Editor’s note: Karen LeVert is president of Durham-based Southeast TechInventures, Inc. (STI), a group that partners with university-based inventors to accelerate the commercialization of technologies primarily in the areas of bioengineering, photonics, materials science, and information technology. LeVert will be speaking at the Council for Entrepreneurial Development’s Entrepreneurs Only Workshop on “Managing the Technology Transfer Process” on July 26. This column is the latest in a series for LTW from the membership of the CED.
_______________________________________________________________________________________In most cases, before attempting to commercialize a university technology, the intellectual property has to be licensed from the university. The Association of University Technology Managers (AUTM) defines Technology Transfer as the formal transfer of rights to use and commercialize new discoveries and innovations resulting from scientific research to another party.

Universities typically transfer technology through protecting (using patents and copyrights), then licensing new innovations. The major steps in this process include the disclosure of innovations, patenting the innovation concurrent with publication of scientific research and licensing the rights to innovations to industry for commercial development.

STI’s business model promotes standardization; therefore the licensing process tends to be fairly straightforward. However, if a start-up company or inventor is interested in licensing intellectual property on their own from the university, I have a few points to share from my experience to potentially make the process more efficient:

  • If you are an inventor keep in mind that after the technology is disclosed to the university, the technology transfer office usually performs activities assessing the technology, intellectual property, and market. The more information that is provided in these areas at time of disclosure increases your chances of a patent application being filed on your technology. A motivated inventor is helpful to the overall process.

  • Many technology transfer office associates prefer to negotiate directly with the executive leader of the company seeking the license. This executive should work closely with his or her legal team and possibly angel or venture capital investors (if involved).

  • If you have little to no experience in securing intellectual property rights it would be preferable to have someone more experienced lead this process. It is advantageous when everyone fully understands the process.

  • Know that securing an intellectual property license can take time in negotiating.

  • Know that the university usually gets compensated by the reimbursement of prior patent costs and differing combinations of royalties on future revenues, milestone payments, and equity ownership in the company that is licensing the technology.

  • Most universities do not have a standard agreement they use when licensing technologies so your terms may be widely different from another company’s terms.

  • Last but not least, remember, we are all human, treat others as you wish to be treated. Good relationships bode well in the long run!
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    Karen LeVert’s business experience encompasses both corporate and entrepreneurial worlds with successful leadership experience in executive management, finance, consulting, and information technology. Before co-founding STI (www.southeasttechinventures.com ), LeVert held founders positions in 3 previous start-ups after spending 14 years in corporate America. She holds an MBA from the University of Dayton and an Information Technology undergraduate degree from Eastern Michigan University.

    LeVert will be speaking at CED’s next Entrepreneurs Only Workshop, “Managing the Technology Transfer Process,” set for July 26 from 12-1:30pm in the RTP. For more details on this workshop, visit: www.cednc.org/cgi-bin/irCom.pl?768/1/db/351/0/0/28/0/0/0/2317