The Center for Technology Licensing (CTL) is Cornell University's technology transfer office. We manage technology for Cornell's Ithaca campus, Weill Cornell Medicine, Cornell Tech, and Cornell AgriTech in Geneva.

Tech Transfer Process

Click on the numbered items for more explanation.

Communication with CTL Disclosure Submission to CTL Assessment and Strategy Development Protection by Patents and Other Mechanisms Marketing License Negotiation License Grant to Existing or New Businesses Post-Agreement Services

 

 

 

For a detailed look at the operating process, click here.

 

 

 

 

Communication with CTL

If you believe you have made an important discovery or have come up with an inventive idea, it is a good idea to contact CTL to explore what should be done with your discovery or idea before you disclose it to the public. Our licensing officers will be glad to work with you to advise you whether you should file an invention disclosure with CTL. Alternatively, you can simply file a disclosure with CTL first and our licensing officer will then contact you to discuss your discovery or idea further. Early communication can ensure a better evaluation of the market potential and social and commercial value of your discovery or idea, and whether we need to file a patent application prior to any public disclosure to protect your intellectual property rights.

 

 

 

Disclosure Submission to CTL

The invention disclosure form is a simple four-page document that describes your invention or discovery. The invention disclosure form should be submitted with a written description of your idea or discovery. Additional manuscripts, explanatory drawings, and supporting data are very helpful. To ensure maximal protection rights for your invention, it is important to file an invention disclosure form before any public disclosure such as a publication or a public presentation. After you disclose your invention to CTL, a licensing officer will be assigned to manage the invention and will be in contact with you within two months.

 

 

 

Assessment and Strategy Development

Once you have disclosed your invention to CTL, the next step is to work with a licensing officer to explore its market or commercial potential. You and your licensing officer will work together to review the following key issues, among other factors, that affect the assessment of the invention:

  • What problem(s) does the invention solve?
  • What is the potential market for or the commercial value of the invention?
  • Are there competing technologies available or under development in other labs? How much better is the new invention than the competing inventions?
  • How to protect the invention to prepare it for commercialization?
  • Do you intend to continue working in this area, and are you willing to do experiments that will make the invention more attractive to industry or will help fulfill the enablement demand of the patent examiner?
  • What previous publications or patents related to the invention are you aware of?
  • What businesses may be good industry partners to develop your invention into valuable products or services for the public?
  • Is there potential to create a new business enterprise based on the invention that can foster regional economic development?

The results of the assessment will be analyzed with CTL’s missions in mind, which are 1) to turn Cornell ideas into products to serve the public good; 2) to secure a reasonable return for Cornell; and 3) to leverage research results for regional economic development.

The decision on how to move forward with the invention will be made by the executive director of CTL, based on the recommendations of the licensing officer. The licensing officer may consult with entities in industry such as CTL’s Industry Advisory Group (IAG) when formulating the recommendation. It is important to note that CTL will try to do what is best for each technology to advance the university’s missions and interests. What may be best for each invention may be very different since it will depend on (i) the stage of development of the invention, (ii) the market need it may fulfill, (iii) the status of competing inventions that may fulfill the same market need, (iv) the patent eligibility and feasibility for enforcement of the invention, (v) the potential financial risk/return for the university investing in the invention, and last but not least (vi) whether there is one or more potential industry partner to help develop and commercialize the invention.

Review

The review will result in placing the invention in one of three status categories:

  • Active: CTL will actively work to protect, if necessary, and commercialize the invention. It is CTL’s operating philosophy that “when in doubt, test the market to see if there is any interest.” CTL believes such a proactive attitude will allow the university to benefit from the collective wisdom of the industrial world; or
  • In abeyance: CTL needs to wait for further information from the inventors – usually for further data to help better (i) define and/or enable the invention, (ii) understand or demonstrate its usefulness, and/or (iii) support patent filing; or
  • Closed: CTL will close its file for the invention and will not be actively seeking commercialization of the invention. This may result in not electing title to the invention and if the work is (i) sponsored by the US federal government, the title will belong to the US government, or (ii) not sponsored by the US federal government, the invention may be allowed to go into the public domain for everyone to use freely, or (iii) the invention may be released to the inventor when specifically requested by the inventor in writing. The inventor must agree to certain standard terms and CTL must believe such a release is best for the invention and the university. The standard terms for Cornell to release title of an invention to an inventor include (a) reimbursement of all patent costs already incurred by Cornell; (b) a 10% sharing of all future revenues the inventor may generate from the invention with Cornell, and (c) grant-back to Cornell a license to use the invention for all education and research purposes.

An “active” invention will continue to the next phases of the process as described below. An invention “in abeyance” may become “active” as requirement for additional information is met. An invention that is “closed” may become “active” again as new information (including data from the inventor or other researchers) or market opportunities emerge to warrant a change in its status categorization.

