Office of Technology Transfer
The Office of Technology Transfer (OTT) at the University of North Carolina Wilmington manages, protects and licenses to industry, the intellectual property developed and created at UNCW, while serving faculty, staff and students in all aspects of intellectual property.
Technology transfer is accomplished at UNCW through either of two processes. Where sufficient, the OTT licenses its available technology to interested commercial partners. When feasible, the OTT can also employ a more direct commercialization process by providing technology transfer services to the UNCW coastal community. In these instances, UNCW participates in facilitating the creation of a new development-stage entity based on its technology. Overall, the guiding principle is to transfer research-derived technology into commercial use in a manner that: (1) is consistent with UNCW's dedication to scholarly practice, research, and creative activities; (2) demonstrates commitment to community and regional service; (3) conforms to the highest ethical standards.
Dr. Stephen Meinhold, Associate Dean of Research
Hoggard Hall, Room 173A E-mail: email@example.com phone: 910-962-3223
Leads the Office of Research Services and oversees all contract and grant activity, research compliance and technology transfer initiatives. Coordinates policy development for the Dean of the Graduate School and Research and serves as UNCW liaison to external funding sponsors.
As part of its mission for teaching excellence, scholarship and artistic achievement, and service, UNCW is dedicated to the transfer of its research and technology to the public sector for the general economic benefit of the coastal region in which it is located and for the rest of North Carolina. The Office of Technology, Development, and Innovation provides this service for the University by working closely with the Intellectual Property Committee, faculty, and staff to evaluate opportunity for technology transfer and to provide counsel regarding patents, licensing, and copyrights.
Patents / Policy
Patents provide a means to encourage the development and utilization of discoveries and inventions. A policy has been established to ensure that those inventions in which the university has an interest will be utilized in a manner consistent with the public good through patents, licenses, or otherwise. The university is also aware of the value of patents in directing attention to individual accomplishment in science and engineering. Where possible, the university should make inventions resulting from its research available to industry and the public on a reasonable and effective basis and, at the same time, provide adequate recognition to inventors. Patents and their exploitation, however, represent only a small part of the benefits accruing to the public from the research program of the university.
The university is dedicated to instruction, research, and extending knowledge to the public (public service). It is the policy of the university to carry out its scholarly work in an open and free atmosphere and to publish results obtained there from freely. Research done primarily in anticipation of profit is incompatible with the aims of the university. The university recognizes, however, that patentable inventions sometimes arise in the course of research conducted by its employees and students using university facilities. The Board of Trustees of the university has determined that patenting and licensing of inventions resulting from the work of university personnel, including students, is consistent with the purposes and mission of the university.
Policies and Forms
- Patent Policy (PDF)
- Copyright Use and Ownership Policy (PDF)
- UNCW Record of Invention (PDF) is a fillable form initiating the disclosure of an invention or discovery consistent with the UNCW Patent Policy
- Combined Materials Transfer (MTA)
- Non-Disclosure Agreement(NDA)
- Mutual Non-Disclosure Agreement
- Institutional Patent and Copyright Procedures (Faculty Handbook)
- Federal Regulations - The United States Patent and Trademark Office
- Office of General Council
- Small Business and Technology Development Center (SBTDC) at UNCW
- UNCW Entrepreneurship Center
Information for Faculty Working with the OTT
If you have a new invention that you want to report, please fill out one of the following forms (Record of Invention (PDF); Combined Materials Transfer (MTA) and Non-Disclosure Agreement(NDA) form; Mutual Non-Disclosure Agreement ) and submit it to our office.After we have received it and assigned it to the appropriate technical staff member, you will be contacted. If you have other questions, please contact Dr. Stephen Meinhold, Associate Dean of Research, email: firstname.lastname@example.org phone: 910-962-3223.
In general, the process begins with your completing the appropriate disclosure forms. In addition to addressing some specific technical and economic assessments of the technology in question, you will also need to secure signatures from your dean (if a student, you will need your research managing faculty member's signature as well).
After you submit your completed disclosure form regarding your technology to our office, the OTT research manager handling your case will schedule an assessment review session with you.
It is very important at this stage to conduct a search for other material which is the same, or most similar, to your invention. This is an important early step in assessing how broad, if any, the available patent protection for your invention would be. Once this information is obtained, the OTT Technology manager will schedule a review to discuss the potential patenting and licensing of your invention.
Frequently Asked Questions
- What is technology transfer?
- What is intellectual property?
- How is intellectual property protected?
- Who owns the intellectual property created at UNCW?
