1. When you think you have an invention, you should fill out an Invention Disclosure Form (Word file). (It is really not quite so discretionary. As an employee of the University, you are actually obligated by law to disclose your invention to the University, to assign your rights in the invention to the University, and to aid in the procurements of any patents on the invention.) See the Submitting Invention Disclosure Forms page for instructions.

An invention, in this instance, is something you’ve created that works for a specific purpose. If you’re not sure whether what you have is an invention or whether it needs to be disclosed to the University, call the CSTC at 860-679-8800 and someone will help you.

2. The CSTC will evaluate your invention for its commercial potential. The criteria the CSTC uses include an evaluation of the invention’s technical strength, its potential to become valuable in the market place, and the ability to obtain and then enforce a patent. We will also take into consideration whether a prototype exists or proof of principle experiments have been done, as well as whether a potential commercial partner has already been identified.

3. If considered to be a reasonable risk, the CSTC will file a patent application. This is a legal and technical process, which is overseen by the CSTC, but which very much involves the inventor(s) and the University’s outside patent lawyers. Specifically, the inventor(s) will be asked by the attorney to describe their invention, to relate all its possible uses, to describe what came before it, and precisely who did what in the creation of the invention. The inventor(s) will also be asked to review patent applications and to help respond to questions raised by the Patent Office.

To be granted a patent by the government, an invention must be novel, non-obvious, and useful. The CSTC can answer questions you may have about the patenting process.

4. The CSTC will then contact potential commercial partners. The ability to successfully identify an interested commercial entity is also dependent upon the inventor. If the inventor has already established a relationship with a company, the chances of moving the invention further into the process is much easier. If such a relationship does not exist, the CSTC will pursue what is known as cold call marketing, where the chances of identifying an interested party are certainly less than otherwise.

It is also possible that the evaluation may lead the CSTC to believe that the invention may be the basis for a new company. If you are interested in talking to the CSTC about such a possibility and what is involved, please contact us.

5. A positive response by a potential commercial partner will usually require that a Confidentiality Agreement, a Material Transfer Agreement, an Evaluation Agreement, or something similar be established. The CSTC is fully capable of handling such matters.

6. Once their evaluation is completed, generally the potential partner will either not be interested, or will want to discuss the terms of a license. The CSTC will negotiate the terms of the license with input from the inventor regarding valuation, and other obligations, such as publication review, that occur in such legally binding agreements.

Other terms that are included in a license include exclusivity versus non-exclusivity, world-wide rights versus rights in only some territories, all fields of use versus restricted fields of use, and many, many other considerations. The CSTC is experienced in negotiating contracts and such matters should be left to the CSTC. If a potential partner asks what kinds of terms the University would want in a license, please refer them to the CSTC.

Another point that you should bear in mind is that the University is the owner of any inventions. If you are ever asked to sign an assignment document, do not do so, and contact the CSTC for our assistance.

7. Once a license has been successfully negotiated, payments should be forthcoming to the University. The CSTC oversees the distribution of such payments according to the Inventor’s Share Policy. In making such distributions the CSTC relies on the last page of the Invention Disclosure Form (Word file) which must be signed by the contributors to the invention and must indicate the percent contribution made by each individual.

8. If the CSTC decides not to pursue a patent on a technology, the inventors have the option to license back the technology. The license back is a legal agreement that enables the Inventor(s) to patent and commercialize technology developed at the University. The University’s license back policy is available for your reference.

The CSTC has a Commercialization Seminar that describes these activities in more detail. If you would like to host such a seminar, please let us know.