The Office of Innovation and Commercialization (OIC) is a service department of Michigan Technological University for the purpose of commercializing technology developed at the University. The first step of the commercialization process is documenting the nature of status of the technology in a Technology Disclosure Form.
Preparing a Technology Disclosure Form helps document important information including the stage of the technology and the nature of commercial opportunities so that the research team, the University, and various partnering organizations can develop an actionable commercialization strategy and engage appropriate legal counsel as necessary. Early disclosure and effective communication are helpful to assess the market opportunity, collaborate with industry, seek follow-on research and development funding, and implement a proprietary protection strategy to maximize the potential for commercialization and broad dissemination of the technology. Publications, presentations and other public disclosures are core university activities for knowledge dissemination and are beneficial to the overall commercialization process but may impact proprietary protection options. If the commercialization team is aware of expected public disclosure and publications activities early then strategies can be developed to plan for and address both potential impacts and potential opportunities.
As you work to complete the form a summary of valuable information includes:
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Who are the individuals involved in creation of the technology? The disclosure should be submitted with titles of all known contributors, whether they are at Michigan Tech or elsewhere.
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Was the technology created under any sponsored 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 using Federal funds. If these procedures are not followed then available commercial rights to the technology may be compromised and Michigan Tech's ability to receive funds for Federal projects may be substantially compromised or eliminated.
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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 complying with sponsored agreement terms and allowing opportunity for 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 any opportunities for dissemination of knowledge as part of the proprietary protection strategy.
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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.
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Is any data available regarding the performance of the technology, particularly when compared with performance of alternative solutions?
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Who are the potential customers? It is important to disclose any potential industry partners that have expressed interest at conference, trade shows, or publication inquiries. Over half of all license agreements based upon university technologies are completed as a direct result of the professional relationships between the ultimate licensee and the researchers who created the technology.
The Commercialization team will review the disclosure and communicate with the research team to provide a preliminary determination related to the assessment of commercial potential and the next steps in the research, development, and commercialization process including the prospective opportunity and need for protecting the technology. 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 OIC team works with the partner and Michigan Tech's Intellectual Property Counsel to identify the proprietary position and prepare, execute and enforce the terms of a license agreement. OIC also disburses any royalties received to contributors and their department as provided under University Policies.
Active involvement of the research team is generally an important component of a successful follow-on research, development, and commercialization strategy. The OIC 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 educational goals.