Commercialization Frequently Asked Questions

Intellectual property (IP, also known as “intangible property”) differs from “tangible property” such as land, a building, a computer, etc. Intellectual property may be protected under a patent, trademark, trade secret, and/or copyright laws.

Commonly known as “tech transfer,” this is the process through which new innovations evolve from the basic research bench to become commercial entities for eventual public use. It entails the licensing of technology and IP to a third party and can happen in many ways: through publication, educating students entering the workforce, information exchanges at scientific conferences, and through industry relationships, among other avenues. 

Typically, technology is transferred through a license agreement in which Rush University will grant its rights to the defined technology to a third party for a period of years, which could often be limited to a particular field of use and/or region of the world. The licensee (the third party licensing the technology) may be an established company or a new business startup. Licenses typically include terms that require the licensee to meet certain performance requirements and to make payments (e.g., upfront fees, license maintenance fees, milestone payments) to Rush. These payments are shared with the inventor(s) and are also distributed to Rush University schools/colleges, departments/units and central administration to provide support for further research, education and participation in the tech-transfer process.

The process of protecting a technology and finding the right licensing partner may take months or even years to complete, depending on the technology’s development stage, the market for the technology, competing technologies, the amount of work needed to bring a new concept to market-ready status, and the resources and willingness of the licensees and the inventors.

The reasons are unique to each inventor but may include the following:

• Making a positive impact on society 
• Seeking personal fulfillment 
• Achieving recognition and financial rewards 
• Generating additional lab/departmental funding 
• Meeting the obligations of a research contract  
• Attracting research sponsors  
• Creating educational opportunities for students  
• Linking students to future job opportunities  

Please reach out to ITT when you believe you have created or discovered something unique with potential commercial or research value. Complete and submit a Rush invention disclosure form before publicly disclosing your technology or submitting a manuscript for review and publication. Please make sure to list any sponsored programs used in support of the invention (federal, foundation or industry), as well as any materials from third parties used in the development of the invention. Also list any potential investors from other institutions or companies. To avoid risking your patent rights and possibly hindering the opportunity to market your invention, contact ITT before speaking with any individuals or companies outside of the university community. Include companies and contacts you believe might be interested in your invention, or who may have already contacted you about your invention, on the invention disclosure form. (More than 70 percent of all licenses are executed with commercial entities known by the Inventor, so your contacts can be extremely useful.) Also be sure to respond to any ITT and outside patent-counsel requests. 

Ownership depends upon the employment status of the invention’s creators and how they use University facilities and other resources. Considerations include the following:

• What were the sources of funding or resources used to produce the invention? 
• Who employed the inventors when they created the intellectual property? 
• What are the terms of any agreement related to the creation of the intellectual property? 

As a general rule, Rush University owns inventions made by its employees while working within the scope of their employment or using University resources. In some cases, the terms of a sponsored research agreement or materials-transfer agreement may impact ownership. When in doubt, contact ITT for advice.  

The U.S. Bayh-Dole Act of 1980 pertains to IP arising from federal government-funded research and permits a federally funded university, small business or nonprofit institution to elect or to pursue ownership of an invention, provided certain obligations are met. These obligations include making efforts to protect (when appropriate) and commercialize the discoveries, submitting progress reports to the funding agency, giving preference to small businesses that demonstrate sufficient capability and sharing any resulting royalties with the inventors. Federally funded inventions are reported to appropriate funding agencies through iEdison by Rush ITT.  

All contributors to ideas that lead to a discovery should be mentioned in your report, even if they are not affiliated with Rush University. ITT, along with legal counsel, will determine the rights of such contributors and institutions. It is prudent to share all working relationships (preferably before they begin) with ITT to understand their implications for any subsequent inventions.

Rush still retains rights to any discoveries connected to your scope of employment if you are on a Rush-funded sabbatical. Contact ITT before your sabbatical to ensure that discovery ownership considerations are documented.

Yes, many students work on inventions at Rush under a variety of circumstances. Rush University promotes student entrepreneurism, and students can be named as inventors. Typically, a student will own their rights to an invention unless a student Rush employee created the invention. 

Yes, if the other party is willing to share those materials. It is important to carefully document from whom and under what conditions you obtained outside research materials so that we can determine if your use of those materials might impact the ownership rights of a subsequent invention or technology. If you wish to obtain materials from outside sources, an incoming material transfer agreement (MTA) may be required.

This is the term that Rush ITT uses to refer to the period in which we work with inventors before they file a formal invention disclosure.

