FAQ

General Guidelines University Policy UChicagoTech Inventions & Disclosures
Patents & Intellectual Property Marketing Revenues and Revenue Sharing Inventor Answers

General Guidelines

What is technology transfer?

Technology transfer, in our context, is the licensing of intellectual property rights (e.g. patents on university-made inventions, copyrights for university-developed software) to the for-profit sector for purposes of commercialization. Technology transfer is a mechanism for dissemination of knowledge, inventions, and discoveries.

Why transfer technology?

In certain fields, it can be particularly effective for broad scale dissemination, and for enriching and accelerating the discovery process. (See Success Stories.) Absent the technology transfer mechanism, some discoveries of great potential public benefit would remain largely undeveloped, even though freely available to all through the publication process. The existence of a statutory form of intellectual property allows the granting of exclusive or non-exclusive rights to commercial entities through the licensing process. A degree of exclusivity in a field allows for the investment of funds in technology and market development in anticipation of a return on that investment. Any financial returns to the University are reinvested in research.

What are the rewards of technology transfer?

The broad scale dissemination that can result from successful commercialization may greatly benefit the public. The potential of your work can be maximized. There can be satisfaction and new insights gained from intellectual exchange and collaboration with industrial partners. The process may attract additional financial sponsorship opportunities for your work, and financial rewards for you personally. The economy can benefit as well. Surveys have indicated that licensing of University inventions is a major driver of new product introductions and new company formation. Many countries are attempting to replicate the success of the process observed in the U.S.

Is this optional?

Disclosure of inventions to the University is required by both the University statutes and as a condition of research support contracts (especially federal research monies). After disclosure however, the level of involvement of inventors is optional. Inventor desires in this regard will be a component of our evaluation process and commercialization strategy.

How much time does it take?

The initial meeting with UChicagoTech may take an hour or two. (See Process.)

To work with the University to file a patent will mean your involvement working with a patent attorney, which the University selects, for usually about 10-20 hours over a 2-4 week period. Once a US patent application is filed, it usually takes 2-4 years to obtain. During that period, occasional communications or "office actions" may be received from the patent office, which require responses. Often assistance from the inventors is required for a few hours each time to help the patent attorney respond.

The time you devote to working with UChicagoTech through the licensing process is largely up to you.

Will the process in any way inhibit my research?

No. All our licenses reserve rights for research purposes and protect the right to publish freely. Although the inventor plays a central role in the preparation of a patent application, all other activities, including continued patent prosecution and licensing, are handled by the University. All costs of the commercialization process are borne by the University.

What is the likelihood of commercial success and riches?

While blockbuster success is rare, there are reasonable chances of modest success. In a typical year, UChicagoTech may currently receive close to 100 invention disclosures, file 50 new patent applications, execute between 30 and 40 new license agreements, and collect and distribute about $3m in royalties and other revenue.

How long do most university technologies take to come to fruition?

Most university technologies are early stage, and will not come to fruition in product form or be widely accepted in the marketplace for 5, 10, sometimes 15 years.

What is the Federal Government's view of tech. transfer?

From the national perspective, technology transfer is enabled under the Bayh-Dole Act of 1980 that provides institutional recipients of federal R&D funds the right to retain ownership of their patents and charges them with the responsibility to ensure commercial use of inventions created with federal financial support. The underlying tenet of the Bayh-Dole Act is that federally funded inventions should be licensed for commercial development in the public interest. Both nationally and regionally, this activity is increasingly regarded as an important driver of economic growth.

Does commercializing technology compromise the University's mission?

Commercializing technology represents an additional, sometimes very effective way of disseminating knowledge and discoveries. As such it can enhance the University's mission.

University Policy

What about foundation funding and material transfer agreements?

Sometimes third parties expect rights to inventions, data or even control over publication in return for providing funding or materials to University researchers. UChicagoTech and University Research Administration collaborate closely in negotiating these provisions in order to protect researcher’s and the University’s interests. You can find a brief summary of the issues on this page. You can mouse over "view" to see more detail.

Who owns University faculty and staff inventions?

The University has the right under its statutes to retain ownership of its researchers' inventions and discoveries. The Bayh-Dole Act of 1980 charges us with the responsibility to ensure commercial development of these inventions for the public interest. [See Patents and Ownership section of Policy Guide]

Who owns work done by others?

