNCP’s research;
2.4    marketing and licensing UNCP's intellectual property to established companies as well as new business ventures for product development and commercialization;
2.5    a comprehensive technology transfer system to support UNCP’s research and inventions;
2.6    the economic growth by forging closer ties with industry and launching new ventures based on UNCP's technology;
2.7    the attraction, retention, and rewarding of faculty, students, administration, and staff;
2.8    the generation of income for future research, development, and education.

Intellectual Property Committee Documents