PhD students are often working on and developing technologies with potential to translate well into market and industry. Every university handles patenting differently, but here at USC, the USC Stevens Center for Innovation accepts all invention disclosures, encourages collaborations with external companies, and aids with licensing the intellectual property (IP) when the technology is ready to be commercialized.
After a faculty member or student discloses their invention to Stevens, the staff there will take a hard look at the submission and begin to research the current market for similar technologies. If they believe that the invention is advanced enough to warrant protection, then they will initiate an application for a provisional patent. Provisional patents are legal documents filed with the United States Patent and Trademark Office (USPTO), which will lock down the filing date and protect IP.
During the provisional year, researchers can keep working on the technology to flush it out and beginning discussing it with potential collaborators and companies. If anyone is interested in learning more, they will sign a mutual confidential disclosure agreement (CDA) so that both parties can have an in-depth discussion without having to worry about giving away enabling information.
After the CDA is established, there are 3 main ways USC can collaborate with companies:
- Licensing: If the invention has associated IP, external companies will pay royalties and patent prosecution/maintenance costs in exchange for the ability to use and commercialize the IP.
- Materials transfer agreements (MTAs): MTAs can be established if the company wants to use the IP for internal research purposes only. Thus, they pay only for the materials themselves, and are not expected to pay royalties since they are not directly commercializing the IP.
- Research collaboration: Although rare, these are established when the technology is not quite advanced enough to suit the needs of the company, but the company is also not interested in developing it themselves. They will instead sponsor research within the inventors’ group to further develop a technology specifically for the company’s purpose.
It’s been quite exciting going through this process and learning more about bridging the worlds of academia and industry. If you’re working on a project that is promising, be sure to reach out to your school’s technology licensing office!
Published on May 16th, 2019
Last updated on April 1st, 2021