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TECHNOLOGY TRANSFER PROCESS

What is “intellectual property” (IP)?
Intellectual property is an invention and/or material that may be protected under the patent, trademark or copyright laws.

What are the steps to commercializing Clemson intellectual property?

RESEARCH: Observations and experiments during research activities often lead to discoveries and inventions. An invention is any useful process, machine, composition of matter, or any new or useful improvement of the same. Often, multiple researchers may have contributed to the invention.

INVENTION DISCLOSURE: An invention disclosure is the written notice of invention that begins the formal technology transfer process. An invention disclosure remains a confidential document and should fully document your invention so that the options for commercialization can be evaluated and pursued.

REVIEW and ASSESSMENT: Your invention disclosure will be submitted and presented to the Clemson University Intellectual Property Committee for review. The Committee will determine if Clemson has an ownership interest in the invention and will recommend actions for CURF. A CURF representative will be assigned to your disclosure and will work with you through the commercialization process.

PROTECTION: Patent protection, a common legal protection method, begins with the filing of a patent application with the U.S. Patent and Trademark Office and, when appropriate, foreign patent offices. Once a patent application has been filed, it will typically require several years and tens of thousands of dollars to obtain issued U.S. and foreign patents. Other protection methods include copyrights, trademarks and trade secrets.

MARKETING: With your active involvement, your CURF representative will identify candidate companies that have the expertise, resources and business networks to bring the technology to market. This may involve licensing the technology to an existing company or forming a start-up company.
LICENSING: A license agreement is a contract in which rights to a technology are licensed to a third party, without relinquishing ownership, for financial and other benefits. A license agreement is used with both a new start-up business or with an established company.
COMMERCIALIZATION: The licensee continues the advancement of technology and makes other business investments to develop the product or service. This step may entail further development, regulatory approvals, sales and marketing support, training, and other activities.
REVENUE: Revenues received from licenses are distributed to units, university administration, and inventors to fund additional research and education and to encourage further participation in the technology transfer process. Clemson University’s Intellectual Property Policy governs distribution of revenue received by CURF from licenses.

How long does the tech transfer process take?
The process of protecting technology and finding the right licensing partner may take months – or even years – to complete.

How can I help this process?

• Contact CURF when you believe you have created or discovered something unique with potential commercial or research value.
• Complete and submit the Confidential Invention Disclosure Form before publicly disclosing your technology or submitting a manuscript for review and publication.
• Contact CURF before holding any discussions with people outside of the Clemson community.
• Respond to CURF and outside patent counsel requests.
• Keep CURF informed of upcoming publications or interactions with companies related to your intellectual property.

RESEARCH

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Will I be able to publish the results of my research and still protect the commercial value of my intellectual property?
Yes, but since patent rights are affected by these activities, it is best to submit an invention disclosure well before communicating or disclosing your invention to people outside Clemson.

May I use material or intellectual property from others in my research?
Yes, but it is important to document carefully the date and conditions of use so that CURF can determine if this use may influence the ownership and license rights of your subsequent research results. A Material Transfer Agreement must be completed for any materials that are transferred into or out of Clemson.

Will I be able to share materials, research tools or intellectual property with others to further their research?
Yes. However, it is important to document items that are to be shared with others and the conditions of use.

What rights does a research sponsor have to any discoveries associated with my research?
The Sponsored Research Agreement should specify the intellectual property rights of the sponsor. Clemson generally retains ownership of the patent rights and other intellectual property resulting from sponsored research. However, the sponsor may have rights to obtain a license to the defined and expected outcomes of the research.

What is Clemson’s policy on ownership of intellectual property?
Clemson’s policies regarding intellectual property ownership can be found on the CURF Policies and Procedures page.

INVENTION DISCLOSURE

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Why should I submit a Confidential Invention Disclosure Form?
When you disclose your invention, it starts a process that could lead to commercialization of your technology. If government funds were used for your research, you are required to file a prompt disclosure, which will be reported to the sponsoring agency. Similar requirements may exist for other sponsored projects.

How do I know if my discovery is an invention?
You are encouraged to submit an invention disclosure for all inventions and developments that you feel may solve a significant problem and/or have significant value. If you are in doubt, contact CURF to discuss the invention and strategies for commercialization.

When should I complete an invention disclosure?
You should complete an invention disclosure whenever you feel you have discovered something unique with possible commercial value. This should be done well before presenting the discovery through publications, poster sessions, conferences, press releases, or other communication. Once publicly disclosed (i.e. published or presented in some form), an invention may have restricted or minimal potential for patent protection outside of the United States. Differences exist between the U.S. and other countries on the impact of early publication on a potential patent. Be sure to inform CURF of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal, dissertation/masters thesis, publication, or other public presentation including the invention.