During this stage, a Rush ITT representative will explain our process to you and sketch out a rough outline of the various steps we’ll move through to get your invention to the marketplace. You will be given advice as to when you should formally report your invention and instructed on what types of research findings you are likely to need in order to be successful. ITT also may begin a preliminary market and patent assessment, looking into competing technologies and other institutions or companies working in your invention area, as well as evaluating the current patent landscape. Any information you have describing what other universities and companies are doing in your technology area could be very helpful. It also would be helpful during your first meeting with us if you had your lab notebooks, a rough timeline for your discovery process, past and planned publications, additional research and experimentation, and a list of your applicable funding sources. 

This is a written description of your invention provided to Rush ITT to initiate the IP protection process (i.e., patent filing or copyright) and commercialization of your technology. 

Submit this disclosure when you discover something unique with possible commercial value. It could include research tools, processes, know-how or software, and does not have to be “market ready.” Your invention disclosure should be submitted well before presenting your discovery through publications, poster sessions, conferences, press releases or other communications.  

You can find an invention disclosure form in Word format here. Detailed instructions are included. Inventors also can attach grant applications and manuscripts in advance to simplify the process. Completed and signed forms can be submitted electronically via email or in person using the contact information in the left sidebar of this page.

There are three applicable definitions of an inventor, depending on the type of intellectual property created. With respect to patentable subject matter, an inventor is an employee who has made an inventive contribution as defined under U.S. patent laws, meaning that the inventor must have contributed to the conception of ideas claimed in a patent. With respect to software and other copyrightable materials, an inventor is an employee who has: (a) participated materially in the conception of the idea of the operation or design thereof (e.g., the operation of software); or (b) participated extensively in translating an idea into a fixed medium. With respect to unpatented biologic and chemical materials or laboratory animals, an inventor is an employee who has: (a) taken part in the conception of the idea of the specific material that is to be made and/or (b) contributed significantly to making the material, but only to the extent that making the material was not a routine or known practice. A person providing material to a second person that uses the material to produce a new material generally will not be considered to be an inventor of the new material.

Rush ITT will work with the other institution or company to find the best solution for managing the invention. If there is a sponsored research agreement or consulting agreement with a company that relates to your invention, ITT personnel will need to review that agreement to determine ownership and other rights associated with the contract and determine appropriate next steps. Should the technology be jointly owned with another academic institution, ITT personnel will usually enter into an “inter-institutional” agreement, which allows one of the institutions to take the lead in protecting and licensing the invention, sharing expenses associated with the patenting process and allocating any licensing revenues. If the technology is jointly owned with another company, ITT personnel will work with the company to determine the appropriate patenting and licensing strategy. 

Licensing specialists within Rush ITT examine each invention disclosure to consider a host of issues, including the novelty of the invention; whether it can be protected by patent or other legal protections; the marketability of potential products or services; the invention’s relationship to related intellectual property; the size and growth potential of relevant markets for the invention; the amount of time and money required for further development; pre-existing rights associated with the intellectual property; and potential competition from other products/technologies. 

Although rights may vary from country to country, in general, a patent gives its holder the right to exclude others from making, using, selling, offering to sell or importing the patented invention. Because it represents a “right to exclude,” a patent does not necessarily give its holder any affirmative right to practice a technology. That right may fall under a broader patent(s) owned by others. A patent has two major components: the “specification” (a technical discussion about the invention and how to use it) and the “claims” (the legal definition of an inventor’s protectable invention).

Organized under the Department of Commerce, the USPTO is the agency that administers patents on behalf of the federal government. The USPTO employs patent examiners skilled in all technical fields in order to appraise patent applications. The USPTO also issues federal trademark registrations.

Patentable subject matter includes processes, machines, compositions of matter, articles, some computer programs and methods (including methods of making compositions, methods of making articles and even methods of performing business). Patentable invention types vary from country to country.

Patent applications are drafted and filed by a patent attorney or a patent agent (a non-attorney with a science education licensed to practice by the USPTO). At Rush University, we retain outside patent counsel to draft patent applications. Usually about a year after a patent application is filed (or longer, depending on the USPTO backlog in your technology area), the patent attorney will receive written notice from the USPTO as to whether the application and its claims have been accepted as filed. More often than not, however, the USPTO will reject the application because either certain formalities need to be cleared up or because the USPTO argues that the claims are not patentable over the “prior art” (anything that professionals in the field publicly disclosed in the past). The letter sent back to the patent attorney by the USPTO is referred to as an “office action” or “official action.” 

