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.
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 (patents and copyrights). 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.
If income results from transactions processed through UIRF, that are NOT associated with University of Iowa owned intellectual properties such as materials transfer, the income will be split 80% to the principal investigator's lab, 10% to the UIRF, and 10% to the principal investigator's department. If the PI is an HHMI Investigator, income will be split 5% to UIRF, 5% to HHMI, 10% to the UI department and 80% to the PI. A Fund 240 MFK will be established for the department and the PI to access the amounts distributed for their use, which is restricted to further the objectives of the grant program that supported the original research. Please refer to the Divison of Sponsored Program website for more information. UIRF suggests that all PI's to consider these factors when determining the cost of materials to be included in materials transfer agreements.