Introduction to Technology Commercialization - FAQs

Technology commercialization is the process of identifying novel research and scholarly findings, protecting the same through patents, copyrights, and trade secrets, determining potential applications in the market, and proposing further development or commercialization. 

If the Technology Commercialization process is successful, it is a means to the all important "end" of having GVSU research and scholarship have impact in the world. The process itself has many advantages. If fosters long-term and mutually beneficial relationships among the university, industry, state agencies and the community. It advances GVSU's education and innovation agenda. It attracts and cultivates progressive faculty, staff and students. It transforms GVSU innovations into new products industries and global solutions that promote the public good. And lastly, commercializing technologies drives development and expansion of local, state, and national economies. 

Technology is commercialized through exercising best practices for development of particular products and services. The best practices will vary based on the type of research or scholarly findings and market application. Most important is creating a clear, milestone driven commercialization plan which includes multiple decision-making points for continued execution. Many times, this is accomplished through collaborations with other organizations. 

Please contact the GVSU TCO through email: [email protected] or Linda Chamberlain directly at [email protected].

Research

In most instances, the use of the intellectual property from others by educational institution, there are "safe harbor" statues that protect the user from infringement. That said, if an invention is based on the use of intellectual property belonging to others, there may be limited opportunity to file for patents on the new invention, and without licensing the IP of others, no opportunity to commercialize the invention.

Yes, intellectual property may be shared. Ideally this happens AFTER a patent application has been filed. If key proprietary information is going to be shared before a patent filing, then best practice dictates this be done under a confidentiality agreement. This obligates all parties in the collaboration to hold information and disallows public disclosure. 

This is highly dependent on the terms of the agreement between GVSU and the organization or individual sponsoring the research. Frequently industrial sponsors who are compensating the research team will request all inventions derived as part of the research be assigned to their business entity. The researcher will still need to be declared as an inventor, but all IP rights will be given to the sponsor. Most research funded through grants allows for the inventor to own rights to the intellectual property developed. If the research is completed at GVSU, using GVSU resources, it's likely the invention will be subject to GVSU IP policy.

Yes, but to do so you will need to file intellectual property through the TCO prior to the publication of the research findings. It is very important to proactively prevent public disclosure of inventions prior to filing for patent protection. 

Invention Disclosure

Creating an invention is a significant accomplishment! The mission of the TCO is to protect and enhance the value of the invention to benefit the inventor(s) and GVSU.

 An Invention Disclosure is the official written notice of a university invention. Click here to learn more about the GVSU Invention Disclosure.

All inventions should be disclosed to the university through completing the Invention Disclosure Form and submitting to the TCO. Inventions may include many types of discoveries and technological innovations such as processes, methods, machines, articles of manufacture, devices, chemicals, and compositions of matter. In addition to inventions, Intellectual Property (IP) can be found in software, discoveries, creative or artistic works, know-how, processes improvements and unique materials. 

Timing is a crucial factor when submitting an invention disclosure. It should be done prior to "public disclosure" or when the invention is going to be shared through non-confidential communication to people outside of GVSU. Forms of public disclosure include a journal article, conference presentations, proceedings or abstracts, poster presentation, dissertation or thesis publication, defense of dissertation or thesis funded grant application, meeting notes publicly distributed, web posting, discussion with a non-GVSU party (on or off campus), and any publicly available video or poster.

Inventions that are publicly disclosed without any prior patented application are not eligible to seek patent protection outside the United Sates. In the United States, such disclosure establishes a "bar date" which requires patent application be made within one year from the date of disclosure. 

The TCO appreciates submission of an invention disclosure form at least eight weeks prior to planned public disclosure, especially publication or conference presentation. This timeframe allows for an in-depth evaluation process to be completed and ensures enough time for actions to be taken to protect both U.S. and foreign patenting rights.

A patentable invention is defined as a man-made device, composition, method or process that must be new, useful, and not immediately obvious (non-obvious).

An Invention Disclosure can be submitted by email: [email protected]

Assessment

The GVSU TCO assesses invention disclosures through a review process that starts with a discussion with the IDF submitter. Through this conversation the TCO is seeking to determine the level of interest in pursuing the patent protection by the inventor, whether the inventor has interest in commercializing the invention, whether the invention meets patentability criteria (novel, non-obvious and useful), and if a patent were issued, can it be policed and enforced.

The Bayh-Dole Act was passed with the objective of promoting economic development by allowing small business and nonprofit organizations, including universities, to own inventions made under the federally-funded research programs. The Bayh-Dole Act creates the parameters of university participation in technology transfer and other economic development activities. The government retains certain rights, which include: requiring use of licensed inventions to prevent sequestering, requiring U.S. manufacture for exclusive licenses, and retaining non-exclusive rights for government purposes.

Is your question not answered here?

Contact Linda Chamberlain at [email protected]

 



Page last modified July 6, 2021