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Faculty/Staff/Student Investigators


The Licensing Process

The technology commercialization process begins with an idea and is deemed successful when it enters the marketplace as a product or service. Each step in the process is critical and follows a timeline that depends on many factors, some dependent on the inventor, some on the licensing office, and some on the commercial partner. Factors that relate to potential licensing success include completeness and breadth of the invention disclosure, the commitment of the licensing office to protect and market the invention, and resources available to the industrial partner for development and commercialization.

  1. Invention Background and Preparation
  2. Invention Disclosure
  3. Invention Evaluation
  4. Intellectual Property Protection
  5. Invention Marketing

I. Invention Background and Preparation

Invention seldom occurs by mere happenstance—the "eureka!" or "aha!" type of breakthrough is more a myth than reality. In fact, university invention involves hard work, precise experimentation, and organized record keeping. Researchers should be considering the possibility of creating an invention from the very beginning of their research. By keeping accurate laboratory records from the start, it is easier to document the date of the invention’s conception and to show who was involved in the development of the original idea. This proof is necessary if questions should arise about inventorship and/or ownership.

Remember that public disclosure, in either text or verbal form, may result in a lost opportunity to protect and commercialize your invention. If you think you have created an invention, contact the Technology Transfer Office (TTO) before submitting a manuscript for publication. It is best to call and establish personal contact right away; submitting a completed Invention Disclosure Form is the first step in the process of protecting your invention.

Thinking and Acting Like an Inventor
How does one go from being a researcher to an inventor? One of the most important aspects of inventorship is thinking commercially: i.e., understanding how your research endeavors match up with trends and forces driving change in the marketplace. To do this a researcher must "think application." Ask yourself how your technology can work outside your lab to solve a problem faced by people in society; the bigger the problem, the larger the market.

By thinking of applications and the forces that influence change in these applications, you will broaden your perspective for inventive activity. Gradually you will begin to build and enhance pathways to people that understand the forces influencing change. Typically these will be people in industrial R&D settings who you may know from previous employment and education, e.g., former students, friends from graduate schools, acquaintances met at conferences, successful inventor peers, and so forth. Serial inventors seek these people out and develop their research networks.

Maintain Good Laboratory Records
Laboratory notebooks serve two essential purposes beyond good organization and record keeping. The first involves preparation of an invention disclosure and possible patent application, processes that are streamlined by good laboratory records. In particular, when patent attorneys begin the process of drafting patent applications, they first turn to researchers’ laboratory notebooks to determine the progress of ideas, experiments, and data. The alternative is oral disclosure; clearly a less precise process.

The second purpose involves defending an issued patent. United States patents are granted on a "first to invent" basis, unlike most other countries where patents are granted on a "first to file" basis. Thus, having adequate laboratory notebook records is essential to identifying the conception and reduction to practice of an invention (these terms are defined below).

Laboratory notebooks provide evidence in defense of challenges made to issued patents. Though patent infringement litigation rarely occurs, more valuable inventions are more likely to be contested. An "infringement" occurs when someone is commercially practicing technology that is protected by an issued patent. To defend against infringement, the patent’s owner (in this case the University of Colorado) must inform the infringer of the patent rights violation. If the infringer contests the claim of infringement, the patent owner typically initiates legal proceedings. Laboratory notebooks must be accessible to defend the patent during the legal proceedings.

To be named an inventor on a U.S. Patent, the applicant must prove two points: initial conception (formation of the idea) of a novel process or product coupled with "reduction to practice" or how the idea would actually work. Reduction to practice must follow initial conception otherwise other inventors could be granted the patent if they were first to reduce the invention to practice. Filing for patent protection is best when there is ample experimental evidence describing "how to do" or "how to make" a compound, device, or process. Patent filing should precede a public disclosure (abstract or article publication, seminar or poster presentation, or similar delivery of inventive information to any group not covered by a confidentiality agreement).

Protecting Your Invention: Two Methods to Support Patent Claims

1. Laboratory Notebooks are by far the most important source of invention documention. Laboratory notebooks need not be in a particular format; however, the following standards present a reliable format to prevent claims of fraudulent insertion or deletion of entries.

  • Use bound notebooks with pre-numbered pages.
  • Sign your full name and date every page.
  • Use ink when recording ideas and experiments.
  • Use a single strike if anything is crossed out and initial as "strike-outs."
  • Do not skip pages or leave empty spaces. Draw a line through any unused portion and initial and date the marking.
  • Initial across the edge of auxiliary material: i.e., figures and computer printouts that are pasted into the notebook.
  • Do not place results printed on thermal paper in your notebook as it fades over time (copy the data and place it in the notebook).
  • Digital records can be submitted as evidence of an invention, but it is highly recommended that these records be supported with written documentation; courts do not favor digital records.
  • Label ideas or proposals to differentiate them from work actually performed.
  • Have records "witnessed" with signature and date by someone who understands the content of the work on a weekly basis. The witness should not be a direct contributor to the work being reported.
  • Try to preserve the "first samples" of new materials produced by new methods.
  • Retain records of purchase orders for components required for testing.