Should I disclose research tools?
Yes, if your new tools would benefit other researchers and you are interested in providing them to researchers and to other third parties.

How do I submit an invention disclosure?
You can download a Confidential Invention Disclosure Form from the CURF Forms and Agreements page.

Who is considered an inventor for the purposes of tech transfer?
An inventor is an individual who has made a contribution to the conception of an invention.
If two or more persons work together to make an invention, and each had a share in the ideas forming the invention, they are joint inventors. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor.

Should I list visiting scientists or scientists at other institutions on my invention disclosure?
All persons that may have contributed to the ideas leading to a discovery should be mentioned in your disclosure, even if they are not Clemson employees.

REVIEW AND ASSESSMENT

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How are invention disclosures assessed?
Each invention disclosure is submitted to a subcommittee of the Clemson University Intellectual Property Committee to review the novelty of the invention, protectability and marketability of potential products or services, relationship to related intellectual property, size and growth potential of the relevant market, amount of time and money required for further development, pre-existing rights associated with the intellectual property, and potential competition from other products/technologies.

If the inventors believe that all intellectual property should be licensed non-exclusively to all potential users for the public good, will Clemson honor our request?

CURF will work with you to develop the appropriate commercialization strategy for the invention. We will try to accommodate inventors’ commercialization wishes. The final decision, however, will be determined by our assessment of which strategy will produce the most benefits for the general public, consistent with governmental or institutional policies and other obligations.

Is an invention ever assigned to an inventor?
If Clemson decides not to pursue patent protection and/or CURF chooses not to continue actively marketing an invention, rights in an invention may be transferred to an inventor according to the Clemson University Intellectual Property Policy. Reassignment of inventions funded from U.S. Government sources requires the Government’s prior approval.

PROTECTION

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What is a patent/copyright/trademark?
For general information concerning intellectual property, including patents, copyrights and trademarks, please see the Office of Technology Transfer Intellectual Property page or the Clemson University Library Patent and Trademark Depository Library page.

Who is responsible for patenting?
When the Clemson University Intellectual Property Committee recommends that CURF proceed with protecting and commercializing and invention, CURF contracts with outside patent counsel for intellectual property protection, thus assuring access to patent specialists in diverse technology areas.

Why does Clemson protect only some intellectual property through patenting?
Due to the expense and the length of time required to obtain a patent, patent applications are not possible for all Clemson intellectual property.

Who decides what gets protected?
The Clemson University Intellectual Property Committee assesses each invention disclosure submitted and makes decisions regarding protection and commercialization.

What if I created the invention with someone from another institution or company?
If you created the invention under a sponsored research or consulting agreement with another institution or company, your CURF Technology Commercialization Officer will need to review that contract to determine ownership and other rights associated with the contract. The contract terms will be provided to the Clemson University Intellectual Property Committee to consider in their assessment of the invention. Your CURF Technology Commercialization Officer will work with the other institution or company to negotiate the appropriate agreement addressing protection and commercialization of the invention.

Will Clemson initiate or continue patenting activity without an identified licensee?
Yes. Often a patent application is filed before a licensee has been identified. At times, CURF must decline further patent prosecution after a reasonable period of attempting to identify a licensee.

MARKETING

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How does CURF market my inventions?
CURF Technology Commercialization Officers use many sources and strategies to identify potential licensees and market inventions, such as existing relationships of the inventors, the CURF staff and other researchers, market research, other complementary technologies and agreements, the CURF website, and faculty publications and presentations.

How are most licensees found?
A majority of licensees are known to the inventor prior to licensing. Thus, research and consulting relationships are often a valuable source for licensees. Licensees are also identified through existing relationships of the CURF staff.

How long does it take to find a potential licensee?
It can take months and sometimes years to locate a potential licensee depending on the attractiveness of the invention, its stage of development, competing technologies, and the size and intensity of the market.

How can I assist in marketing my invention?
Your active involvement can dramatically improve the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies.

What if I as an inventor or other faculty I have an interest in involvement with a start-up company around a Clemson technology?
Contact CURF of your interest and a Technology Commercialization Officer can discuss the steps that are involved and provide some helpful resources and contacts.

Can there be more than one licensee?
Yes, an invention can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies each for a unique field-of-use (application) or geography.

