Intellectual Property Protection Process
Research is often funded through federal, state, or private grants. For more information please contact the Proposal Development & Assistance department within the Office of Research and Commercialization.
Congratulations, you have done it! Your research has resulted in a new and novel technology and you are ready to publish your findings and present your technology publicly. Wait! Be sure to contact our office first, so you do not lose the ability to protect the intellectual property you’ve created.
Inventor Submits Invention Disclosure
Once you, the inventor, have made the discovery and / or created the work, it is best to formally document your intellectual property by submitting an Invention Disclosure to the OTT. This creates a record of the invention that can be used in the process of protecting your intellectual property. It is also useful to our campaign to promote the invention.
The Invention Disclosure should include a non-enabling abstract. This is a brief statement of the invention and should use layman’s terminology so that it can be understood by someone outside of your field of study. Remember, this is a non-confidential description of what your idea will do, not necessarily how it will do it so do not disclose the secret sauce.
OTT Team Reviews and Evaluates Invention
Once your Invention Disclosure is received by our office, it is digitally recorded with an electronic number, and then assigned to the licensing associate who will manage the invention through the rest of the protection and commercialization process. The licensing associate will schedule a time to meet with you to discuss your invention in order to construct a preliminary evaluation of feasibility, novelty, potential applications, and market potential. Our Technology Commercialization Committee then reviews the Invention Disclosure, talks with the licensing associate, conducts market research, and preliminary prior art searchers in order to make a recommendation to the VP of Research on whether or not UCF should elect title and file for intellectual property protection.
To Protect / Not to Protect
Each Invention Disclosure is carefully reviewed and researched by a team of experts in several scientific disciplines and proficient in industry analysis. The recommendation to elect title and file for intellectual property protection, or not to elect title, is based on many factors including, but not limited to: feasibility, novelty, potential market applications, limitations, risks, safety, prior public disclosure, competitive landscape, and prior art. If our team does not recommend to elect title, the inventor may still have other options. The licensing associate working with you and your discovery can discuss these options with you.
You will be notified of the University’s decision within 120 days from receipt of disclosure whether or not the university will elect title and file for intellectual property protection.
Intellectual Property Protection
There are generally three types of intellectual property protection: Patent, Trademark, or Copyright. Trade secrets are also a type of intellectual property but they are only protectable while they remain a secret. Therefore, trade secrets do not have a formal registration or application procedure, so we will not cover them here. When our team chooses to move forward with filing IP protection, it is often in the form of a patent. The process of receiving an issued patent can be long and tedious. The patent process typically looks like this:
- File provisional patent application/
- No later than one year after the provisional patent application, file non-provisional application.
- UCF receives published patent application.
- USPTO conducts an examination of the published patent application. If the examiner issues an Office Action rejecting the application, the applicant (UCF, working with the inventor(s)) can reply with amended claims, newly added claims, objections to the rejection, and requests for reconsideration and appeals as necessary. If the objections of the examiner are overcome, USPTO sends Notice of Allowance and Fee(s) due.
- UCF receives issued and published patent.
Timeline The timeline for the technology transfer process can vary. First, it takes time to evaluate all aspects of an invention, its application, prior art review, the potential for a successful patent, and marketing. Then, the issuance of a patent generally takes from 18 to 36 months. However, licensing and marketing efforts can occur concurrently.
The Commercialization Process
We can begin searching for an industry home for the invention once we file a patent application. A team of technical writers prepares a Tech Sheet, or marketing summary, that includes the invention’s advantages, background, potential applications, and the names of the lead inventors. Concurrently, a team of market researchers works with the licensing associate to identify potential industry partners in the field of use for the invention to license the technology from UCF. The Tech Sheet is then marketed to the identified potential industry partners.
A license agreement authorizes the licensee (industry partner / startup company) to use or practice the intellectual property owned by the licensor (UCF). In keeping with President Hitt’s 5th strategic goal for UCF, the OTT’s primary objective when negotiating license agreements is to, “Be America’s Leading Partnership University™.” Our goal is to maximize the potential for university research to reach the market. Sometimes an executed license agreement may need to be amended based on product development needs, milestones, etc.
This is where your invention enters the marketplace. The licensing associate monitors the milestones set in the license agreement for product development and sales.
Once the technology is licensed, revenue is generated through license fees and royalties. Fees and royalties are calculated using a standard royalty rate of the net wholesale generated by the technology.
Distribution of royalties follows the standard policy in place at UCF. Cumulative net income (gross royalties minus direct costs of patenting, licensing, legal, and other related expenses) resulting from inventions (excluding books) to which UCF takes title currently is divided according to the following:
Recipient $1-100K $101K-$199K >$200K Inventor(s) 50% 40% 30% Dean of Inventor’s College* 20% 24% 28% Inventor’s Department* 20% 24% 28% UCF Research Foundation 10% 12% 14%
*Does not apply to colleges and departments who already have a prior negotiated royalty split.
Reinvest in Research and Education
Once the administrative costs of protecting the intellectual property have been deducted, revenue gained through license agreements is distributed to the inventor(s), the inventors’ college and department, and to the Office of Research and Commercialization for the continued advancement of research and education.