2. Invention Disclosures provide additional support for determining the actual time of an invention. File an Invention Disclosure with the Technology Transfer Office immediately after the initial conception and before reduction to practice. This confidential, signed, and dated document is an official university record that may be helpful in interference proceedings. Furthermore, the sooner TTO receives news of inventions, even if only a conception, the better we can understand your interests and prepare for the eventual marketing of your invention.

Know Intellectual Property Provisions and Terms
Intellectual property (IP) by its very nature exists in a legalistic contractual environment and cannot be summarized in simple layman terms. It behooves the researcher to understand the lexicon of IP. Not paying attention to the details of a contract can result in serious repercussions beyond loss of inventions. For example, it is common to see limits placed on publications in consulting contracts. The University of Colorado Intellectual Property Guidebook provides IP information beyond what is contained on this web site. ( Download the Intellectual Property Guidebook in pdf format.) In general, if the language you see in research contracts and related documents is not absolutely clear to you, contact TTO for help and interpretations.

II. Disclosure

The disclosure process begins with submission of an Invention Disclosure Form to TTO. This form requires a complete description of the invention, relevant background information, dated signatures of all inventors, contact information, and the percentage of each inventor's contribution if more than one inventor is involved. Be concise and factual; this information may be used to develop a patent application and is used during the evaluation process. Electronic submission is allowed, but an original form signed by the inventor(s) must follow.

Public disclosures, which include posters and grant applications, may limit protectability of the idea. Contact your TTO if you have a question or are in doubt. If you are submitting a grant proposal to an industrial sponsor containing information about an invention, mark "Confidential Information of CU" on the pages that contain proprietary information and indicate in the cover letter that proprietary information is included.

III. Invention Evaluation

Upon receipt of an Invention Disclosure, TTO assigns a technology ID number and a technology manager as the primary point of contact. The disclosure is reviewed and an interview is conducted with the inventor(s). Additional information may be needed to fully understand the disclosed invention.

The evaluation process involves the technology manager, the inventor(s), and in some cases, third party reviewers who operate under confidentiality. The technology manager uses a variety of databases and contacts to develop a clear understanding of the invention’s technical merit, patentability or protectability, and commercial potential.

The evaluation process determines whether funds will be expended to patent an invention and serves as the foundation for the commercialization strategy.

IV. Intellectual Property Protection

There are several ways to protect IP; patenting is the most common, the most expensive, and may take two to five years to complete. Other methods include confidential disclosure agreements, trademarks, copyrights, and trade secrets. The University of Colorado Intellectual Property Guidebook and the U.S. Patent and Trademark Office offer comprehensive information on these and other topics. (Download the Intellectual Property Guidebook in pdf format.)

V. Invention Marketing

TTO will market your invention, providing sufficient data exists to prove it works. If there is no actual reduction to practice (i.e., data or demonstration that shows the invention actually works), then conceptual inventions are difficult to market. However, proof-of-concept grant funding, from public (e.g., SBIR and STTR) or private sources (seed venture capital or innovation companies), may be a possibility. Grant funds (public or private) may carry some IP rights with them.

When an invention is disclosed, TTO will complete a market analysis using a variety of resources to determine a preliminary value of the technology, including market size, market share, and associated risks or barriers. One major difference between the previous CU technology transfer operation and the present one is the degree to which inventors will be involved and informed about the marketing process.

Within four months of receiving a complete disclosure, TTO will make a decision to protect the technology or not. Typically, it takes this long to understand the technology and market, and to ensure a positive relationship with the inventor. This relationship is key because the inventor must be actively involved in all stages of the process from working with patent attorneys to assessing prospective licensing candidates. In the early stages, the inventor must be able to build solid working relationships with scientists or technologists at the prospective licensee and maintain them over the early stages of company involvement with transfer. Technology transfer involves more than a license to a patent; it means moving the technology from the inventor’s laboratory into the licensee’s laboratory. This "hands on" process involves the conveyance of know-how and technical ability more than a written description of experimental results.

If no potential licenses are readily apparent or the technology is deemed too narrow for a start-up company but TTO determines there is commercial potential and decides to pursue patent protection, staff will work with the inventor to draft a non-confidential description of the invention. This abstract-length document will then be posted on the Available Technologies web page and may also be faxed or mailed to potential licensees. TTO also communicates with various technology listing services that promote university/industry technology transfer.

During the marketing process, the invention may be protected in some form, e.g., provisional patent, full patent, copyright, or trademark, and the inventor(s) should be prepared to speak with prospective licensees (in conjunction with a TTO staff member) at any time.