In situations where the University is hiring an outside individual or company to perform some work or assist in a project, it may be desirable to have the University retain ownership of all resulting intellectual property. The following sample contract language should accomplish that task when used in the appropriate work contract. Feel free to modify this language or consult with UChicagoTech as necessary.

Ownership of Work Product.
CONTRACTOR and UNIVERSITY intend that any and all products and results of the Services ("Work") rendered by CONTRACTOR hereunder, including, without limitation, all source code, object code, software and other copyrightable materials, and patents and patentable inventions, will be works made for hire, and that all such Work (and all rights therein, including, without limitation, patent rights and copyright) belong to and shall be the sole and exclusive property of the UNIVERSITY. If for any reason such Work shall not be considered a work made for hire under applicable law, CONTRACTOR hereby assigns to UNIVERSITY all right, title, and interest in all Work, including all copyrights and patent rights therein. As a result, UNIVERSITY will retain full ownership of all Work that CONTRACTOR provides to UNIVERSITY pursuant to this Agreement.

UChicagoTech

What's the relationship between UChicagoTech and ARCH Development Corporation?

ARCH Development Corporation was founded in 1986 as a wholly-owned not-for-profit affiliate of the University of Chicago, charged with handling all of the University's intellectual property and technology commercialization matters. This remit also extended through 1994 to Argonne National Laboratory, which the University of Chicago runs for the U.S. Department of Energy. Based on the finding of two faculty committees, UChicagoTech was established in July 2001 to handle the business of ARCH Development Corporation and all ongoing intellectual property and technology commercialization matters. UChicagoTech is an office operating from within the University and reports directly to the Vice President for Research. [See History section in About Us]

What's the relationship between UChicagoTech and other research offices?

UChicagoTech manages the intellectual property rights of the University and is responsible for the negotiation of or assistance with:

License Agreements
Option Agreements
New Company Formation
Inventor Split Agreements
Confidentiality Agreements (associated with inventions disclosed to UChicagoTech)
Inter-institutional Agreements (license revenue sharing between institutions)

University Research Administration (URA) oversees all research activities on campus and is responsible for the negotiation of or assistance with:

Sponsored Research Agreements
Material Transfer Agreements
Software Transfer Agreements
Clinical Studies Agreements
Research Subcontracts
Confidentiality Agreements (associated with non-invention related research)
All conflict-of-interest matters

What is a Materials Transfer Agreement (or MTA)?

MTA's specify, among other things, use restrictions and intellectual property provisions on chemical and biological materials moving in and out of the University. For instance, if you give your unique antibody to another entity without an MTA restricting use to research only and requiring a license for any commercial use, and the entity subsequently incorporates your antibody as an important piece of a commercially successful product, you have no recourse. Conversely, if you accept or buy materials from another entity along with a restrictive MTA, you may find that any invention you come up with using the material either belongs to that entity or that entity has an exclusive license to it, as a term of the MTA.

Inventions and Disclosures

What is an invention?

An invention, for our purposes, is a discovery, design, algorithm, software program, or concept that may have commercial value.

What should you do if you think you've invented something?

Please contact us, and we will assist you, and guide you through the invention disclosure process.

How do I disclose?

Download an Invention Disclosure Form, fill it out, and return it to UChicagoTech, 5555 S Woodlawn, Suite 300, Chicago, IL 60637, tel 773 702 1692, fax 773 702 0741, attention Carla Bradshaw (direct dial 773 702 1692). If, for any reason, Carla is not available, any member of our Staff can assist. These forms require signatures and so cannot be returned electronically.

How quickly should UChicagoTech respond?

A member of the UChicagoTech project management team will endeavor to meet with you, subject to your availability, within 2 weeks of receipt of the disclosure. UChicagoTech aims to make a decision regarding commercialization, or not, of the invention within 90 days of receipt of the disclosure. In cases where there is extreme urgency, UChicagoTech can, of course, respond much more quickly.

How are inventions assessed?

UChicagoTech's decision process involves assessing the commercialization potential of the invention along a number of axes. Considerations include how "encumbered" the invention is (meaning for instance, that due to the terms of the research sponsorship or of the materials used, there may be limited freedom to commercialize), what the potential is for intellectual property protection for the invention, what the worth of the invention may be in the marketplace, and the wishes of the inventor(s).

Is there any downside to disclosing early?

There is no downside to disclosing early. We actively encourage it.

Is there any downside to disclosing late?

