The Patent and Tangible Research Policy (POL 10.00.01) at NC State states that “it is in the public interest for the University, when appropriate, to secure intellectual property protection for the products of its research to facilitate commercialization, to encourage entrepreneurship, to contribute to the professional development of University inventors, and to enhance the educational opportunities of participating students”.
The policy defines the terms like “invention,” “inventor,” and how royalties flow through explains the university’s distribution policy as follows:
- 40% to INVENTORS
- 5% to the College (to be used for activities that support innovation and entrepreneurship)
- 5% to the Department/Unit (to be used for activities that support innovation and entrepreneurship)
- 50% to the PATENT TRUST FUND
As a condition of employment at NC State, every employee must sign the NC State Patent Agreement, which states the “obligation to communicate promptly to the University Office of Technology Commercialization and New Ventures a full and complete disclosure of all inventions.” Further, the agreement states that “every employee will assign to the University their right title and interest in all inventions that they conceive or reduce to practice during the course of their employment or in connection with their use of university facilities or funds administered by the University.”
During this phase the university innovator will:
- Complete an Invention Disclosure Form (IDF) through the NC State Office of Technology Commercialization and New Ventures (OTCNV)
- Online Portal for Disclosure (go.ncsu.edu/disclosure)
- The e-Disclosure Portal is authenticated through UNITY, and will allow users to electronically create, sign, and submit disclosures for new inventions, software, plant varieties, and copyrighted works.
Online disclosure to the Office of Technology Commercialization and New Ventures (OTCNV) for Copyright, Invention, Plant, or Software
The very first step in seeking to commercialize an innovation (will refer to an invention or technology, software, a copyrighted work, or plant) developed at the university will be to submit an Invention Disclosure Form (IDF) through the NC State Office of Technology Commercialization and New Ventures (OTCNV). OTCNV will evaluate the IDF to determine the best path forward for compliance reporting and commercialization. During this time, the University Innovator should begin to consider and prepare for several possible outcomes.
- OTCNV is not able to move forward with commercializing the innovation at the current time due to any number of reasons that are further described here
- OTCNV will initiate the commercialization process through our Technology Marketing Website as well as direct marketing to appropriate industry contacts
- The first option is where a suitable external licensee expresses interest in working with NC State OTCNV and the university innovator to commercialize the technology.
- The second option is that there is not an interested external licensee, which opens the door for creating a startup company to commercialize the technology.
OTCNV’s staff has expertise in intellectual property management including patenting, copyright, trademark, plant variety protection, and software commercialization. OTCNV seeks and works with university innovators to find the path necessary to commercialization, so it is critical that the innovator leverage the expertise and experience in commercializing innovations at the earliest stage possible. However, there are many reasons why an innovation might not be able to be protected and commercialized. If OTCNV are unable to proceed with commercialization, your assigned Licensing Associate from OTCNV will respond back to the university innovator as to the reasons why. Often further development or more data is required to make a compelling case for attracting a commercialization partner. Sometimes the innovation is solid but a market need can not be identified.
How does OTCNV find a suitable licensee for commercialization?
If it is determined that the innovation is considered feasible for commercialization then OTCNV will typically market the opportunity to license the innovation to established companies and/or experienced entrepreneurs first. Licensing an innovation to an established company or experienced (also know as “serial entrepreneur“) entrepreneur is the most traditional route to successful commercialization. This is due to the financial strength, research and development capabilities, specialized equipment, developed customer base, distribution channels, and experience in bringing technologies to market.
However, licensing to an existing company or serial entrepreneur is not always feasible, and under appropriate circumstances, University Innovators may choose to form a startup company to commercialize intellectual property developed at NC State (“Startup Company”). These NC State Startup Companies drive economic growth by offering a pathway toward commercialization that often remains rooted in the local economy. Startup companies contribute to the economic development mission of the university by creating employment opportunities for our graduates, assist in attracting top faculty, and connect the research and economic development missions of the university to our alumni base. Working to ensure that NC State maintains its vibrant innovation and entrepreneurial environment is a key goal of OTCNV.
