Academic discoveries may lead to innovation that can be translated into products and services in the marketplace and/or be used as technology foundation for new ventures.
It’s important to disclose to CTL your inventive ideas before any public disclosure such as a publication or a public presentation. A disclosure can be based on patentable ideas, software and copyright materials, tangible materials with commercial potential, or plant materials. Submit your disclosure.
A professional from the Business Development and Licensing teams will engage with you to assess about the technology and market potential, and plan protection and commercialization strategies together.
- What problem(s) does the invention solve?
- What is the potential market and the commercial value?
- Are there competing technologies available or under development? How much better is the new technology than its competitors?
- How can the IP be protected and leveraged?
- Development stage of the invention?
- Previous publications or patents related to the invention?
- Potential industry partners to develop products or services?
- Potential to create a new business enterprise?
IP can be protected through patents, copyrights, trademarks, confidentiality, among other means for different commercial applications.
Not all invention disclosures submitted to CTL are appropriate for patenting. If the decision is made to go ahead with a patent application, CTL will manage the process.
United States patent law requires that an invention be:
The invention must be demonstrably different from publicly available ideas, inventions, or products (so-called “prior art”). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes, machines, compositions of matter and materials are patentable. Incremental improvements on known processes may also be patentable.
The invention must have some application or utility or be an improvement over existing products and/or techniques.
The invention cannot be obvious to a person of “ordinary skill” in the field; non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.
Provisional Patent Application:
To protect the invention after you disclose it, CTL may submit a provisional patent application through one of the law firms it works with. A provisional patent application is a simple document that functions as a year-long “placeholder” should you and CTL decide to file a formal patent application. The decision to file a formal patent application will be based in part on the amount of industry interest expressed during the twelve months window. Therefore, CTL’s business development and licensing teams will actively market the invention to companies to find a licensee.
Your participation in this marketing process is critical. If at the end of the twelve months period an invention is generating a sufficient amount of industry interest, CTL will file a formal patent application on your behalf. The formal application is a complex document that will require your time and attention.
While the patent attorney and CTL’s IP team will handle the paperwork, your input will be essential as the patent application will need to demonstrate that the invention satisfies three criteria: utility, novelty and non-obviousness. Also, the patent application needs to provide sufficient written description that an expert in the field can independently re-create and use the invention. Roughly half of inventions disclosed to CTL will be put into the patent process.
Formal Patent Application and Prosecution
Once the formal patent application is sent to the US Patent and Trademark Office (USPTO), it may be up to two years before the patent application is reviewed by a USPTO Examiner. When the USPTO Examiner delves into your patent application, they will challenge whether it is indeed new, useful and non-obvious. They will also challenge whether the written description in the patent application is adequate. The patent attorney, CTL, and you will need to respond; this is an iterative process between the USPTO, the patent attorneys, CTL, and you that can span a few months to a few years. Average costs to patent an invention in the United States range from $20,000 to $70,000 in legal fees. If patent protection is pursued in countries outside the United States, these legal fees skyrocket. Clearly, an invention must have potential market value in order to justify its patenting costs.
In collaboration with inventors, CTL generates marketing materials, identify and contact target companies, entrepreneurs and investors through web posting, campaigns, social media, events, and most importantly, through networks with business contacts of CTL and inventors, alumni of the university and the regional ecosystem. Your engagement with CTL through the marketing process is invaluable to the success. Network such as Cornell Innovation and Venture Advisorgroup and CTL Practicum will help the marketing process.
The cycle of evaluation, protection and marketing is a continued process that will be repeated based on market feedback of the technologies.
Over the years, Cornell technologies have been licensed to industry partners all over the world to develop these inventions into products and services for public good. If you are interested in licensing a technology from Cornell, contact a professional from the Business Development and Licensing team at CTL.
Technology Advancement and Venture Support through gap funding series and ecosystem
Cornell’s Ignite gap funding series will support the acceleration of technology commercialization, venture creation and growth and corporate collaboration. More about Ignite and the ecosystem.
Commercialization, Product, Revenue and Impact
CTL continues to partner with licensees for technology commercialization. CTL tracks the diligence of the licensee in its development. Occasionally, because of industry environment changes, licensees and CTL will make reasonable amendments to the original license.
For net income from the licensing of an invention, CTL will distribute according to Cornell policy:
- the inventor (if multiple inventors, as a group) will receive one-third
- one-third is split between the principal inventor’s college (60%) and central university research (40%)
- the university will retain the remaining one-third to help with the cost of the university technology transfer program
New products or services and successful startups will satisfy market and societal needs, leads to economic development, and generate impact for Cornell research and innovation.
Partnership with companies, licensees and successful entrepreneurs, will contribute back to the research and education engine of the university through sponsorship, donation and collaborations.