Office of Technology Transfer & Business Development
Confidential Disclosure Agreement
License Revenue Distribution
Technology Marketing Process –
Inventor Candidate Group is Part of the Marketing Team
The inventor candidate group reviews the non-confidential marketing summary and the target company list prepared by OTT to perfect the marketing strategy. The inventor candidate group also appreciates receiving company feedback to better understand the market need. Further, it has been OTT's experience that the interaction of the inventor candidate group participants with a potential licensee increases the likelihood of future sponsored research funding opportunities. The potential licensee also benefits from such interaction, which increases the further product development potential.
When does Marketing Start?
For patentable inventions, OTT initiates the marketing process as soon as the decision on the commercialization path of an invention is made, including a decision on whether a patent application will be filed.
For unpatented know-how and research tools, OTT initiates marketing within 1-2 months following receipt of the ROI, often taking advantage of the inventor candidate group's publication(s) to assist in the marketing effort along with any industrial contacts they may have.
Marketing Package & Target Companies
OTT establishes a non-confidential summary (NCS) that describes the invention and its advantages without disclosing proprietary details. The NCS is sent to the inventor candidate group for review and comment. OTT also asks the inventor candidate group to provide published information, such as a journal article or meeting abstract. The NCS and relevant published information are included in a marketing package.
In general, OTT conducts market research using the keywords provided by the inventor candidate group and a licensed marketing database to identify approximately 25-35 target companies for the first round of marketing effort. OTT encourages the inventor candidate group to provide their industry contact, if any, which is also included in the company list. Prior to contacting the target companies, the company list is sent to the inventor candidate group for review and comment.
Reaching Out to Industry
Following the filing of the provisional patent application on a patentable invention, or the web-posting of non-confidential information about unpatented know-how or research tools, OTT begins to contact target companies through introductory emails to the decision-making business executives of the companies, usually the CEO, President, and/or the Vice President of Business Development. The marketing package is attached to the email for review. There are regular follow-ups via email and/or telephone.
In addition, OTT works closely with the regional economic development agencies to explore funding opportunities for startup companies if the inventor candidate group indicates interest in forming a company and the invention is suitable for a startup. At times, OTT leverages its venture capital connections to assist the inventor candidate group to explore the possibility of forming a company surrounding the invention and seeking VC funding.
When a company requests additional published information, OTT and the inventor candidate group will work closely to provide such information. If the company requests unpublished information, OTT will request the company to establish a Confidential Disclosure Agreement (CDA) with TJU prior to providing unpublished information. Once the CDA is in place, OTT will provide additional unpublished information, with the inventor candidate group's approval, and/or facilitate a discussion between the company and the inventor candidate group via telephone or face-to-face meeting. Such discussion may lead to subsequent licensing and/or sponsored research discussions.
If a company declines to pursue the business opportunity on the invention, OTT attempts to obtain the rationale of such decision from both scientific and business perspective. Feedback from target companies is shared with the inventor candidate group. Company feedback is often used to make a patent prosecution-related decision.
OTT initiates additional rounds of marketing if there is no licensing interest in the invention after the first round of marketing as long as a patent application is pending or the technologies are marketed as know-how. OTT works with the inventor candidate group to modify the NCS and the target company list as needed, and asks the group for an update on published information and additional keywords. OTT utilizes the licensed marketing database and internet search to identify additional target companies to contact. The marketing effort continues until a decision to abandon the patent prosecution on the invention is made.
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