The process of technology transfer is summarized in the steps that follow. Note that these steps can vary in sequence and often occur simultaneously.
- 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.
- Pre-Disclosure: An early contact with OCR personnel to discuss your invention and to provide guidance with respect to the disclosure, evaluation, and protection processes described below.
- Invention Disclosure: The written notice of invention to OCR 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. An invention disclosure should be ideally be submitted before any disclosure of your technology outside of the Yale community.
- Assessment: The period in which you and your OCR representative review the invention disclosure, conduct patent searches (if applicable), and analyze the market and competitive landscape to determine the invention’s commercialization potential. The evaluation process, which may lead to a broadening or refinement of the invention, will guide our strategy on whether to focus on licensing to an existing company or creating a new business startup.
- Protection: The process in which protection for an invention is pursued to encourage third party interest in commercialization.Patent protection, a common legal protection method, begins with the filing of a patent application with the U.S. Patent Office and, when appropriate, foreign patent offices. Once a patent application has been filed, it will require several years and many thousands of dollars to obtain issued U.S. and foreign patents. Other protection options include copyright and trademark protection.
- Marketing: With your active involvement, OCR staff will identify candidate companies that have the expertise, resources, and business networks to bring the technology to market. This may involve partnering with an existing company or forming a startup. Your active involvement can dramatically shorten this process.
- Form a Startup: If creation of a new business startup has been chosen as the optimal commercialization path, OCR’s Director of New Ventures will assist in planning, creating and funding the startup.
- Existing Business Relationship: If an appropriate and interested existing business is identified as a potential licensee, OCR licensing specialists identify mutual interests, goals and plans to fully commercialize this technology through a license agreement.
- Licensing: A license agreement is a contract between Yale and a third party in which Yale’s rights to a technology are licensed (without relinquishing ownership) for financial and other benefits. A license agreement is used with both a new startup business or with an established company. An option agreement is sometimes used to enable a third party to evaluate the technology for a limited time before licensing.
- Commercialization: The licensee company continues the advancement of the 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: Set portions of the revenues received by Yale from licensees are distributed to the inventors, Yale and other institutions (in the case of jointly owned inventions) to fund additional research and education and to encourage further participation in the tech transfer process.