What has been the impact of the University’s commercialization efforts?
Over the years NC State OTCNV has played a critical role in the following economic development impact:
- Products to Market: 400+
- Startups Launched: 100+
- Jobs Created: 8,100+
- Jobs Created in NC: 3,500+
- Financing Raised: $1.6B
- Market Cap: $6.2B+
When does the startup company possibility become a reality?
If there is no interested external licensee, and the university innovator is interested in commercializing the technology through the creation of a startup company, then the university innovator should meet with OTCNV and start to discuss the possibility of launching a startup company.
This is when the Venture Development (launching a startup company based around intellectual property developed at the university) process begins.
Frequently Asked Questions:
- What is an Invention Disclosure Form?
- An invention Disclosure form (IDF) is a written description of your invention or development submitted to the NC State Office of Technology Commercialization and New Ventures (OTCNV). The IDF should list all collaborating sources of support and include all of the information necessary to begin pursuing protection, marketing, and commercialization activities. This document is treated as “Confidential.” Based on the IDF, the OTCNV may generate a non-confidential description of your invention in order to assist in marketing the technology. Once potential partners have been identified, and confidential disclosure agreements have been signed, more detailed exchanges of information can occur.
- Why should I submit an Invention Disclosure Form?
- When you disclose your invention to the OTCNV, it starts a process that could lead to the commercialization of your technology. This may involve beginning the intellectual property protection process and identifying commercialization partners. If government funds were used for your research, you are required to file a prompt disclosure, which will be reported to the sponsoring agency. Similar requirements exist for industry-sponsored projects as well.
- How do I know if my discovery is an invention?
- You are encouraged to submit an IDF for all inventions and developments that you feel may solve a problem and/ or have commercial application and/or value. If you are in doubt, contact the OTCNV to discuss the invention and strategies for commercialization.
- When should I complete an Invention Disclosure Form?
- You should complete an IDF whenever you feel you have discovered something unique with possible commercial value. This should be done well before presenting the discovery through publications, poster sessions, conferences, press releases, or other communication. Once publicly disclosed (i.e., published or presented in any form), an invention may have restricted or minimal potential for patent protection. Differences exist between the U.S. and other countries on the impact of early publication and public disclosure on seeking patent protection. Be sure to inform the OTCNV of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal, dissertation/masters thesis, publication, or other public presentation including the invention.
- Should I disclose research tools?
- Yes, if your new tools would benefit other researchers and you are interested in providing them to those researchers and to others. Typically, research tools are materials such as antibodies, vectors, plasmids, cell lines, mice, and other materials used as “tools” in the research process. Most research tools do not necessarily need to be protected by patents in order to be licensed to commercial third parties and/or to generate revenue. If you have research tools that you believe to be valuable, or wish to provide to others (including research collaborators), the OTCNV will work with you to develop the appropriate protection, licensing, and distribution strategy.
- How do I submit an Invention Disclosure Form (IDF)?
- The invention Disclosure form is completed and submitted electronically at the Online Innovator’s Portal for Disclosure (go.ncsu.edu/disclosure)
- New invention disclosures are assigned as they are received to an OTCNV licensing associate.
- If you have any questions, call the OTCNV at 919.515.7199 or email us at firstname.lastname@example.org.
- Who is considered an inventor for the purposes of technology transfer?
- An “inventor” is an individual who has made a contribution to the conception of an invention. Inventorship is determined by United States patent law.
- What is an “NC State Startup Company”?
- The NC State Office of Technology Commercialization and New Ventures (OTCNV) defines a startup company according to the AUTM definition which “are companies that were dependent upon licensing the institution’s technology for initiation”. Essentially in order to be considered a startup company according to the Association of University Technology Managers (AUTM) the company must have secured either an Option Agreement or a License Agreement for rights to the technology. The Option Agreement or a License Agreement formalizes the relationship between the University (licensor) and the startup company (licensee) by conferring the rights for the innovation.
NC State University Resources:
Additional Resources – Web Links:
- The US Patent & Trademark Office (USPTO)