OTT seeks to secure and manage Tulane's intellectual property assets while ensuring an open and unrestricted academic environment. To most effectively achieve this mission, the Office encourages Tulane faculty, staff and students to discuss the results of research and potential inventions with a staff member at the earliest practical stage. It has been our experience that disclosure of an invention to the OTT at least two months before submission for publication, presentation at a meeting or other public disclosure will ensure the most effective and optimal protection of an invention.
OTT completes the following sequential steps in evaluating, marketing and licensing an invention. The assistance and active participation of the inventor(s) are critical throughout the entire process and enhance the chances of success in commercializing the invention.
1. The inventor submits a confidential Invention Disclosure Form (view Adobe Acrobat PDF), which provides the invention's summary information (description, the inventor(s) involved, who sponsored the work, and public disclosures and publications). It is important for patent protection that an invention is disclosed to our Office at least two months before the submission of a manuscript for publication or before a presentation at a meeting, conference, seminar or symposium. Invention Disclosure Forms can also be obtained by calling OTT at (504) 988-6962.
2. Invention disclosures received by OTT are logged in and assigned a docket number. Following receipt, a member of the OTT staff will meet with the inventor(s) to obtain any required additional information and conduct an evaluation of the novelty, potential applications, and market potential of the invention. A potential licensing strategy will also be developed. Some inventions, like new research tools, have widespread use and are usually licensed on a non-exclusive basis. In contrast, a new technology that will require a significant investment from a company for development into a product is typically licensed on an exclusive basis.
3. Based on the evaluation, OTT will determine whether or not Tulane will elect title to and file a patent on the invention. Due to the high cost of filing a patent ($8,000-$12,000), OTT cannot file a patent application on every invention disclosure. OTT will pursue inventions that are most likely to attract a commercial partner either as a licensee or as a research sponsor to further the work.
OTT contracts with outside patent firms to draft and file a patent application. Inventor assistance and intensive interaction with patent counsel are vital to ensuring proper description and protection of the invention. Future responses to patent office actions also will require inventor comment and input. Securing a patent may take from one to three years or more, depending on the field of the invention and the challenges to the application.
4. In conjunction with the decision to file a patent, the OTT will begin to market the invention. OTT uses a variety of marketing methods including mailing out a non-confidential summary to target companies, posting technologies available for licensing on the OTT website and posting a description of the invention on commercial technology listing sites. Inventor's suggestions of companies to contact are also extremely beneficial to the marketing effort. Companies expressing interest are given an opportunity to evaluate the invention (on a confidential basis if necessary). During the evaluation of a technology, it is crucial for an inventor to be available to speak with a company's scientific or technical staff.
5. When a commercial partner is interested in developing the invention, OTT negotiates a license agreement with the company. The license delineates the rights and responsibilities of each party. In some cases, a separate research agreement may be also negotiated that can fund continuing research to further develop the invention. When an early stage technology is involved, an option agreement may be signed to give the company an extended period of time for evaluation.
6. The signing of a license agreement is the beginning of a long-term partnership between Tulane and the licensee. The licensee's performance is monitored by the OTT throughout the duration of the license agreement. Most license agreements require a licensee to submit periodic financial or development reports.
7. All royalty payments are collected by OTT and are distributed as follows:
All direct expenses made for the purpose of protecting or licensing the invention that are not reimbursed by a licensee are deducted. Fifteen percent is then deducted to support OTT operations.
The remaining net royalty income is then divided three ways:
8. The license agreement may be amended during its lifetime in response to changing circumstances or to account for new situations.
Tulane Technology Transfer and Intellectual Property Development, New Orleans, LA 70112 504-988-6962 firstname.lastname@example.org