Does the University administration support the Technology Transfer endeavor?

Why bother with Technology Transfer?

What is a patentable invention?

How is inventorship determined?

May I, as the inventor, commercialize the invention myself?

Who pays for Patent Applications?

What about publishing?

How much time is required of the inventor in the patenting or transfer process?

What are the royalty sharing arrangements?

What steps should I take to protect my technology?

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Does the University Administration support the Technology Transfer endeavor?

Yes, University administration encourages Oregon State University researchers to consider the commercial applications of their research and to disclose potential inventions and new software. The potential benefits to the community, state, nation, researchers and university are undeniably valuable.

Why bother with Technology Transfer

The commercial or practical aspects of an invention may benefit the public through better health, improved lifestyle and education, strengthened local and regional economies and enhancement of U.S. competitiveness in the global economy. Financial returns from commercialization of technology may provide the University with additional research funding support and the inventor with additional income. NIH and other funding agencies require it.

What is a patentable invention?

A patentable invention or discovery is a useful, non obvious, and novel device, manufacturable article, machine, composition of matter (e.g. chemical, mixture, alloy), process (technological method), or new use of or improvement to an existing invention. Even living organisms or other natural matter that is modified or isolated may qualify. Intangible ideas or objectives are not patentable.

How is inventorship determined?

An "inventor" is defined by law generally as one who first invents patentable subject matter. A person must have contributed to the conception of the invention to be an "inventor." "Conception" is the formation in the mind of the inventor of a definite idea of the complete invention as it is to be practiced. Co-authors of research may or may not be considered by law to be Co-inventors. It is very important to define inventorship of an invention accurately, otherwise, the patent is invalid. If my research appears to have commercial application, how do I proceed? Before significant action is taken by the Technology Transfer Office, the inventor should complete an "Invention Disclosure" form and submit it to the Technology Transfer Office. Forms are available at the Technology Transfer Office and under "Policies and Forms".

May I, as the inventor, commercialize the invention myself?

Although Oregon State University is the owner of inventions and software developed in Oregon State University facilities by Oregon State University's faculty and staff, certain rights, upon request, may be assigned or licensed to the inventor.

Who pays for Patent Applications?

If the invention is to be protected and promoted by Oregon State University, the University will administer patent activity and, if appropriate, pay for initial patent costs (normally $8K to $15K) and promotion. In some cases, the department, school or college may share in patent and copyright costs. When an invention is released to the inventor, the inventor is responsible for all costs associated with patenting.

What about publishing?

If a technology might be of commercial value and should be protected and marketed, it is advantageous to disclose the technology to the Technology Transfer Office for review and possible filing of a patent application well in advance of any "public" disclosure of the invention (abstracts, papers and dissertations may be considered public disclosure). If public disclosure occurs prior to filing a U.S. patent application, valuable foreign patent rights may be lost. It is also encouraged that grant proposals be labeled "confidential" upon submission to avert any potential "disclosure" questions. Disclosure of the invention to Technology Transfer Office should be far enough in advance of public disclosure to permit an adequate review and development of a thorough patent application (60 days or more is desirable).

How much time is required of the inventor in the patenting or transfer process?

Although the majority of the marketing and patenting function will be performed by the Technology Transfer staff, considerable input from the inventor is usually required, especially regarding patent applications.

What are the royalty sharing arrangements?

Oregon State University has one of the most liberal royalty distribution policies in the nation. Following recoupment of patent and promotion related expenses, royalty revenue is shared based on the following schedule: 

 

What steps should I take to protect my technology?

Apart from publishing issues, it is important to keep thorough records in the form of bound lab notebooks that record your ideas and experiments and note independent witnesses to successful results. A standard Confidentiality Agreement should be considered when sending unpublished confidential information to a company. Additionally, a Materials Transfer Agreement (MTA) should be considered when sending proprietary samples (e.g., biological materials) to a company. When obtaining sample material from companies or other universities, you may receive a MTA to be signed and returned. Forward these MTA agreements to the Director of Technology Transfer for review and signature.

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