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Evaluating Your Technology

evaluationThere is a logical order as ideas coalesce into inventions and move forward to commercialization. The OVPR’s Technology Commercialization Services (TCS) guides this process. TCS is often the first stop for inventors and industries seeking to advance new ideas and products.  TCS manages all intellectual property created at the university. Each year the group receives and evaluates about 70 new invention disclosures, files approximately 30 new U.S. patent applications and signs nearly 15 new commercial agreements.

When you believe you have invented something new, you should fill out an Invention Disclosure Form. As an employee of the University, you are 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 procurement of any patents on the invention. (See Disclosing Your Invention for instructions.) The 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, please use this Pre-disclosure form to help us determine if your new idea may have a commercial application and warrants filing an Invention or call TCS at (860) 679-3992 and someone will help you complete the form.

  1. TCS will assess your invention for its commercial potential by evaluating its technical strength, market potential, patentability and strength as if issued as a patent. We will also take into consideration whether a prototype exists or proof of principle experiments are complete, as well as whether a potential commercial partner has already been identified or has expressed interest. If your invention is considered to be a reasonable risk, a patent application will be filed.
  2. Patenting is a legal and technical process, which is overseen by TCS, but which very much involves the inventor(s) and the University’s outside patent attorneys. Specifically, the inventor(s) may be asked by the attorney to: clarify details of their invention,  describe all its possible uses, differentiate the invention from related technology and describe its potential advantages, and help define what each potential inventor contributed to 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, an invention must be novel, non-obvious, and useful.
  3. During the evaluation of the invention, TCS will determine if the invention is best commercialized as a license to an existing company or as the platform for a new venture.  If a license is pursued, TCS will  contact potential commercial partners and market the technology.  However, often the inventor, as an expert in the field, has the best industry contacts.  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, TCS will pursue contacts with industry.  If the invention is a platform technology, TCS will also work with inventors to start a new venture.
  4. Marketing technology to a potential licensee will usually require that a Confidentiality Agreement, a Material Transfer Agreement, an Evaluation Agreement, or something similar be established.  The OVPR can negotiate these agreements for you and has the legal authority from the University to do so.

Once their evaluation is completed, the potential partner may want to discuss the terms of a license. TCS will negotiate the terms of the license with input from the inventor regarding valuation, and other obligations, 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 other considerations. The TCS is experienced in negotiating contracts and is the designated legal authority from the University to do so. If a potential partner asks what kinds of terms the University would want in a license, please refer them to TCS.

Another point that inventors should bear in mind is that the University is the owner of any UConn faculty or staff inventions. If you are ever asked to sign an assignment document or other legal document, do not do so, and contact TCS for our assistance. Once a license has been successfully negotiated, payments should be forthcoming to the University. TCS oversees the distribution of such payments according to university policy. In making such distributions the TCS relies on the last page of the Invention Disclosure Form which must be signed by the contributors to the invention and must indicate the percent contribution made by each individual.

If TCS 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 if you would like more information.

Confidential Disclosure Agreements (CDA)

Interest in your technology by a commercial partner may require that a Confidential Disclosure Agreement be negotiated between the University and the Company prior to exchanging detailed information about your invention.

Confidential Disclosure Agreements usually require some modification to accommodate the needs of the University and/or the commercial partner. Additionally, an authorized University Official must sign the Agreement for the University.  TCS can sign and will handle the negotiation process for you. After the agreement is executed TCS will provide you with a copy for your records.

If you have any questions please contact us!

Donna Cyr, Licensing Director or Vaibhav Saini, Director, Life Sciences or call us at 860-679-3992