Assessment: #3 in the 8 steps of technology commercialization

What happens when OTC receives my invention disclosure?

After OTC receives your invention disclosure, the patent administrator or an assistant will contact you to confirm receipt. OTC assigns an ID number to every invention disclosure received and enters the technology into the OTC database. Based on the nature of its science, each invention is assigned to a licensing specialist who specializes in the field. The licensing specialist assumes responsibility for reviewing the technology with the principal investigator or responsible manager. Legal assistance may be sought to address issues regarding patentability of inventions.

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What factors does the university consider during assessment?

OTC examines each invention disclosure to assess:

  • The novelty of the invention
  • Marketability of potential products or services
  • Relationship to related intellectual property
  • Size and growth potential of the relevant market
  • The amount of time and money required for further development
  • Pre-existing rights associated with the invention
  • Potential competition from other products/technologies

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What is involved in commercial evaluation of a technology?

Without a market need, successful commercialization of an innovation is difficult. Therefore, OTC reviews each invention disclosure to determine the fit of the technology to the current marketplace. The licensing specialist often meets with the inventor(s) and conducts research to aid in the evaluation process, with information gathered from industry personnel, venture capitalists, and/or governmental/economic development contacts.

After reviewing the invention, OTC may sometimes suggest that patent prosecution and marketing be delayed to allow the technology and/or market to ripen. This, at least temporarily, brings the commercialization endeavor to a halt. However, OTC will welcome any future developments or new inventions the inventor might present.

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A brief background check on prior art is run to ensure novelty of the invention. A more thorough investigation of prior art may be done to address potential roadblocks to patent acquisition and enforceability.

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What are the possible outcomes of a technology assessment?
  • The university asserts its title. In this case, OTC will file a patent on the invention (unless it is to be handled on a copyright or trade secret basis) and begin actively marketing the invention. The initial patent filing is typically a U.S. provisional filing, but may be a U.S. non-provisional filing or a Patent Cooperation Treaty (PCT) filing.
  • OTC requests additional enabling data with respect to the invention.
  • OTC closes the file. The file will be closed if:
    • The inventor(s) are unable in the near term to provide enabling data. Note that file closure does not preclude the inventors from later submitting a new invention disclosure form when enabling data is available.
    • The invention disclosure does not contain patentable subject matter.
    • A determination is made with the principal investigator or research manager to combine the invention disclosure with another disclosure.
    • A decision is made with the principal investigator or research manager to allow the invention to go into the public domain.

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What if an invention is federally funded?

Assignment of inventions funded from U.S. government sources requires the prior approval of the sponsoring agency. Certain agencies may have additional requirements.

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