Yes, there can be substantial downside to disclosing late. Once you have presented your ideas at a conference, published them in a scientific journal or posted them on your Web site, you may lose substantial rights TO PATENT those ideas. We'll work around your schedule, but ideally it takes four to eight weeks to file for patent protection. So when you submit an abstract for a conference or prepare a manuscript for a journal, call us too.

Under what circumstances and terms will the University release rights back to inventors?

If UChicagoTech decides not to attempt commercialization of the invention, it will "non-elect" the invention, i.e. not assert ownership rights. In this case, the University can assign the invention to the inventors, if they so desire, subject to due process with the sponsor of the invention, or the invention disclosure simply goes un-pursued. Such a decision does not necessarily mean the University would not be interested in commercializing the invention. Sometimes for instance there is simply insufficient data to demonstrate that there is an invention, or at least to obtain intellectual property. Future improvements must still be disclosed, as a requirement of both University policy and federal research funding terms and conditions.

UChicagoTech uses the term "release" with respect to inventions previously elected, but which now no longer appear to have high commercial potential in UChicagoTech’s portfolio. For instance, the invention may have been made obsolete by new developments, issued patent claims may be much narrower than was hoped, or the market may have evolved in a different direction. Please see IP Release Timelines.

The release process may be more complicated than non-election. A number of administrative issues and principles can be involved.

Administratively:

If there is statutory intellectual property in place, the sponsors of the research that led to the invention(s) (often the government) have a limited-term option to elect title and pursue commercialization if UChicagoTech releases it. Only at the expiration of this period, and if the sponsor chooses not to exercise its option, can the invention be assigned to the inventor(s).
the assignment process requires both communication with (all) the inventor(s) and written agreement among inventors if there is more than one, upon a specific timeline. Failure on any of the above requirements may lead to forfeiture of the assignment option. Specifically:
UChicagoTech needs to be able to contact the inventor(s) on a case to release to them. If inventors do not keep in touch by keeping UChicagoTech apprised of their contact information, the assignment-to-inventors option can be forfeited. To avoid this eventuality:
- It is the inventors’ obligation to keep UChicagoTech informed of their contact information if it changes from the invention disclosure form. UChicagoTech can be contacted anytime at contactadmin@tech.uchicago.edu or at 773-702-1692 regarding updates, and will acknowledge messages sent.
- It is the responsibility of the principal investigator (usually a faculty member) to keep track of the contact information of co-inventors who have passed through their laboratory (students, post-docs etc.)
- UChicagoTech engages in regular and continual efforts to keep its contact databases current.
- UChicagoTech reinforces through every opportunity (including in the invention disclosure form and patent signature documents) the importance of keeping current contact on file in its office.
If there is more than one inventor, all inventors on a case have an equal right to the invention. UChicagoTech cannot assign an invention to any inventor unless it hears from all the co-inventors on a case, and there is written agreement among them as to who wishes to exercise or waive their rights to the invention. In situations where a majority of inventors want to have an invention assigned to them, and despite all efforts, a minority of inventors cannot be contacted, the University may allow an arrangement whereby assignment takes place conditional on indemnification of the University against any claim from the inventors who cannot be reached.
Often the issue of release arises during UChicagoTech’s regular review of upcoming costs (e.g. patent prosecution or maintenance fees). Thus the assignment-to-inventor process needs to occur on a specific timeline or else the option will be lost. UChicagoTech will make every effort to give inventors reasonable notice, usually at least 90 days prior to an upcoming deadline. In some situations, UChicagoTech itself is given very little notice (by patent offices or licensees) – in such situations, inventors will be given at least 15 days notice. A description of forms, procedures and guidelines associated with the release process are available at IP Release Timelines.

Principles governing the release process include:

whether release is consistent with improving the chances of development of the technology for the benefit of the public. The University conducts technology transfer under the auspices of the Bayh-Dole Act of 1980 (see www.cogr.edu). The University’s Bayh-Dole obligations are assumed by the inventor(s) if federal funding generated the invention. Commercialization activity is conducted in the understanding that the University and other research and educational institutions are granted a royalty free license to released patents for research and education purposes.
release is conducted on the understanding that there has been full disclosure from inventors, and that inventors will continue to make full disclosure of improvements to returned inventions to the University, at the time such inventions are made, if such improvements are subject to the University’s patent policy (Statute 18 – see http://www.uchicago.edu/docs/policies/provostoffice/facbk96.pdf)
whether the release is consistent with the University’s legal obligations to third parties
Assurance that any conflicts-of-interest raised by the release process have been disclosed and, if necessary, are being managed through the appropriate offices. The University’s policy on Outside Professional and Commercial Interests of Faculty/Conflict of Interest is published at http://researchadmin.uchicago.edu/guidelines/200/205.shtml.
the University releases inventions on the understanding that the inventors waive any claim or cause of action against the University with regard to the released intellectual property.

