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BIRAD and the Research Authority actively reach out to faculty to encourage disclosures of new innovations. The disclosure is a written statement outlining the new innovation and documenting the circumstances of its development.

The disclosure also identifies potential applications and which companies may be interested in licensing the IP if known. Forms can be found on the Research Authority Websites.

The disclosure form helps to begin the process of evaluating the technology transfer potential for the

Intellectual property and complies with the obligations of BIU.

Please note that “Disclosure” form does not, by itself, protect the intellectual property. Only a patent or a copyright can do that. In addition, disclosure to Research Authority is confidential; it is not a public disclosure. A disclosure to someone outside the University is a public disclosure, unless you sign a confidentiality agreement, which can be obtained through Birad offices.

Screening Evaluation/ Assessment
Patenting Decisions
Market Assessment
Release/Return (Assign) to Inventor
Licensing
Q&A
Screening Evaluation/ Assessment

Through the screening review process, the decision is made whether or not to pursue Commercialization efforts for a technology.

Within six to eight weeks of receiving a disclosure, BIRAD staff completes a business case analysis, called a screening evaluation, with a recommended course of action on commercialization. The results of the screening evaluation, which includes an analysis of where the technology fits in the marketplace and research into possible licensees, are then shared with the inventors.

Patenting Decisions

For technologies that BIRAD decide to patent, an initial patent strategy is decided upon. In most cases, an independent patent law firm is hired to prepare and prosecute the patent application.

Market Assessment

Detailed analysis, sometimes through the engagement of outside consultants who connect with industry experts, adds to BIRAD understanding of the potential market for the technology and helps determine further patenting and marketing actions. Inventors themselves often help enormously in finding interested licensees since they have many contacts through their own research.

Release/Return (Assign) to Inventor

If BIRAD decides not to pursue or to discontinue pursuit of commercialization efforts on an innovation, it will release the invention and may assign the University’s ownership rights to the inventors, if they are interested in pursuing a patent and commercializing the innovation independently. An agreement between the inventors and the university will be signed to this end.

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Licensing

A license is the technology transfer agreement granting some of the University’s rights as owner of an intellectual property (licensor) to a company who has agreed to certain obligations and responsibilities to commercialize the intellectual property (licensee).

The University licenses its varied technologies (patents, software, databases) to companies who demonstrate the capability and commitment to developing the early stage innovations into commercial products.

Licensees also demonstrate such commitment to providing a written technology development plan to the University. This plan should include, but not be limited to, a description of the technologies to be licensed, the resulting product, market analysis, a product development timeline and the company resources committed to development. The terms of the license are negotiated based on the licensee’s plan.

The licensing process begins with negotiations with interested industry partners, including entrepreneurs in which term sheets summarizing the essential business terms of the licensing agreement are exchanged. Below are the types of business terms generally addressed.

Scope of License Rights:

License rights such as exclusive, non-exclusive, field of use limitations and territory limitations are established to be commensurate with the licensee’s product development plans and the market. The University’s licensing objective is to obtain widespread use of its technologies.

License Fee:

Together with the royalties and other monetary terms, the value depends on the scope of the license rights and the market value of the technology licensed.

Royalties:

Royalties are paid by the licensee when products or services that require the use of the technology are sold. Royalties can be expressed as a percentage (%) of sale or a fee per selling the unit. Royalty rates vary according to the industry, the significance of the invention and the base upon which the royalty is applied (e.g., unit, component, subsystem.)

Patent Reimbursement:

Recovery of the costs incurred for protecting the technology in the U.S. and internationally are part of the license.

Performance (Diligence) Milestones:

University technologies often require a significant period of time and effort in product development before they are ready for the market. During the development phase, licensees are required to provide periodic reports and meet specific milestones in order to retain a license, especially an exclusive license.

Q&A

Can I still publish my findings?

Yes, findings can still be published and the disclosure process does not alter your publication timetable. However, since publishing can affect the ability to obtain patent, it is important to submit a disclosure prior to publishing or communicating your findings in a public forum.

When should I submit a disclosure?

It is best if inventors submit a disclosure between eight and 12 weeks before publication so that, if necessary, actions can be taken to protect both U.S. and foreign rights. Once publicly disclosed, an invention may not be patentable. To be safe, inform BIRAD of any imminent or prior presentations that include the IP.

What’s my role in patenting?

Inventors and BIRAD professionals communicate with the patent attorney during the patenting process. Also, inventors will need to review drafts of documents, sign assignments, and other legal documentation. BIRAD will guide the inventors during the process.

What’s my role in marketing?

Inventors are welcome to work closely with BIRAD professionals to market their invention. There are many aspects of marketing that inventors may choose to be involved with, ranging from helping to transfer knowledge to recommending contacts that might be interested in licensing the inventor’s technology. BIRAD invite inventor feedback on licensing terms and work closely with inventors when crafting pre-licensing agreements such as material transfer and evaluation agreements.

What’s my role in licensing?

Inventors will be informed of progress in licensing. The inventor’s expertise is often critically important to transfer the technology and related know-how to the licensee. The University license places only nominal obligations on the part of the inventor to assist in the transfer of the licensed technology. When more than minimal time and effort is necessary, the licensee will negotiate a separate consulting arrangement with the inventor.

What effect does a license have on my ability to do research?

You can still continue research using a licensed invention, even if it is exclusively licensed. The University retains the right to use a licensed invention in its academic research and teaching.