The mission of the Technology Transfer
Office (TTO) is "To assist and lead the successful commercialization
of ideas created by people at CWRU".
The technology transfer process normally begins when an inventor
submits an invention disclosure to TTO. Every incoming invention
disclosure is assigned to a TTO case manager who is responsible
for the invention through its life cycle. In "Stage I"
of the process, the case manager meets with the inventors,
in order to understand the invention and also to hear what
the inventor wants to do with the invention. The case manager
also checks rights and ownership in the invention. If CWRU
has no rights or does not own the technology, the case manager
informs the inventor(s), so that they may pursue the technology
as they desire. If, however, CWRU owns the technology, the
docket manager proceeds to assess the invention in three areas:
Technical Merit, Commercial Merit, and Intellectual Property
Protection.
The case manager evaluates the strength of the invention
in each of these three areas in parallel, with information
from each evaluative area impacting on the case manager's
decisions on how to proceed. The most important assessment
area is that of "Commercial Merit"-since only the
ideas with the most commercial potential will be carried forward.
Strong technical merit and the ability to obtain intellectual
property protection are required to pursue an invention, and
a failing in either of these areas can halt the pursuit of
commercialization of an invention-but these two areas alone
are not enough to warrant an investment of university resources.
If a "not pursue" decision is reached, the case
manager informs the inventor(s). If the inventor(s) requests
the invention be released to them, the university will do
so, provided that any contracts funding the work do not prohibit
such a release. If the evaluation of commercial potential
is very strong, and there are no technical or legal issues
blocking commercialization, the university will carry forward
the commercialization activity of the invention. This is the
beginning of Stage II.
In Stage II, TTO makes strategic decisions regarding patenting
and other legal protection, such as trademarking, as appropriate.
Although patenting every unique idea is appealing from an
academic perspective, it is not necessarily the best use of
limited resources from a business perspective. Consequently,
of the approximately 100 invention disclosures received by
TTO this year, perhaps 30 will be patented.
As experts in their fields, inventors usually have good insights
into the market scope, potential, and niches where their invention
would be in great demand. Ideally, the inventor(s) works with
the case manager in order to help identify these potential
markets. The case manager then researches and contacts possible
licensees. The feasibility of a start-up company may also
be considered.
Once the case manager has identified interested potential
licensees, he/she begins the process of negotiating license
terms that provide fair return for the inventor and the university,
while protecting the rights and ownership for all involved.
Licenses can vary greatly in nature, as can the consideration
received for a license. An exclusive license generally costs
more than a non-exclusive. A license can be limited in scope
or very broad in terms of the field of use. A license term
can be just a few years, or can be in effect for the life
of the patents. In all cases, the university retains the right
to continue to conduct research in the field of the technology
which is the subject of the license.
Once an invention is licensed, it moves into Stage III. In
Stage III, the intellectual property protection is maintained
and the relations with the licensee are kept current, including
collecting and distribution of royalty payments. At CWRU,
the Net Proceeds from a license (the gross proceeds collected
from a licensee minus the costs incurred by TTO) are divided
equally between the University and the inventors.
Case Western Reserve University faculty and students are
encouraged to contact the Technology Transfer Office
for assistance with their Technology Transfer questions, comments
or suggestions.
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