Technology Transfer and Licensing

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Technology Transfer and Licensing (“tech transfer”) is the process of identifying and protecting university intellectual property so that it can be transferred to others, most often in support of the development and sale of a product or service for public use and to further economic development.

Tech transfer is undertaken in the interest of making university technologies widely available for societal benefit, and in a manner consistent with the university’s academic mission and non-profit tax-exempt status.

What is essential?

The intellectual property that is the subject of tech transfer commonly include inventions as defined by patent law, and certain written works such as psychometric instruments that are protected under copyright law. The University Policy on Intellectual Property governs University faculty, staff, and students’ responsibilities to disclose intellectual property to the University and the rules and policies regarding ownership of intellectual property, its protection and licensing and the distribution of royalties or revenues from intellectual property.

Disclosing intellectual property to Lehigh’s Office of Technology Transfer (OTT) enables the invention to be protected by filing a patent application or ensuring proper retention of copyright. It is essential to disclose your invention to the OTT before any public disclosure such as a publication, public presentation, or disclosure to others because public disclosure can seriously diminish the potential for patent protection.

Disclosure of intellectual property, usually prior to (but not restricting) publication, is also a requirement of the Bayh-Dole Act, federal grant programs, and most grants and contracts with industry. Outreach to industry to explore interest in licensing university technologies can also be a fruitful venue for developing productive research relationships with companies.

In its tech transfer activities, the university complies with the requirements of federal law including the Bayh-Dole Act, including sharing of licensing income with inventors and authors. We are also guided by principles of sound academic tech transfer consistent with the academic mission.

Why it’s Important

In the absence of the legal right to preclude others from simply copying an invention or work, it will often be unrealistic for anyone to make the economic investments necessary to bring a new technology into practice.

Disclosure of intellectual property is also a requirement of the Bayh-Dole Act and federal grant programs, and some require active efforts to place technologies with those who can shepherd them to market in a timely manner for public benefit. Most grants and contracts with industry also require timely disclosure and thoughtful management of intellectual property. Because we have obligations to publish results of academic interest without undue delay, yet publication can affect intellectual property rights, timely disclosure is important.

How to Comply

Report inventions in a timely fashion, paying particular attention to anticipated or pending publications or presentations that could undermine or dilute patent rights.

Pay close attention as well to special requirements of certain sponsored programs - including some federal grants - for notice to sponsors, special care to be taken prior to publication, and conferral with collaborators.

To report a new invention use the OTT Invention Disclosure Form. This will start the process of evaluation for patentability and commercial potential, reporting that the university is required to do for inventions reported as outcomes of federal grants, and possible patent office filings. The same form can be used to report other intellectual property such as software and diagnostic instruments that are protected by copyright.