- When should intellectual property be disclosed to the University?
- Why should intellectual property be disclosed prior to public disclosure?
- Who is an inventor?
- How should an invention be disclosed?
- What is a patent?
- What is patentable?
- What is prior art?
- What is a provisional patent application?
- Who pays for the patent application?
- What can be disclosed to the public or to a company before a patent application is filed?
- What is a license?
- How does the public benefit from university-industry partnerships?
- How do universities use the royalties earned from licensing?
- Who conducts license negotiations?
- What is a copyright?
- How do you file for copyright protection?
- Is software valuable?
- Should I file an invention disclosure if I have created software?
- What is a Material Transfer Agreement?
- What is the Bayh-Dole Act?
- Where do I go for help with trademarks, patents, licensing, and copyrights?
Technology transfer is a term used to describe a formal transferring of new discoveries and innovations resulting from scientific research conducted at universities to the commercial sector. One way that universities transfer technology is through patenting and licensing new innovations. The major steps in this process include: 1) the disclosure of innovations; 2) patenting the innovation concurrent with publication of scientific research; and 3) licensing the rights to innovations to industry for commercial development.
2. What is intellectual property?
The term "intellectual property" generally relates to four distinct kinds of legal protection: patents, trademarks, copyrights, and trade secrets. Each kind of intellectual property is governed by its own body of federal and/or state law. The kinds of things that are protected by intellectual property law include scientific and engineering inventions (including new methods and apparatus), distinctive marks for identifying products or institutions, computer software, "know-how," and forms of expression that are affixed in tangible form (i.e., books, movies, artistic works of art).
3. How is intellectual property protected?
Generally, by federal patent law, federal copyright law, federal trademark law, state trademark law, state laws regarding trade secrets and other laws related to businesses and contracts.
4. Who owns the intellectual property created at UNCW?
If the intellectual property was developed by an employee of UNCW or invented at UNCW facilities under the supervision of UNCW personnel, the intellectual property is owned by UNCW. Each inventor must assign his or her rights in the intellectual property to UNCW. This includes all faculty, staff, fellows, and graduate students who have an appointment at UNCW.
5. When should intellectual property be disclosed to the University?
Intellectual property should be disclosed to the Office of Technology Transfer early in the development process. Disclosure to the OTT should be made before any public disclosure (oral or written) of the information is made. In this way, an informed evaluation can be completed for the potential invention and an appropriate protection and marketing strategy developed.
6. Why should intellectual property be disclosed prior to public disclosure?
After you publish, present or otherwise publicly disclose your invention, you have one year from the first disclosure date to file a U.S. patent. After this anniversary has passed, you may lose all US patent rights. No grace period exists for foreign patent applications. With very few exceptions, all foreign patent rights will be irrevocably lost once your invention is publicly disclosed.
7. Who is an inventor?
Inventorship is specifically defined under US law. An inventor is a person who makes an original, significant intellectual contribution leading to the conception of the invention. This concept is significantly different from authorship on an academic publication.
8. How should an invention be disclosed?
Inventions are disclosed by submitting an invention disclosure form (that can be found on the forms page) to the OTT.
9. What is a patent?
A patent is a legal monopoly that prevents others from making, using, or selling an invention covered by the patent. Patents are granted by governments. Generally, patents may be enforced only in the jurisdiction that has granted them.
10. What is patentable?
For the standard type of patent, called a utility patent, an invention must be either an apparatus, a composition of matter, a process, or an article of manufacture (i.e. an artificial, man-made thing rather than an unprocessed, natural object or material). An improved version of previous technology may be patentable, as well as a new use for an existing technology. To be patentable, the invention or discovery must possess:
Utility: The patent statute specifies that an invention must be useful; i.e., it has a real-world application.
Novelty: The patent must be new, i.e., the exact same thing must not have existed or been done before.
Non-Obviousness: Even if novel, the invention must also be different enough from past technology that the average worker in the field would not have come up with the new invention from what was already known. If the invention does not meet this test, it may be rejected as obvious. Remember that the average worker in many scientific fields may be a Ph.D. researcher. In order to meet this requirement, inventors need to be aware of issues related to prior art, barring events, and bar dates.
There are other legal requirements for patentability that relate to the kind and amount of description, language and supporting data that must be present in the patent application itself. If you have questions about these other requirements, please contact someone in OTT.