LICENSING

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What is a license agreement?
License Agreements describe the rights and responsibilities related to the use and exploitation of intellectual property.

How is a company chosen to be a licensee?
A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established company with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a start-up company is a better option.

What can I expect to gain if my intellectual property is licensed?
A share of any financial return from a license is provided to the inventor(s).

What is the relationship between an inventor and a licensee, and how much of my time will it require?
CURF does not require an inventor’s participation with a licensee in the commercialization of an invention. Licensees may request the active assistance of the inventor to facilitate their commercialization efforts, especially in the early stages of development. This can range from infrequent, informal contacts to a more formal consulting relationship.

What is a start-up company and why choose to create one?
A start-up is a new business entity formed to commercialize one or more related inventions. Forming a start-up company is an alternative to licensing the intellectual property to an established business. A few key factors when considering a start-up company are:
• Development risk (often companies in established industries are unwilling to take the risk)
• Potential for multiple products or services from the same technology (few companies survive on one product alone)
• Sufficiently large competitive advantage and target market
• Potential revenues sufficient to sustain and grow a company

Who decides whether to form a start-up?
An inventor may choose to establish a new company to commercialize intellectual property. Inventors can contact CURF for information and resources useful for starting a new business venture.

What assistance and resources are available to the inventor?
For information regarding resources available to inventors, contact CURF or visit the CURF Resources page.

What role does an inventor usually play in a company?
Clemson inventors typically serve as technology consultants, advisors or in some other technical development capacity.

How much of my time and effort will it take?
Starting a company requires a considerable amount of time and effort. Until the start-up team is identified and engaged, the faculty member will need to champion the formation effort.

Can CURF accept equity in the company?
CURF can accept equity as part of the financial terms of the license.

Will Clemson or CURF pay for incorporating a start-up company?
No. As a separate entity, the start-up must pay for its own legal matters, including all business incorporation matters and licensing expenses.

What legal assistance is needed in creating a start-up?
In addition to corporate counsel, the start-up may have its own intellectual property counsel to assist with corporate patent strategy, especially if the company will be involved in a patent-rich area. The start-up’s counsel must be separate from Clemson or CURF counsel. Also, it is wise for inventors to have agreements regarding their roles with the start-up reviewed by their own counsel.

COMMERCIALIZATION

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What activities occur during commercialization?
Most licensees continue to develop an invention to enhance the technology, reduce risk, prove reliability and satisfy the market requirements for adoption by customers. This can involve additional testing, prototyping for manufacturability, durability, and integrity, and further development to improve performance and other characteristics. Documentation for training, installation and marketing is often created during this phase. Benchmarking tests are often required to demonstrate the product/service advantages and to position the product in the market.

What is my role during commercialization?
Your role can vary depending on your interests and involvement, on the interest in the licensee in utilizing your services for various assignments, and on any contractual obligations related to the license or on any personal agreements.

What revenues are generated for Clemson if commercialization is successful?
Most licenses have licensing fees that can be very modest or can reach hundreds of thousands of dollars. Royalties on the eventual sales of the licensed products can generate revenues. Equity, if included in a license, can yield returns.

What will happen to my invention if the start-up company or licensee is unsuccessful in commercializing the technology? Can the invention be licensed to another entity?
Licenses typically include performance milestones that, if unmet, can result in termination of the license. This termination allows for subsequent licensing to another business.

REVENUE

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How are license revenues distributed?
CURF is responsible for managing the expenses and revenues associated with technology agreements. Revenues from license fees, royalties and equity – minus any unreimbursed patenting, filing, and marketing expenses – are shared with inventors.

What are the tax implications of any license revenues I receive from CURF?
License revenues are typically taxed as Form 1099 income.

What happens to my share of licensing revenue if I redirect it, or waive rights to it?
Revenues waived by inventors are distributed to the associated school/college and department/unit.

How are inventor revenues distributed if there are multiple inventors and/or multiple inventions in a license?
While there may be some variation in the procedure, typically when a invention disclosure is submitted, a revenue distribution plan is created to document the formula used to distribute any subsequent revenues.

How is equity from a license distributed?
When CURF equity is liquidated, the resulting funds are distributed in accordance with the revenue distribution plan and Clemson policy.

*Note: These FAQs are based on the “Inventor’s Guide to Technology Transfer” published by the University of Michigan with adaptations for Clemson University and the Clemson University Research Foundation. We are very thankful to the University of Michigan Tech Transfer staff for their permission to use this material and to the University of Michigan for the use of its copyright.