The Innovation and Commercialization Office (OIC) is a service department of Michigan Technological University for the purpose of commercializing technology developed at the university. The first step of providing this service begins with the preparation and submission of a Technology Disclosure Form.
At the time of their employment, all employees become subject to the University's Patent, Research, and Proprietary Rights Agreement. This agreement requires that researchers disclose any new technology they create during the course of their employment or otherwise with the use of University funds, equipment, facilities, or other personnel of the University, and assign those technologies to the University.
Preparing your Technology Disclosure
It is important to disclose your technology as soon as possible so that the research team, the University, and the necessary legal counsel can begin to develop a commercialization strategy. Early disclosure and effective communication are helpful to assess the market opportunity, collaborate with industry, seek technology development funding, and implement a proprietary protection strategy to maximize the potential for commercialization. Publications, presentations and other public disclosures are core university activities for knowledge dissemination. The earlier the ICO office knows about upcoming public disclosures, the more effectively it can work around these activities that can compromise or eliminate strong proprietary protection.
It is not necessary to wait for the final iteration of the idea to be developed, but rather a disclosure should be filed as soon as the research team has the first outline of a conceived technology with commercial potential. Additional material can be used to supplement the technology disclosure as details are worked out. In addition to the disclosure itself, researchers should keep detailed records of their activities in the lab, and these records should be dated, signed, and witnessed.
Specific information required to complete the technology disclosure form includes:
Who are the participants? The disclosure should be submitted with titles of all known contributors, whether they are at Michigan Tech or elsewhere.
Was the technology created under any funded project or contract of any form? Both industry and federally sponsored research agreements contain intellectual property provisions that relate to how intellectual property is handled. The Federal Government has procedures for disclosing technology created under Federally funded projects. If these procedures are not followed, Michigan Tech's ability to receive funds for Federal projects may be substantially compromised or eliminated.
Are there any past publications on the subject covered in the disclosure, or are there any plans for publishing? The first date of public disclosure is very important to know for both following sponsored agreement terms and potential intellectual property protection. Knowing dates of past or planned public disclosures is very important for developing a commercialization strategy for any technology. The commercialization office recognizes that publishing is essential for most academic professionals and makes every effort not to inhibit the dissemination of knowledge as part of the proprietary protection strategy.
Do you have any drawings? Diagrams and sketches of the proposed technology are very important to the documentation. These documents should also be signed, dated, witnessed and attached to the technology disclosure form whenever possible.
Who are the potential customers? It is important to disclose any potential industry partners that have expressed interest at various conference, trade shows, or publication inquires. Over half of all license agreements based upon university technologies are completed as a direct result of the professional relationships with the researchers.
The Commercialization team will review the disclosure and communicate with the research team to provide a preliminary determination of the need and potential for protecting the technology and the approximate market potential. Industry partners are commonly identified by the researchers themselves as they likely have experience in, or knowledge of the market they are seeking to enter.
If an industry partner with significant collaboration interest is found, the ICO staff works with the Licensee and Michigan Tech's Intellectual Property Counsel to identify the proprietary position and prepare, execute and enforce the terms of a license agreement. ICO also disburses any royalty payments received to contributors and their department based upon defined University Policies.
Active involvement of the disclosing research team is generally an important component of a successful commercialization strategy. The ICO office provides significant support for the process so that contributors can participate where needed, but otherwise focus their efforts toward furthering their individual research and teaching goals.