11. What is prior art?
Prior art is any relevant publication, patent, or event prior to invention that may be considered by the patent office in evaluating patentability of the invention. If a patent application is filed in the US, anything that has been published, used in public, offered for sale or sold by anyone before the inventor(s) made the invention, or more than one year before the application is filed, becomes a part of the prior art for that application.
12. What is a provisional patent application?
The provisional patent application is an application that can be filed with the US Patent and Trademark Office (USPTO) that establishes the effective filing date of a patent application. The provisional application is not examined by the USPTO, and may remain pending for one year. At the end of the period, UNCW must elect to either drop the filing and allow the information to become public, or convert the provisional application to a regular patent application. In the case UNCW, the OTT will work with the inventors to make this decision on behalf of UNCW.
13. Who pays for the patent application?
UNCW pays for all costs associated with the preparation, prosecution, and maintenance of the patent. UNCW seeks reimbursement of patent costs through licensing.
14. What can be disclosed to the public or to a company before a patent application is filed?
In the absence of a signed and valid confidentiality agreement (see below) or a filed patent application, it is generally not a good idea to make any kind of public disclosure of your potential invention if you believe that the disclosure contains any patentable aspects. What constitutes a public disclosure depends greatly upon the circumstances under which the information is being disclosed and the nature of the disclosure. Accordingly, it is strongly advisable for you to discuss a pending disclosure (including a publication submission, a presentation of a poster, paper or abstract at a meeting, or meeting with a company) prior to the disclosure with someone in OTT.
15. What is a license?
Generally speaking, a license is a legally binding written document in which one party, having definable rights in a property, transfers or grants all or some part of those rights to another entity for some type of consideration.
University-industry partnerships are helping to move new discoveries from the laboratory to the marketplace faster and more efficiently than ever before-ensuring that products and services reach the public more quickly and often. The partnership enables a researcher-who made the initial discovery-to participate in the further development of a product or process, which in turn, significantly reduces the time to eventual commercialization.
Royalties earned by academic institutions are used to help advance scientific research and education through reinvestment in the academic enterprise. The royalties are given, in part, to university research departments to provide, among other things, new opportunities for graduate students, buy research equipment, or fund new research. They also are used to help sustain the technology transfer process by paying for a portion of the legal fees associated with patenting and licensing as well as technology management staff. And finally, as the Bayh Dole Act requires, a portion of the revenues is shared with the university inventor.
19. What is a copyright?
A copyright is the grant of protection by the laws of the United States to the authors of 'original works' including literary, dramatic, musical, artistic, architectural and certain other intellectual works, and is available for both published and unpublished works. An owner has the exclusive right to authorize others to reproduce the work; create derivative works; distribute copies of the work; perform the copyrighted work publicly, display the work publicly, and if it is a sound recording, perform the work publicly. Software may be copyrighted, but may also, in certain circumstances, be protected by a patent.
20. How do you file for copyright protection?
Copyright protection automatically exists from the moment of creation, and a work is created when it is fixed in a tangible form. Therefore, no publication or registration or other action by the Copyright Office is required to secure a copyright, although certain advantages are retained for registered copyrights, such as the right to seek damages for copyright infringement.
21. Is Software valuable?
Like any invention, software is an asset that has value to the University and to its author(s). Often even the simplest software function has commercial value simply because of the time invested in writing the code, not to mention the expertise needed to develop the function.
22. Should I file an invention disclosure if I have created software?
Software should be disclosed to the Office of Technology Transfer early in the development process. Disclosure to the OTT should be made before any public disclosure (oral or written) of the information is made. In this way, an informed evaluation can be completed for the potential invention and an appropriate protection and marketing strategy developed.
23. What is a Material Transfer Agreement?
A Material Transfer Agreement (MTA) is an agreement whereas one party agrees to provide another party with there materials. MTAs should always be considered when conducting any outside collaborations with industry or other academic institutions. MTAs are typically used to protect materials that may be proprietary and/or embody a trade secret.
24. What is the Bayh-Dole Act?
The Bayh-Dole Act, passed by Congress in 1980, created a uniform patent policy among the US federal agencies that fund research in the non-profit and small business sectors. The Act provides recipients of federal research funds with the right to retain ownership of their patents with the underlying tenet that federally funded inventions should be licensed for commercial development in the public interest. This principle is reflected in virtually all university policies whether or not the invention is federally funded.
25. Where do I go for help with trademarks, patents, licensing, and copyrights?
The Office of Technology Transfer has been designated as the department to assist and process all University Intellectual Property requests. This includes patenting of University technology, copyrighting of material related to University inventions, and trademarks related to University services and/or inventions.