UChicagoTech Process
Disclosures 
Evaluation/Election/Non-Election Intellectual Property Protection Marketing
Licensing and Other Forms of Agreement Revenue Sharing Conflict of Interest Start-Ups
Disclosures
What is an Invention?
An invention, for our purposes, is a discovery, design, algorithm, software program, or concept that may have commercial value.
Is Disclosing an Invention Optional?
If researchers, staff, or students come up with an invention in the course of their work, at the University, and/or with the aid of its facilities and/or funds administered by it, there is an obligation to disclose the invention. This is covered by Statute 18 of the University of Chicago. Partly this obligation is programmatic. It is within the scope of the University's mission to bring the benefits of its research to the public, including through commercial channels when this is an efficient dissemination mechanism. Partly this obligation is contractual. As the recipient of research funds (and materials) from the federal government and other sources, it is generally a condition that inventions made using the funds or materials be disclosed to the University and reported to the provider of funds and/or materials.
How to 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.
When to Disclose
Inventions go through several stages of development, and there is often a question of what level of proof-of-concept and supporting data is necessary before inventions should be disclosed. In general, AS SOON AS YOU THINK YOU MAY HAVE AN INVENTION AT WHATEVER STAGE, PLEASE CONTACT A UChicagoTech PROJECT MANAGER (Staff). The project manager will work with you to assess whether the invention is ready to disclose. Considerations will include whether enough proof-of-principle exists to be able to get statutory intellectual property protection (here the standard is lower than for publication) and/or whether bar dates are coming up (for instance through disclosure by publication or presentation) that would eliminate the possibility of getting statutory intellectual property protection (e.g. see Patents).
Case Numbers
Once an invention has been disclosed, it will be assigned a case number, generally with the prefix UCHI.
Disclosure Evaluation
Timing
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.
Evaluation Process
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).
What Election Means
If UChicagoTech decides to attempt commercialization of the invention, it will "elect" the invention. Efforts then follow to obtain intellectual property protection for the invention, to market it to potential commercialization partners, and to consummate a license, whereby the commercialization partner is granted rights to use the invention in return for various payments, structured generally to share risk, i.e. more is paid if the invention turns out to be worth something.
What Non-Election Means
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 give the invention to the inventors,
if they so desire, or the invention disclosure simply goes unpursued.
Such a decision does not necessarily mean the University is not interested
in commercializing the invention and that future improvements should
not be disclosed. Sometimes for instance there is simply insufficient
data to demonstrate that there is an invention, or at least to obtain
intellectual property.
What Releasing Means
UChicagoTech uses the term "release" with respect to inventions previously elected, but which now no longer appear to have commercial potential. This can happen in a number of circumstances. The invention may become obsolete. Frequently it is the case that the only was to assess the commercial potential of an invention is to try commercializing it and see what happens. Where it turns out there is no interest, then the invention will be released. Please see IP Release Timelines.
The release process can be more complicated than non-election. Usually there is statutory intellectual property in place. In these situations, the sponsors of the research that led to the invention(s) (often the government) have a limited-term option (rarely exercised) to elect title and pursue commercialization if UChicagoTech releases it. At the expiration of this period, the invention will then be returned to the inventor(s). In these circumstances, it is the University's policy to require reimbursement for patent costs, if any, from inventors in the event that they are successful in commercializing the invention(s) on their own.
Intellectual Property
U.S. Constitution, Article 1, Section 8, Clause 8: "The Congress shall have the power.......To promote the progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Rights to their respective Writings and Discoveries."
Rationale
Patents, copyrights, trademarks, domain names, and trade secrets are all ways of legally protecting inventions. The rights granted to the holder of these forms of intellectual property are specific and enforceable. The commercialization process involves further granting these legal rights, in whole or in part, exclusively or non-exclusively, and with various conditions attached, to commercialization partners, in return for various lump sum and royalty payments, a.k.a. licensing.
Without intellectual property, there is not much to sell. Consequently
the mechanics of obtaining and enforcing intellectual property are a
significant part of the expertise of UChicagoTech and its service providers
(outside attorneys), and a dominant part of UChicagoTech's non-personnel expenses.
Some Forms of Intellectual Property
Patents
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. 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.
Copyrights
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.
Trademarks
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.
Some Guides to Intellectual Property
http://www.uspto.gov
http://www.uspto.gov/web/offices/com/iip/index.htm
http://www.autm.net
Patent/Copyright/Trademark Section
http://web.mit.edu/invent/www/handbook/index.html
- Handbook for Inventors
Time Commitment of Inventors for Patents
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.
