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What’s the difference between the TCA and the Office of Technology Management?First, it’s important to understand that the Office of Technology Management plays a critical role as a Technology Commercialization Alliance resource partner. Both are working together to foster commercial innovation at the University of Pittsburgh. Specifically, though, the mission of the OTM remains clear and simple: To extract the fair-market value of the University’s intellectual property using best business practices for the benefit of the University, faculty/staff, and community. By design, therefore, the OTM focuses its attention on the innovation—the intellectual property—and the complexities of both protecting it against competition and theft and licensing it to private companies, whether existing or new. The TCA, meanwhile, focuses its attention on the innovators—the faculty, staff, and students—at the University, providing for them the ongoing entrepreneurial education, motivation, support, and outreach needed for them to successfully commercialize their innovations. How do I know if my innovation has commercial potential?Ultimately, it comes down to whether a commercial market is willing to invest in or buy your product. Early in the commercialization process, you can make some educated assessments by looking at market trends, talking to potential technology licensees, assessing the competition, and determining whether your idea could be considered a platform technology—one on which you could build a whole line of products and an entire growth-oriented company. As you can see, this can prove an arduous process, but the good news is this: The TCA and its resource partners, including Pantherlab Works and the Limbach Entrepreneurial Center, can help you with the assessment. Where do I begin my commercialization/entrepreneurial pursuit?Numerous resources exist on campus to help take you from concept to commercialized product. Still, the best place to start—and the earlier the better—is with the TCA. The TCA is made up of a variety of on-campus resource partners who can help you with anything from prototype development and analysis and entrepreneurial education to market research and business planning. One call to the TCA will get you connected with any of the resources you need to pursue your commercial dream. If I do decide to commercialize my innovation, what’s in it for me?Personal and intellectual satisfaction aside, your commercial innovation could lead to financial reward, depending on the innovation’s potential for success and whether the University is able to successfully license your idea to an outside commercial enterprise. Each licensing deal is different and typically includes upfront fees, royalties, and other forms of consideration. That said, University policy dictates that the ongoing proceeds of patent licensing deals be divided accordingly: 30 percent goes to the inventor, who continues to receive royalties for the life of the innovation. The remainder is divided among the inventor’s department, the University’s patent expense fund, and the University’s R&D fund. For copyright licensing deals, the inventor receives 50 percent of the proceeds. If my innovation is licensed by a commercial entity, can I become actively involved in that company as a shareholder, board member, or active member of the management team?University conflict-of-interest policies dictate the following. You are permitted to:
However, you can’t:
How do I know if my innovation is patentable?According to the OTM, your invention must first be considered novel. That means the following:
With regard to public domain, the concept includes any published work describing your innovation in a way that is “enabling to one skilled in the art,” which means it offers enough information to reproduce your innovation. It also can include any discussion with outsiders without a confidentiality agreement, a federal grant application when awarded; and even a thesis dissertation that has been placed obscurely on a library shelf. For more information about patenting and other intellectual property issues, contact the Office of Technology Management. When should I think about seeking patent protection for my innovation?That depends on the technology. Typically, though, you should consider such protection as soon as you have enough data to support your claims and definitely before you submit your work for publication in a trade or academic journal. Once you publish your work without patent protection, you and the University lose the opportunity to protect that intellectual property, and it becomes part of the public domain. How do I pursue an SBIR (Small Business Innovation Research) or STTR (Small Business Technology Transfer Research) grant?Pantherlab Works, which is part of the Institute for Entrepreneurial Excellence at Pitt’s Joseph M. Katz Graduate School of Business, works closely with both faculty and industry to help pursue such grants. You can reach the office at 412-648-1636. The U.S. Small Business Administration’s Web site also provides detailed information about the federal grant programs. What is the Bayh-Dole Act, and what does it have to do with university technology commercialization?The Bayh-Dole Act is a federal law enacted July 1, 1981 that provides intellectual property guidelines for universities engaging in technology commercialization. Among its directives are the following:
For more specific questions about patenting and the patenting process at the University of Pittsburgh, visit the Office of Technology Management Web site. Can you suggest some other helpful sites?
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