Patents and Intellectual Property

What is intellectual property?

Intellectual property is the term used to describe ownership rights in the realm of ideas and the expression of ideas. Analogous to land ownership, property rights specify title, boundaries, and give the right to buy, sell, or otherwise dispose of or control what's owned. Unlike land ownership or car ownership however, where only one party can control of use the asset at a time, use of an idea by others does not deprive the original developer of the idea of its use. This means that the concepts of "buying and selling" are often replaced by the concept of "licensing" in the realm of intellectual property.

What is a patent?

Patents protect new, non-obvious, useful ideas. They give the holder the right to exclude others from the manufacture, use, or sale of products incorporating the idea for a limited term, in exchange for disclosing the idea to the public. The term of a patent in the U.S. is 20 years from the date of filing. Patents tend to be among the more complicated and expensive forms of intellectual property.

What is a copyright?

Copyrights protect the specific expression of ideas rather than the ideas themselves. In the University context, copyright might be used to protect educational materials or computer software. Copyright gives the holder the right to exclude others from, among other things, unauthorized copying, "public performance" (which translates depending on context into "use"), modification or creation of derivative works.

What is a trademark?

Trademarks are marks used by their owners to identify goods or services distinctively. In a University context, trademarks may be used to protect the name of educational materials or software already well recognized in a non-profit context, when a for-profit roll-out is being prepared.

How long does it take to put a patent together?

How quickly can a patent be put together?

While an optimal job takes 4 to 8 weeks, patents can be filed for in as little as a day in cases of extreme urgency.

What will be involved in patenting an invention?

Will patenting prevent me from publishing on my invention?

No. Nor should the patenting process necessitate any delay in the publishing process. Timely disclosure assists in making the patent process as seamless as possible.

What does a patent cost?

A typical U.S. patent might cost $15-20k and 3 years to obtain, with foreign counterparts costing up to an order of magnitude more.

Can I patent my invention if UChicagoTech doesn't want to?

If UChicagoTech does not wish to pursue commercialization for or file for patents on your invention, it will be "non-elected" and you are free to pursue commercialization of it. However, see also: Under what circumstances and terms will the University release rights back to inventors?

How do the standards for patenting compare with the standards for publishing?

In general, the standards of proof and requirements for data to support a patent application are lower than those needed for peer-reviewed publication. Thus it is not necessary to wait until discoveries are submitted for publication to disclose to UChicagoTech.

Who is an Inventor?

This is a complex question. Inventorship is a legal determination and is decided upon by our patent attorneys. Incorrect inventorship can be grounds for the invalidation of a patent. Our invention disclosure form also allows for naming "contributors". Both inventors and contributors can share in revenues generated by licensing.

How does the language in patents compare with the language in scientific papers?

The scientific discipline, for the most part, places a premium on being specific when writing for peer-review or otherwise communicating with colleagues. When applying for a patent however, the goal is to claim ideas broadly, and to this end the language tends to be less specific. This is deliberate and part of the art of drafting patents. For instance, whereas scientists might want to claim they reached a discovery using steps A, B, and C, the patent attorney will attempt to claim the discovery, regardless of the steps used to get there. If successful, this makes for a much more valuable patent, because it is much harder to circumvent using an alternative set of steps.

Marketing

How are licensees found for new technologies?

Leads come from multiple sources. Companies who know a field and its developments approach UChicagoTech. The inventors are a frequent source of leads. UChicagoTech has both a pool of contacts and market research capabilities. Leads from all sources are pooled and then can be systematically pursued. In parallel technologies can be advertised on our website.

Do inventors have input into the process?

Inventors may have as much input as they would like. While UChicagoTech has final say over the process, we certainly are sensitive to inventors wishes. The enterprise is generally enhanced when there is a partnership with the inventor(s).

Revenues and Revenue Sharing

How is money made in technology transfer?