Patent Bar Dates and the Importance of Early Disclosure to UChicagoTech
NOTE: if your invention is published prior to the filing of a patent, you lose the right to patent outside the U.S. Depending on the importance of your invention, this may constitute a serious loss of value. Within the U.S., you have one year to file for a patent after publication. Publication in this context means any public disclosure that would enable one skilled in the art to reproduce your invention. This can be via your web page, web publication of an abstract, presentation at a conference, or even to a meeting of your colleagues whose attendance is not restricted.
MORAL: please talk to UChicagoTech prior (ideally well prior) to publicly disclosing an invention. Our goal is to assist with intellectual property protection without delaying your publication schedule. The more notice you give us, the better a job we can do.
Marketing
Once an invention is elected for commercialization and intellectual property protection is underway, UChicagoTech needs to identify and contact companies who may have an interest in licensing the technology. In this regard, the assistance of the inventors can be helpful and is welcomed. Inventors often have knowledge of who in the commercial field may have interest, and who might be more favored or less favored partners. Correspondence and discussions with companies can be done under a Confidentiality Agreement, restricting dissemination of the information to a narrow audience and purpose. In general, UChicagoTech considers this process a partnership with the inventors and is happy to be sensitive to inventors' research and publication agendas and other preferences, within the bounds of our duty to the University to be diligent in our activities.
Licensing
A license is an agreement between UChicagoTech and a company with an interest in pursuing commercialization of the invention. Licenses give companies rights to pursue (traditionally make, use, and sell) the invention under the patent or patents covering it, in exchange for various lump sum and royalty payments. Sometimes equity can be taken in lieu of cash for lump sum payments. For instance, in the case of a start-up, UChicagoTech can license the technology to the start-up in exchange for equity. (Start-Ups) Licenses can be to large or small companies, established companies or start-ups, to companies started by faculty or faculty and UChicagoTech.
Licensing agreements are negotiated by licensing specialists at UChicagoTech. During license negotiations, UChicagoTech will keep inventors informed and involved, as highly interested parties and as "clients". However, of necessity, the burden of decision-making moves to the specialist and UChicagoTech as the office handling the intellectual property for the legal owner: the University of Chicago.
UChicagoTech is happy to share copies of license agreements pertinent to their technology with inventors, on the understanding that these documents are business confidential and thus circulation must be highly limited.
Under University of Chicago policy, revenue realized from the commercialization of inventions is shared with inventors, and commencing in the financial year starting July 1, 2002, with laboratories, department and divisions. The policy is described in detail in the Revenue Sharing Policy document. Also see the Equity Sharing Policy document for details on how the University manages equity received through the licensing of University inventions.
Conflict of Interest
Broadly, four kinds of conflict can arise in the course of commercializing technology in a University environment. Conflicts with respect to the integrity of research arise where a scientific investigator has a financial interest in the outcome of a particular experiment or clinical trial. Conflicts with respect to educational mission can arise where an investigator has a financial incentive to direct the research or activities of his or her students in directions other than what is purely in the best interest of the education of the student. Conflicts of commitment can arise where the time an inventor gives to commercialization activities may start to compromise his or her duties to the University. Conflicts with respect to purchasing decisions may arise where an investigator can influence the decision to purchase supplies or services from a company in which they have a financial interest.
It is possible to manage conflicts so that none of the above issues arise. Keys to success include full disclosure, and openness to discussion and counsel among all the interested parties. In these cases, it should be born in mind that the perception of conflict can be as damaging as the conflict itself.
Responsibility for managing conflicts of interest lies with University Research Administration, and final authority rests with the Vice President for Research.
The University publishes conflict of interest guidelines at:
http://researchadmin.uchicago.edu/guidelines/200/205.shtml.
Conflict of Interest Disclosure and Compliance forms can be downloaded
at:
http://researchadmin.uchicago.edu/guidelines/200/200.shtml.
The University Research Administration, the Provost's Office, the Dean's Offices, and UChicagoTech work together to assist faculty in managing these issues.
Start-Ups
When a technology is broad and enabling but early, it may constitute a basis for a start-up company. Start-up companies can be effective vehicles for raising money to develop the technology and develop markets for it. (See Success Stories). UChicagoTech can work with start-ups created by outside entrepreneurs, or by faculty. UChicagoTech can also take an active role in the formation of start-ups that involve University of Chicago technology. UChicagoTech's founding equity stake historically has depended on its degree of involvement (business planning, money raising, finding management) in a start-up. For simply a license on the seminal technology, 5% of the founder's equity has been standard. In cases where UChicagoTech has been much more involved, in some cases to the extent of doing everything, the founders stake has been as high as 50%. The Equity Policy document details how the University manages founder’s equity and distributes the proceeds from liquidated equity holdings within the University.
