Processes

Below is a summary of the OTC process. For a detailed guide on OTC's processes, please download the Technology Transfer at Purdue University booklet.

The 1-2-3’s of tech transfer at Purdue University

Inventions at Purdue University begin when faculty, staff, and/or students conceive of an idea. All new inventions developed at Purdue should be disclosed to the Office of Technology Commercialization (OTC). Depending on the stage of development of the technology, researchers should file either a technology assessment form (for early stage technologies where an assessment of patentability is needed) or an Invention Disclosure Form (for inventions that are more fully conceptualized and with some idea of the commercial potential).

Technology Assessment
OTC urges researchers, in conjunction with their academic managers, to consider the early evaluation of promising ideas by filling out a Technology Assessment Form online or by sending the following information:

• Name, department, phone and e-mail address.
• What is the invention?
• What are the novel aspects of the invention?
• Keywords that would be useful in describing your invention (these will be used to search for related patents and publications).
• Have you publicly disclosed the invention (i.e. seminar, poster, abstract, publication, thesis defense, corporate presentation)?
• Do you have an upcoming disclosure date?
• Optional information: Potential application, markets/companies/product lines that would benefit from the invention.
• Competing research/products/patents and researchers practicing in this field.
• Supplemental data, drafts of publications, etc.

Once OTC has received your information, a preliminary search of the field will be conducted. Approximately two weeks later, you and an OTC licensing associate will be scheduled to attend a Technology Assessment Meeting to discuss the invention and collectively define the next steps.

Full invention disclosure
In the event that the technology assessment discussions lead to a decision to proceed with the protection of the intellectual property - the next step is to complete the Invention Disclosure Form (IRD). This form goes through your department head, dean and finally lands in the OTC office.   Please send an electronic or paper copy of the form to Sally Ross, Office of Technology Commercialization, fax (765) 494-1277, as it may take considerable time to route the form for signatures.  This is particularly important if a public disclosure is imminent.

How are disclosures evaluated?

Initial Review
Upon receipt of the disclosure, OTC reviews the disclosure for ownership issues (if there are inventors from an organization other than Purdue); sponsor-related directives; and royalty sharing agreement amongst inventors. Results of this initial review are presented to the University for approval of the distribution of royalties between inventors and department that may have an interest in the invention, pursuant to Purdue’s IP policy.

Disclosure Assessment
The invention disclosure undergoes thorough assessment for:

• Legal issues
  Ownership of the invention – Ownership usually follows inventorship.  Under most employment contracts employees are required to assign their invention to their employer.  If there are inventors at institutions other that Purdue that have contributed to the invention, the technology is typically jointly owned between Purdue and the employer of the other inventors. OTC then negotiates an inter-institutional agreement with the joint owner to determine how the two organizations intend to manage and commercialize the technology.
  Sponsor Directives – If the invention has been conceived and reduced to practice with support of non-Purdue funds, OTC reviews the terms of the funding agreement to see what obligations, if any Purdue has to the sponsor. OTC is responsible for fulfilling the terms of these sponsor agreements. The commitments to the sponsor may then influence the scope of options available to OTC to market and commercialize the technology.

• Public disclosure issues (Public disclosure and its impact on the ability to patent)
  Determining the earliest possible date of public disclosure known to, or planned by, the inventors influences whether Purdue has an opportunity to pursue the protection of the invention and the critical dates by which patents may have to be filed. If the technology has already been fully disclosed, there may be limited opportunity for protection of the technology as most countries require complete novelty of the invention to allow patent protection of the same. In such a case, OTC will consider determine whether there is still a possibility to commercialize the technology with limited or no patent protection and whether the disclosure is truly enabling.

• Novelty of the invention
  OTC performs a prior art review of patents and literature to determine the novelty of the invention to define the scope of the patent application, if any, that may be filed. This review is shared with inventors and we encourage an open dialog to determine what we believe may be the truly inventive and novel aspect of the invention over what information may already be in the public domain. In the event that novelty is clear and can be broadly defined, Purdue is more likely to file a provisional patent application to preserve the intellectual property position of the university and further explore its market potential. 

• Stage of development
  Determining whether the technology is a concept or a proven invention influences the timeframe for filing patent applications.  Since patent law in most countries requires that an invention is fully reduced to practice prior to filing a patent application, the ability to prove that the invention, as disclosed, is an integral part of the timing of patent filing. If the inventors have the sufficient data to enable the invention, either at the time of disclosure or have a reasonable expectation that they will be able to do so within a one year time frame, Purdue is more likely to file a provisional patent application to preserve the intellectual proctored position of the university and further explore its market potential.

• Market potential
  This is probably one of the most critical elements in making a decision to pursue protection and commercialization of a technology. The decision to file for patent protection makes sense only if the university believes that the patent will result in revenues to the university that will exceed the expense incurred in obtaining it. OTC has an active market research and marketing program to make these decisions. Some of this work may often be done after a provisional application has been filed. However, a clear potential market needs to be demonstrated prior to conversion of the provisional application to a full patent application. 

Filing for a patent

Once a decision has been made to file a patent on an invention, Purdue Research Foundation covers the costs of filing the patent application. OTC will typically file a provisional application to help manage cost and increase the potential time frame for protection. This is, however, only the first of many steps necessary to commercialize the technology. Potential market applications then must be ascertained and a commercialization strategy tailored to the specific technology. At this point, optional paths to the marketplace – such as licensing to industry or forming startups through the BusinessMaker Process™ – will be explored and evaluated.

License to a startup vs. established company

Assessment of all of the above-mentioned issues influence decisions regarding the development of a marketing strategy for the technology and best instrument for taking a technology to market. If the technology is an early-stage, platform technology that is likely to be disruptive to the marketplace, a startup is probably the best chance that it has to get to the marketplace. In such cases, OTC works closely with the Entrepreneurship Center, the Businessmaker Process™, Purdue Gateways Program and local entrepreneurs, alumni and investors to market the technology, develop a business entity around it, provide business and in some cases financial support, and help the company raise the necessary funds to execute its business plan. In the event that the technology is at a relatively mature stage and has a well defined product or application, it may be more appropriate to license it to an existing company that has the resources to expedite the time to market. In such cases, OTC undertakes an aggressive marketing campaign to introduce the technology to companies that would have an interest and then pursue all leads to ensure successful licensing relationships.

Revenue distribution

Under Purdue University’s IP policy, VIII.4.1, revenue from a technology – less the costs involved in commercializing it – are distributed to the university and inventors as follows:

• one-third to the inventors – in the case of multiple inventors, this share is distributed  among the inventors in a proportion agreed to by the inventors. If the inventors are unable to come to agreement, the University Patents and Copyright Committee will make a binding determination.
• one-third to the department of the inventors – in the case of multiple inventors, the departmental share is split between departments based on the proportions agreed to by the inventors. In the event that a center or institute has provided support for the project, 1/3 of the department share will be allocated to the institute, unless the department and center/institute propose an alternative distribution.
• one-third to the Trask Fund to support Purdue’s technology commercialization initiatives

For more information, please refer to these articles written for Research Review:

Public disclosure and its impact on the ability to patent
Commercialization of university technology
The Bayh-Dole Act: A guide to the law
Patents – A legal form of protection for intellectual property