Georgetown University’s Office of Technology Commercialization (OTC) employs a strategic roadmap to navigate the intricate technology transfer path, ensuring a seamless journey from conception to commercialization. The seven essential steps in this process are meticulously addressed:
Invention Disclosure: The technology transfer journey commences with inventors submitting a comprehensive Invention Disclosure. This document serves as both a record and notice of a potentially patentable invention, triggering a thorough review by the OTC.
Commercialization Assessment and Prior Art Search: Following the Invention Disclosure, OTC’s licensing managers undertake a rigorous commercialization assessment and prior art search. This comprehensive analysis evaluates the invention’s potential, guiding the formulation of a strategic approach to determine the optimal course of action.
Patent Strategy: OTC’s licensing managers play a pivotal role in decision-making based on the outcomes of the commercialization assessment. Their expertise guides the next steps in the technology transfer process and the strategy for protecting intellectual property (IP).
Patent Application Filing: If deemed appropriate, OTC may oversee the patent application filing on the invention. This step ensures the protection of intellectual property rights and enhances the potential for successful commercialization.
Marketing Campaign: OTC may initiate targeted marketing campaigns directed at potential licensees (developers, integrators, manufacturers, suppliers, etc.) or entities capable of generating revenue from the invention. This proactive approach creates awareness and interest in innovative technology by sharing marketing materials, contacting and vetting companies, and supporting scientific and business meetings between prospective licenses, the inventor, and the licensing manager.
Additional Development: Prospective licensees might require, sponsor, and collaborate in additional development and prototype testing before proceeding to a licensing agreement.
Revenue Sharing: A symbiotic relationship is fostered between Georgetown University (GU) and the inventors, emphasizing revenue generation as a shared goal. Revenue may be derived from various sources, including licensing, business startups, venture capital, industry partnerships, additional funded research, and other innovative means.
The overarching objective is to maximize the impact of innovation by fostering mutually beneficial partnerships between GU and inventors. This collaborative effort underscores a commitment to bridging academia and industry for advancing knowledge and societal enrichment. In summary, Georgetown University’s Office of Technology Commercialization employs a streamlined and comprehensive approach, ensuring that each step in the technology transfer journey is thoughtfully addressed for the mutual benefit of the university and inventors alike.
IP Agreement Flowchart
Licensing
Georgetown University’s Office of Technology Commercialization (OTC) is a key player in transitioning academic research innovations to the commercial sphere, which is vital in a landscape of rapid technological advancement. The complex and costly process of bringing new technologies to market is navigated by companies through licensing and technology transfer, enabling access to intellectual property (IP) generated by other entities. OTC facilitates this by negotiating formal license terms and ensuring equitable royalties and fees that align with the university’s educational goals. The licensing process, whether for patented or patent-pending innovations, empowers companies globally, fostering innovation and strategic alliances for broader market reach.
This collaboration, often involving financial considerations such as upfront payments and royalties, hinges on exclusive or non-exclusive license agreements. Licensees bear ongoing patent-related costs, while the synergy between academia and industry, facilitated by technology licensing, drives innovation, generates revenue, expands market reach, and accelerates the introduction of transformative technologies. The Office of Technology Commercialization at Georgetown University serves as a crucial link, ensuring the seamless translation of academic research benefits into real-world applications, marking a vital contribution to the intersection of academia and industry.
Technology Transfer Agreements
Learn more about different types of technology transfer agreements that are frequently used to transfer technology from lab to market.
A material transfer agreement is between two parties for transferring materials from one party (provider) to another (recipient) for the recipient’s independent research. This agreement is a form of a non-exclusive license from the provider to the recipient for limited internal research use. The recipient usually grants the provider joint publication rights (e.g., co-authorship) as scientifically applicable. As between non-profit and non-profit, there is usually no intellectual property reach-through (e.g., the party that develops intellectual property owns it). However, where a Company is the provider (e.g., of a drug) and provides the MTA to Georgetown as the recipient, the Company attempts to obtain intellectual property rights on any new uses or developments related to its material while Georgetown University does its best to negotiate the language to retain rights in intellectual property developed by its faculty.
