OTT works closely with the Office of Research and Sponsored Programs, the Baker Institute for Entrepreneurship and Creativity, the Office of Government Relations, Office of Economic Engagement, and faculty, staff, and students to facilitate dissemination of scholarly work through entrepreneurial and established business channels.
Intellectual Property or IP is an intangible asset that is from the creation of human intellect. U. S. Federal law defines what is eligible for protection and the rights granted to the owner of the IP, the owner being the author or inventor of the IP. Common rights granted to the owner are exclusive rights to protect aginst unauthoried use by others, meaning that the author/inventor of the creation/invention has the right to prevent others from using their specific creation/invention. IP is an artistic or scientific creation having many forms and depending on the federal law, creates a time and scope limited monopoly in the protected creation. The typical forms of intellectual property are:
- Trademarks (The Lanham (Trademark) Act 1946)
- Trade Secrets (Defend Trade Secrets Act of 2016 (DTSA))
- Copyrights (The Copyright Act of 1976)
- Mask Works (Semiconductor Chip Protection Act of 1984)
- Patents (U.S. Constitution, Article One, section 8, clause 8, U.S.C. Title 35, Recent Amendment:Leahy-Smith America Invents Act (AIA) 2012)
Technology Transfer is a term used to describe transfer of rights to use and commercialize new discoveries and innovations resulting from scientific research to another party. The major steps in this process include the disclosure of inventions, submitting a patent concurrent with publications, and licensing the rights to industry for commercial development.
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It is important to Disclose your invention before any public disclosure.
Public disclosure can seriously diminish the value and harm the potential for patent prosecution.
Most countries around the world view public disclosure of an invention as an absolute bar to getting an issued patent, with the exceptions of a few countries like the United States and Japan which have a 1-year grace period for filing a patent application after a public disclosure has occurred. The following are forms of public disclosure:
- Written published journal article
- Verbal presentation at a conference
- Poster presentation
- Discussions with a third party entity
Please Remember!
Industry loves to speak with faculy about their research, for many reasons, but mostly, you provide expertise and knowledge they don't have in-house. When discussing your research, a potential project, or an idea with a third party, it's always best to have a Confidential Disclosure Agreement (CDA) in place to protect your confidential information, very important.
If you can't get the CDA executed, and discussions are scheduled, please do the following:
- Speak about WHAT you can do, but not HOW you do it
- The WHAT is why they're interested, the HOW is the valuable part
Submit an Invention Disclosure
The Patent Filing Process is done within the Office of Tehcnology Transfer.
Like any legal contract between two parties, the licens agreement describes the consideration exchanged and obligations of the parties. The university (licensor) license agreement typically has financial and business terms that the company (licensee) must meet in order to maintain rights to practice the invention.
Common business and legal terms important in a univrsity license agreement include:
- Grant - The granting of the right to make, have made, use, import, sell, and offter for sale Lehigh Licensed Product(s) which are based on the technology intellectual property.
- Exlcusive or Nonexclusive Rights - The grant can be exlusive rights to the company, meaning that they are the only ones that can make and sell products based on Lehigh Licensed Product(s); or nonexclusive rights meaning that another company, or multiple companies, may receive the same right to make and sell Lehigh Licensed Product(s).
- Field of Use - The Field of Use (FOU) is the field that the company can develop and sell products in the market. A technology can have multiple applicants for products. The university can optimize the value of the technology by licensing to multiple companies exclusive rights for each different application. This is called a platform technology. Otherwise, if the technology has one application, only one company has exclusive rights to practice the invention in the FOU covering that one specific application.
- Upfront License Fee - The upfront license fee is a fee charged to the company for acquiring the license. This can vary depending on the level of development and funds used to create the invention. For established companies, the fee is always an amount of money, but for start-up companies, this fee can be equity ownership in the company.
- Running Royalty Rate - The Running Royalty Rate (RRR) is the percentage a company pays the university off the sales of the Lehigh Licensed Product(s). RRRs can vary depending on the type of technology and market where products are sold. As an example, Company XYZ makes a widget incorporating a Lehigh technology, and sells that widget for $100. The license agreement Royalty Rate for the sales of Lehigh Licensed Product(s) is 10%, then Company XYZ owes Lehigh $10 for each Lehigh Licensed Product(s) sold. Assuming Company XYZ has a total annual sales of widgets of $1,000,000, then Lehigh would receive $100,000 in royalty payments from Company XYZ for the year's sales of the widgets.
- Milestone Fees - A license agreement may have fees tied to milestones of sales, development, or regulatory accomplishments. The Milestone Fee is a one-time fee based on the success of achieving that specific milestone.
- Diligence Milestones - Diligence Milestones are goals set by the university to encourage the company to commercialize the technology into products. These milestones are obligations for the company to meet in order to maintain the rights to practice the invention and sell Lehigh Licensed Product(s). A typical milestone may be developing a prototype, first commercial sale of a product, or reaching a certain financial goal for sales of the Lehigh Licensed Product(s).
- Patent Expenses - The expenses to file, prosecute, and maintain the patents protecting the invention are paid by the company licensing the rights to practice the invention. Unreimbursed past patent costs that Lehigh has accrued over the time from filing to the "Effective Date" of the license agreement are typically paid upfront by the company. Future patent costs are paid by the company as they are invoiced to them from Lehigh for actions by an IP law firm and/or fees associated from a patent office for each country where a patent application was filed.
- Sublicensing Rights - An exlusive license typically has sublicensing rights to the licensee. This means that Company XYZ can license the rights they received from Lehigh to practice the invention to another third party entity. A company will do this if they receive exclusive rights for multiple FOUs, but are commercializing the technology for one application, and want to bring in revenue for Lehigh Licensed Product(s) sold in other FOUs by the other company. Lehigh receives a portion of the revenues from Company XYZ for sublicensing.
- Equity - As mentioned before, we can license the rights for Lehigh inventions fo an established company or a startup company. Since cash is very important for startup companies to use for development of the technology and their business operations, the upfront fee can be for development fo the technology and their business operations, the upfront fee can be in the form of equity ownership in the company. This means that Lehigh will be a minority owner in the company in the form of common stock. This initial ownership position can be protected from dilution of additional investment, but typically that has a limit to earlier funding rounds. This equity ownership position may at some point, and depending if the company is successful in developing a product and sustainable business operations, be subject to a liquidity event. The liquidity event can be either an acquisition by a larger company or Initial Public Offering. In either case, Lehigh's equity position can be cashed out and monies received for the value of the stocks. This revenue back to Lehigh will fall under the Lehigh Patent policy and a portion be distributed to the faculty inventor much like any revenue form the license agreement.
Close your eyes and imagine this: a world without stuffed crust pizza. We know!—but that was the dismal state of the Italian flatbread scene before 1985, when Anthony Mongiello, aka The Big Cheese, came up with an innovation that loaded even more cheese onto pizza, while saving crusts nationwide from the trashcan. It was a multi-million dollar idea, Mongiello was sure—if only he could figure out how to protect his intellectual property and license it. But can you copyright the recipe for stuffing the crust? Could that puffy, cheese-filled rim be trademarked, or the technique for making it qualify as a trade secret? Can you patent a pizza?
If you are working with Faculty, and have made a discovery, this is the time to complete an Invention Disclosure.
Before publishing, always remember to disclose your idea to the Office of Technology Transfer (OTT) by submitting an invention disclosure. We can file a provisional patent application the same day in order to protect your idea.