Revenues accrue through running royalties, lump sum payments, and sometimes through the sale of stock acquired as part of license agreements or the founding of companies.

How are revenues shared with inventors?

25% of gross revenues from their inventions are paid to inventors (if more than one, the inventors must agree on the split among themselves). From July 1, 2002 on, a further 10% of gross revenues from an invention will be paid to the lab(s) that generated the invention, 5% of gross revenues will be paid to department(s) that generated the invention and 5% of gross revenues will be paid to division(s) that generated the invention.

How quickly is revenue shared with inventors?

UChicagoTech attempts to pay inventors within 60 days of receipt of payments from licensees.

What happens to the rest of the money?

After inventors. laboratories, and divisions are paid, the remainder of the revenues will go to cover the expenses of UChicagoTech, and then to the office of the Vice President for Research. The expenses of UChicagoTech are substantial, involving both salaries of professional and support staff, and significant expenditures on the prosecution and maintenance of patents.

How does the University's revenue sharing policy compare with other universities?

The University's policy is competitive. Revenue sharing schemes vary in their structure. Some are based on gross revenues, some on revenues net of expenses. Some schemes apply different percentages to different tiers of revenue. The University's scheme is based on gross revenues with no cap or fall-off at higher revenue numbers. This kind of scheme flows money back to inventors quickly. In a field where most of the cost is front end loaded and royalties may take many years to materialize, this is designed to be advantageous to inventors.

How does the University's revenue sharing policy compare with industry?

Share in a significant percentage (or any percentage) of gross licensing revenues in a corporate environment is almost unprecedented. Some of the more enlightened corporations may give modest cash payments to inventors for an invention.

Inventor Answers

How do I know if I really have invented something new? What is an invention?

An invention is a new and useful method or product that has unique features and real advantages for an end user. Sometimes the most mundane advances have significant value; similarly, the most elegant and creative work that signals an advance in a field may not have practical applications.

If you're unsure if your idea is patentable or has commercial potential, give us a call and we can do the research and paperwork to find out.

Why not just publish my work, won't that reach the greatest number of people the most quickly?

Scholarly publication and commercial development do not preclude one another. Both advance the University's mission. In some cases, commercial dissemination is the only way a discovery will reach a great number of people. It normally takes years - and large investments - to refine and develop a promising idea into a useful product. Patenting an invention and licensing it with some exclusivity creates an incentive for making these investments. Once a discovery is in the public domain - in a journal, for example - you may not be able to patent it, and its potential may never be developed .

Why can't I just commercialize it myself?

The University has the right under its statutes to retain ownership of its researchers' inventions and discoveries. The Bayh-Dole Act of 1980 (PDF) charges us with the responsibility to ensure commercial development of these inventions for the public interest.

What should I do?

As a University employee, you have a RESPONSIBILITY to disclose your inventions to the University. UChicagoTech can give you quick, free advice on the patentability of your invention, and whether it has commercial value. We're here to protect your - and the University's - interests.

Students also have an obligation to disclose inventions to the University. There are established processes for deciding whether or not University resources contributed substantially to an invention. UChicagoTech can help you in this regard, and ensure that the value of your invention is protected.

When should I call UChicagoTech?

CALL US EARLY ON, so we can help you protect your ideas. Once you have presented your ideas at a conference, published them in a scientific journal or posted them on your Web site, you may lose substantial rights TO PATENT those ideas. We'll work around your schedule, but ideally it takes four to eight weeks to file for patent protection. So when you submit an abstract for a conference or prepare a manuscript for a journal, call us too.

What do I get out of it?

If an invention is licensed to a company, UChicagoTech shares the gross revenues from the licensed technology with the inventor (25 percent) as of July 1, 2002, the inventor's laboratory (10 percent) the inventor's department (5 percent) and the inventor’s division (5 percent). The rest goes to cover the costs of running our operation. Meanwhile, it can cost $10,000 or as much as $20,000 to get a patent, just in the United States. These costs are borne entirely by UChicagoTech. Plus inventors get legal advice, business development expertise, and our knowledge of the commercial marketplace.

Why do I only get 25 percent?

This percentage compares favorably with other universities around the country. Moreover, including the revenue sharing with your lab, your department and your division, it's really more like 45 percent. You get to invent, share in the proceeds, and keep your day job, too. If you think you want to start a company to develop your idea, we can talk through that option as well.