A research collaboration agreement is usually between two non-profit institutions where one or both parties exchange materials and/or collaborative research services with a shared common goal and shared intellectual property interests. Both parties contribute to the research aims, unlike the MTA, which is independent research by the recipient. In the event of any new intellectual property conceived or developed under this type of agreement, such intellectual property usually belongs to the inventing university. If the intellectual property is jointly owned between the institutions, the parties typically endeavor to enter into an inter-institutional agreement to manage the intellectual property jointly.
A sponsored research agreement is between two parties with monetary funding from one party (the sponsor) to the other (the recipient, GU) to conduct research that has a shared common research goal between the parties. In this type of agreement, the funding party, typically a company, relies on the university investigator’s intellectual input to meet the research goals. Georgetown University will typically own the intellectual property that arises from sponsored research and will grant the funding party a limited research license and an option to negotiate an exclusive commercial license to make and use such intellectual property.
A biological material transfer agreement is an agreement between two parties e.g., Georgetown University and a company, whereby Georgetown University provides valuable, unpatented research tools (e.g., transgenic mice, modified cell lines, antibodies, etc.) to a company for company’s internal non-commercial research purposes, in exchange for a negotiated license fee.
An agreement between two parties where one party contracts the other party for a fee to conduct unique or special services that do not result in the new development of jointly owned inventions but rather provide a service for mechanical “hands-on” work, e.g., running already-established assays and providing results with little to no interpretation or thoughtful analysis. In these agreements, the service provider does not usually have a stake in any intellectual property or “deliverable” (e.g., the data or results) directly resulting from its services.
A license agreement is between Georgetown and another entity, typically a company, for the explicit commercial use of technology (to make, have made, use, and sell). The agreement may be exclusive, non-exclusive, or a time-limited option for the defined use, development, and/or sale of the patented (pending or issued) and licensed intellectual property. These types of commercial license agreements, which include defined research or technical milestones, payments, fees and royalties on sales, and other intellectual property and patent prosecution matters, are negotiated on a case-by-case basis.
These agreements involve the transfer of a Limited Data Set (LDS), which under 45 C.F.R Section 164.514e(2) is defined as protected health information that excludes the following direct identifiers of the individual or relatives, employers or household members of the individual:
Names
Postal address information (other than town or city, state, and zip code)
Telephone numbers
Fax numbers
Electronic mail addresses
Social security numbers
Medical record numbers
Health plan beneficiary numbers
Account numbers
Certificate/license numbers
Vehicle identifiers and serial numbers (including license plate numbers)
Device identifiers and serial numbers
Web universal resource locators (URLs)
Internet protocol (IP) address numbers
Biometric identifiers, including fingerprints and voiceprints
Full-face photographic images and any comparable images
However, an LDS may include a limited set of personal identifiers such as city, state, zip code, elements of date, and other numbers, characteristics, or codes not listed as direct identifiers set forth above. A DUA allows sharing an LDS with another entity not associated with the study or the researcher’s institution for defined research purposes and with safeguards included in such agreement to ensure against unauthorized uses or disclosures of the LDS.
Note: a DUA is not required to transfer data if the recipient is included in the IRB Authorization or the IRB has waived the authorization requirement. However, in any situation involving a data transfer, it’s best practice to remove as many identifiers as possible that still allow the research to be performed. If all identifiers have been removed (including dates and zip codes) and the information is coded, then the data would be considered completely de-identified, and there is no need for a more stringent and protective DUA.
Start-Up Guidance
The OTC team is at your service if you contemplate initiating this entrepreneurial journey as the inventor. We stand ready to provide guidance on compliance with university policies and collaborative efforts to negotiate a licensing agreement that aligns with your objectives. Supporting the formulation of a comprehensive business plan, detailing development strategies, product or service descriptions, target markets, and financial considerations precedes the negotiation phase. While we introduce elements of diligence in our licensing agreements, the University, represented by the OTC, is committed to supporting your endeavors.
Please contact our office with further questions via email (techlicensing@georgetown.edu) or phone (202-687-0881). Please note that the Office of Technology Commercialization is the authorized signatory to bind the University to intellectual property contracts.
