Overview

The Office of Technology Commercialization (OTC) at the University of Maryland was established in December 1986 as the primary implement of technology transfer for the university. OTC operates in accordance with the policies established by the University System of Maryland and the University of Maryland, College Park.

OTC's procedures have been developed to assure that new inventions will advance through the technology transfer process in a timely manner consistent with university policy. When a new invention is disclosed to OTC, it will typically follow the path described in the technology transfer cycle above. The amount of time spent at each point and the exact path will vary depending on factors such as the type of technology and its stage of development. As an inventor, you are encouraged to contact OTC staff to discuss the progress of your invention disclosure. Input from inventors at various stages of the cycle is an integral element in the successful navigation of the technology transfer process.

Invention
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The technology transfer cycle begins when a university researcher submits a completed invention disclosure form for his/her new technology to OTC.

"An 'invention' means any invention or discovery which is or may be patentable or which may be commercially licensable." This includes patentable works, tangible research properties and copyrightable works (software, text, etc.).

Inventions are accepted from all university personnel meaning "all paid and unpaid full time and part-time faculty members and staff; all paid employees (including those on approved leaves); and students and fellows."

When a new invention disclosure is received, it is logged into OTC's proprietary, confidential database, assigned to the appropriate technology manager: information, life or physical sciences, and an acknowledgement letter is sent to the inventors listed on the invention disclosure form.

OTC welcomes invention disclosures from all segments of the campus community.

Technology Assessment
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At this stage in the cycle, the technology manager will complete a preliminary assessment of the technology to determine the appropriate intellectual property protection as well as the technologies' technical merits and commercial potential.

With the assistance of the inventor(s), the technology manager will write a non-confidential "executive summary" of the technology for use in the marketing phase of the cycle.

Note: the full assessment of the technology will not be complete until after the technology has been through the marketing phase of the technology transfer cycle (see below). OTC's philosophy is to let the market assist in helping to determine the need, best uses and licensing potential of the technology.

Intellectual Property Protection
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Based on the technology managers' assessment, the type of technology and its stage of development, OTC will seek one or more of the following methods of intellectual property protection: U.S. Provisional Patent (most common), U.S. Patent, Plant Patent, Design Patent, Software Patent, Foreign Patent, Copyright, Trademark, Tangible Research Property, Plant Variety Protection Certificate and Trade Secret.

Technology Marketing
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OTC typically uses the market to determine the best uses, industries and locations for the technology. Identifying and pursuing numerous contacts with companies interested in licensing a technology is part of the technology marketing stage in the cycle. OTC uses a three-tiered marketing approach to identify licensees.

In the first tier, the technology manager makes contact with the inventor's industrial colleagues and with OTC's contacts in the field. OTC has the most success with tier one contacts.

In the second and third tiers, the technology manager begins working with OTC's marketing team to coordinate the best approach to marketing the technology.

In the second tier, various in-house resources, such as OTC's proprietary corporate technology interests database, CorpPro, will be used to reach the appropriate market for the technology. In the third tier, most internal resources have been exhausted and the marketing team will then turn to outside sources such as external databases or industry reference materials to reach the target groups.

Various marketing activities are on-going at any stage of the technology transfer cycle. Examples include OTC's attendance at technology transfer conferences; OTC's web site, which constantly promotes university technologies; and editorial placements in trade journals of the new technologies being created by university inventors.

Marketing efforts will be continuously re-evaluated based on the license status of a technology. For example, if a technology is exclusively licensed, marketing activities will be discontinued. However, if a technology is non-exclusively licensed, marketing activities will continue in order to find additional licensees. Additionally, if an exclusive license has been awarded in one field of use or particular geographic area, marketing activities will also be on-going for the remaining areas or fields of use.

Licensing
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If, at any of the stages above, a company is interested in commercializing the technology, OTC negotiates the appropriate technology transfer agreement, standard versions of which have been pre-approved by the university's legal office and by the office of the Attorney General for the State of Maryland.

Experience has shown that the process of negotiating and redrafting licensing agreements can be very time consuming; however, OTC does have full negotiating and licensing signature authority, which expedites the process.

Standard exclusive and non-exclusive agreements include: license agreements, option agreements and material transfer agreements for tangible research properties, i.e. biological materials.

Agreements can be straight license agreements or involve further technology development (Research and Development), which is administratively handled through the Office of Research Administration and Advancement (ORAA).

Frequently, the first step in the licensing process involves an option agreement, which gives the company an exclusive period of time to evaluate their commercial interest in a technology. Many times option agreements include terms for specific technology development funding, in which the company funds research in the inventor's lab while retaining an option to acquire licensing rights. At the end of the option, the company will either negotiate terms for a license or allow the option to terminate.

The finalized terms included in license agreements typically include the following: license execution fees, annual and minimum payments, royalty payments and technology development funding.

Products and Services
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Traditionally, the mission of the university has not included manufacturing end-user products. It is through the transfer of inventions made as a result of basic and applied research to industry that inventors will see their technology commercialized. These products and services add value to the state and national economy while creating jobs and improving the quality of life through safer, stronger, faster, environmentally friendly and less expensive products.

Income
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Income is generated to the university through the successful transfer of technology to business and industry. This income is then shared with the inventors, used for research and for the university cost associated with technology transfer.

A detailed description of our income breakdown can be found in the OTC Royalty Distribution Policy.

In brief, after necessary costs are recovered, including direct expenses and university administrative costs (30 percent), the first $5,000 of net income is distributed to the inventors listed on the disclosure form according to the sharing percentages that the inventors have indicated. Additional net income is split between the inventor and his/her department: 50/50 for patentable works and 75 to the developer/25 to the department for copyrightable works.

Research and Technology Development
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The net licensing income distributed to the department, unlike technology development (R&D) income, is considered unrestricted for research purposes. Therefore, the revenue may be used to purchase equipment or hire personnel, in addition to funding new or existing research and development projects.

Although OTC does not solicit R&D funding as part of license negotiations, it certainly seeks to secure technology development funding to assist the researchers in further development of the disclosed technologies.

Finally, from this research, new inventions are created, and the cycle begins again.

For more information, or for an invention disclosure form, contact OTC at otc@umd.edu or call (301) 405-3947.

FAQs

Royalty Distribution Policy

All policies and procedures governing OTC activities have been approved by the university and the State of Maryland and comply with guidelines under federal law