Closing A File

There are many reasons to Close the file for an invention. For example, the lack of patent eligibility or the patent eligibility is too narrow in scope to have significant commercial value. As most inventions require investment to be turned into commercial products or services, and as private investors often require the exclusivity that a patent provides, the lack of patent eligibility or scope can mean that there is no commercial path to develop the invention into useful products or services. Another reason CTL might close a docket, is that there is no market need for the invention — other solutions exist for the problem that the invention solves and the new invention does not provide clear advantages over the existing methods. Yet another reason, could be that the potential market is too small to attract investors to develop a product. These are just a few possible reasons – if CTL decides to close the case, the licensing officer will discuss the reasons with the inventor.

Disagreements

If an inventor disagrees with CTL’s decision to close the file of an invention, CTL does provide the inventor with two options, as follows, to keep the invention under active management:

  1. A faculty inventor may enter into a Memorandum of Understanding (MOU) with CTL, agreeing to reimburse CTL all on-going patent costs from one or more of his/her discretionary spending accounts at the university. The MOU will additionally provide for the conditions that (i) CTL will continue to actively protect and market the invention to potential industry partners; and (ii) if and when CTL manages to license the patent right to one or more licensees, the spending from the discretionary spending account(s) will be reimbursed from the licensing revenues prior to any disbursement under Cornell Policy 1.5; or
  2. The inventor (individually, or as a group,) may license the invention from CTL under a special Inventor Grant Agreement. The Inventor Grant Agreement, in short, will be free of any fees but the inventor(s) agree(s) to (i) reimburse all future patent costs as they are incurred; (ii) share with CTL a negotiated percentage of any income that may be generated with the licensed invention; and (iii) when a certain level of cumulative income is generated, reimburse CTL of all past patent costs.

In the event that an enabled invention is not subject to any sponsored project rights or restrictions, inventors can request reassignment if the case meets the conditions described in Policy 1.5 “Inventions and Related Property Rights” in the Ownership of Inventions section, and CTL will reasonably consider such a request.

If the inventor elects not to pursue any of the options, the file for the invention will be closed.

 

 

 

Protection by Patents and Other Mechanisms

To ensure eligibility for U.S. patent rights covering your invention, a patent application must be filed within one year of public disclosure. To maintain patent rights in the rest of the world, a patent application must be filed prior to public disclosure anywhere in the world. Therefore, if you are interested in developing your new inventions into useful products or services for the public, please contact CTL immediately if and when you are about to publicly disclose new ideas or research results. The following are some examples of public disclosure:

  • Sharing a pre-publication manuscript with others without a confidentiality agreement
  • Publication of a meeting abstract
  • Presentation in a conference or giving a seminar
  • Publication of an article (either online or print)
  • Sharing ideas or data with a person who is not officially a collaborator of your research

Not all invention disclosures submitted to CTL are appropriate for patent protection. CTL will work with you to determine the potential and patentability of any disclosed inventions. If the decision is made to go ahead with a patent application, CTL will manage the process.

 

 

 

Marketing

If you and your licensing officer agree there is market potential for your invention, CTL will begin to market your invention to license to industry. To reach industry partners, CTL generates non-confidential marketing materials and a list of target companies. Your industry contacts can be of great value in finding the right licensee for the invention. It is estimated that 80% of university licensing deals begin with the researcher’s relationships in industry.

 

CTL often seeks advice and opinions from members of our Industry Advisory Group (IAG). This group consists of individuals with a variety of backgrounds and experiences working in industry who have agreed to help CTL with inquiries, provide recommendations and information.

 

 

 

License Negotiation

Once a potential licensee has expressed interest in licensing your invention, the licensee may sign a Confidentiality Disclosure Agreement with CTL so you and your licensing officer can discuss your invention in detail with the potential licensee. If the discussion reaches the negotiation stage, your licensing officer will negotiate terms and sign a license with the company.

 

 

 

License Grant to Existing or New Businesses

CTL licenses Cornell intellectual property to companies ranging from Fortune 500, to medium and small businesses. If CTL believes the use of your invention in the starting of a new business enterprise will best advance the university’s missions and strategic goals (currently, regional economic development is an important strategic goal), CTL will endeavor to do so. If you are interested in participating in such an endeavor, do not hesitate to let the licensing officer responsible for your invention know.

 

 

 

Post-Agreement Services

After a license is executed, CTL continues to maintain a relationship with the licensee. CTL tracks the diligence of the licensee in its development of your invention. Occasionally, because of industry environment changes, the licensee will require adjustments. CTL will be responsible for making reasonable adjustments to the original license. Finally, if the license of your invention generates any net income (net income is gross income minus any out-of-pocket costs incurred by CTL in the licensing of your invention), CTL distributes it, according to university policy, to the appropriate university stakeholders.

For net income from the licensing of an invention:

  • the inventor (if multiple inventors, as a group) will receive one-third
  • the university will retain one-third to help with the cost of the university technology transfer program
  • the remaining one-third is split between the principal inventor’s academic “unit” (60%) and the university research administration (40%).