Step 1: Intellectual Property Disclosure and Assignment
The researcher submits an Invention Intellectual Property Disclosure Form describing key information about the intellectual property invention, innovation, or creative work. The Research Innovation Group reviews the disclosure and meets with the researcher to discuss the innovation it in more detail. All contributors to the invention to execute an assignment form (i.e. an agreement that transfers ownership rights to the University’s), pursuant to the University’s IP Policy.
Step 2: Evaluation
The Research Innovation Group evaluates each new disclosure for its potential commercial applications and for the best mode of intellectual property protection.
Step 3: Protection
Intellectual property protection can take the form of patents, copyrights, trademarks, or proprietary information and know-how. Patents are generally considered the strongest form of intellectual property.
In order to be patentable, an invention must be:
- novel, and
- non-obvious to those skilled in the field.
Patentability is also affected by whether an invention has been disclosed to the public. In order to receive patent protection in most countries, including the US, an invention must not have been publicly disclosed prior to filing a patent application.
Obtaining patents is a costly and time consuming process. As such, RIG bases its decision about whether or not to pursue patent protection on careful consideration of the commercial potential for the intellectual property. Depending on the nature of the intellectual property, SLU may elect to pursue its commercialization as a non-patented intellectual property.
If SLU decides not to pursue intellectual property protection or commercialization of a disclosure, the inventors or creators may request that the University assign its rights back to them, along with the responsibility to manage the intellectual property. Please note, however, that if the intellectual property was developed using federal support, the University must first seek approval from the government before assigning interests back to the inventors or creators.
Step 4: Commercialization
SLU transfers patented and non-patented intellectual properties to industry through a variety of arrangements. Some of the licensing or license-related arrangements include:
- Evaluation and Option Agreement
- Non-Exclusive License Agreement
- Fee- and royalty-bearing license
- No-fee license
- Exclusive License Agreement
Step 5: License Maintenance and Revenue Sharing
The executed commercialization agreement represents the beginning of what, in most cases, is a long term relationship. During the course of this relationship RIG monitors the licensee’s business development and compliance with performance milestones, collects license income, and distributes revenue according to the University’s IP policy.
Distribution of Licensing Income
According to the University IP Policy, SLU distributes the licensing income it receives for an intellectual property as follows:
- 40 percent among the creator (Creators may divert part or all of their share of the revenue to their laboratories or designate that a portion of their share be given to other individuals at the time of license execution.)
- 15 percent among the creators' department
- 15 percent among the creators’ college or institutional unit
- 30 percent to the OVPR Research Innovation Group