Faculty & Staff Involvement in the Technology Transfer Process
1. Contact the UIRF
We encourage informal contact by phone or email prior to submitting
a formal invention disclosure. An early discussion on research and publication
plans can help determine the need for formal disclosure, result in a
better evaluation, and reveal effective protection strategies that are
in line with publication needs. Together we will also determine steps
to increase the likelihood of commercial interest in the invention or
copyrighted work.
2. Submit an Invention Disclosure
For innovations and ideas that appear to meet the commercialization
criteria, we’ll request that you submit a formal invention document.
Copyright and invention disclosure forms gather information required
to assess, manage, and protect the intellectual property. Items in the
form include:
- An Abstract and Complete Description of the Invention. Patent counsel generally uses all available information for patent application drafting, such as any written description or documents on the invention or general subject area, and related manuscripts.
- Current State of the Invention. This helps determine the development stage of the innovation and any other research or testing needed to define claims and determine commercial attractiveness.
- Corporate Interest/Potential Licensees. Information on who may be interested in licensing the technology, or in providing research funding, and why.
- Dates of the Invention and Dates of Public Disclosure. Needed to determine if an invention can be patented. Information on public disclosure should include all information concerning publication, web site posting, presentations, and offers for sale.
- Research Sponsors. Under federal law, the UIRF is required to report to the government on inventions made and reduced to practice with federal funding. This information allows us to determine any sponsor rights. It’s also helpful to list suppliers of confidential information and/or proprietary materials, or other parties that may have been involved in the invention process.
- Information on All Contributors (Including VA appointments). This list should include all parties that contributed to the development of the invention or discovery. Patent ownership and copyright authorship is a legal determination. As such, researchers should include in this section all whom they think may be a co-inventor on the project. Detailed explanations of each person's contribution will help the UIRF and outside counsel determine ownership of the invention. Researchers with VA appointments, regardless of whether they are with or without compensation, must fill out a separate disclosure form for the VA. Information on disclosing to the VA can be found here.
- Witnessed Signatures of all UI Inventors.
3. Ongoing Dialog
Further clarification and assistance on the underlying research may
be needed during the process of invention evaluation. You may be asked
to expand or revise the Invention Disclosure form to best prepare for
the patent application and commercial evaluation.
4. Patenting
If a technology moves through evaluation and into the IP protection
stage, we’ll engage an outside patent attorney with relevant technology
expertise. The UIRF works closely with the patent attorney and the inventor
to draft and file a patent application. Inventors need to be clear and
complete in communicating information, which includes informing the
attorney of any disclosures, relevant references, and the best embodiment
of the invention. The USPTO requires that the "best mode" of performing
the invention known by inventors is to be disclosed at the time of filing.
5. Involvement in Licensing or Spinout Companies
The intended outcome for a promising technology or invention is social
good and return on investment. These can be achieved by partnering with
an already existing company through licensing or by developing a University
of Iowa spinout company. The decision on whether to license to an existing
company or to a spinout is based on a number of criteria, as discussed
further under the Commercialization
Process section. Regardless, the input and expertise of the researcher
is crucial. Licenses to established companies will likely result in
detailed technical inquiries, along with insights the researcher has
regarding the future use of the technology. Spinouts will likely require
the researcher’s intimate knowledge of the technology. Researcher
involvement is important in the successful development of most technologies.
6. Income Sharing
Under federal law, a portion of any net income resulting from an invention
funded with public money, e.g. NIH grant money, must be shared with
inventors. Regardless of public funding, The University of Iowa has
a policy to share invention net income with inventors/authors of University
of Iowa owned intellectual property. Under The
University of Iowa IP Polices , inventors/authors of disclosures
filed after February 28, 2005 are entitled to the first $100,000 in
net income after patent cost reimbursement, and 25% of all additional
net income (for disclosures received by the UIRF before February 28,
2005, inventors/authors receive 25% of net income at all levels). The
remaining net income supports the missions of The University of Iowa
and the UIRF through disbursement to departments, colleges, the Office
of the Vice President for Research, and to the UIRF, a self-supporting
organization.