If the application is rejected, the patent attorney must file a written response, usually within three months, in order to avoid federal late fees. Generally, the attorney may amend USPTO claims and/or point out why the USPTO’s position is incorrect. This process is referred to as “patent prosecution.” Often it will take two USPTO official actions and two responses from the patent attorney (and sometimes more) before the patent application is resolved. Final resolution typically comes with a USPTO notice that the application is “allowable” or, in other words, that the PTO agrees to issue a patent.  

The patent attorney generally will ask you to review a patent application before it is filed and also will ask you questions in order to determine the inventorship of the application’s claims. When the patent application is filed, Rush IP legal counsel will ask the inventor(s) to sign a “declaration” (which states that the inventor created the invention themselves and agrees to tell the truth during patent prosecution) and an “assignment” (which evidences the inventor’s duty to assign the patent to Rush University). In addition, inventors have an obligation to provide to our patent attorney any relevant publications or information that may be relevant to the invention; failure to disclose such information may render any issued patent unenforceable or invalid. During the patent prosecution process, input from the inventor(s) is often needed to confirm the patent attorney’s understanding of the technical aspects of the invention and/or the prior art cited against the application.

Filing a regular U.S. patent application typically costs between $10,000 and $15,000, and patent prosecution for an issued patent may require an additional $10,000 to $20,000. Filing and obtaining issued patents in other countries may cost $20,000 or more per country. Also, once a patent is issued in the U.S or in a foreign country, certain government fees are required to keep the patent alive (referred to as “maintenance fees” in the U.S. and “annuities” in other countries).

The U.S. changed to a “first-to-file” patent law in 2013. First-to-file is a shorthand way of referring to how one defines “prior art.” If two inventors independently seek patent protection for the same invention, the inventor that first filed their application will be awarded the patent on that invention, assuming that the application fully describes and enables the invention.

Publishing or presenting can prevent Rush University from obtaining patent protection, so the University would like to know about your invention before you publish on it. There are significant differences between the U.S. and other countries in how early publication affects a potential patent. Once publicly disclosed (published or presented in some form), an invention may have a restricted or minimal potential for patent protection outside of the U.S. Since publishing or presenting affects patent rights, it is best to submit an invention disclosure or contact RUSH ITT well before communicating or disclosing your invention outside of the Rush community. Even after you submit an invention disclosure, be sure to inform ITT of any imminent or prior presentations, lectures, posters, abstracts, website descriptions, research proposal submissions, dissertation/master’s theses, publications or other public presentations describing any part of the invention. Submitting a manuscript to ITT at the same time you submit to a journal for publication can be extremely helpful to both the marketing and licensing processes, as well as to the patent attorney assigned to the case.

No. It is completely different than name listings for publications.

The USPTO keeps patent applications confidential until they published them, 18 months after an initial patent application filing. After that time, both the application and the USPTO’s related prosecution materials are publicly available.

The U.S. has two types of patent applications, “provisional” and “nonprovisional.” The main difference between the two is that the USPTO will not examine a provisional application. A provisional patent application must be filed as a nonprovisional application within one year of the nonprovisional filing, but the provisional application provides an effective filing date for a nonprovisional application that claims inventions described in the provisional application. In short, filing a patent application as a provisional is a procedural designation and does not necessarily make the filing less expensive or require less work on our part. It is common for Rush University to file provisional applications with a full set of claims.

In certain circumstances, U.S. provisional patent applications can provide a tool for preserving patent rights, while postponing the cost of negotiating the patent application with the USPTO. This occurs when a provisional application is not examined during the year in which it is pending and claims are not required. A regular U.S. application and related foreign applications must be filed within one year of filing the provisional application in order to receive its early filing date; however, an applicant only receives the benefit of the earlier filing date for material that is adequately described and enabled in the provisional application. As a result, the patent attorney likely will need your assistance when an application is filed as a provisional.

Foreign patent protection is subject to the laws of each individual country, although the process works much the same as it does in the U. S. In foreign countries, however, an inventor will lose any patent rights if they publicly disclose their invention prior to filing the patent application. By contrast, the U.S. has a one-year grace period for public disclosures by an Inventor.

The Office of Legal Affairs, upon recommendation from ITT, contracts with outside patent counsel for IP protection, assuring access to patent specialists in diverse technology areas. Inventors work with patent counsel in drafting their patent applications and responses to worldwide patent offices. ITT and our internal IP counsel will help with the selection and oversight of outside patent counsel.

No, but an international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for most industrialized nations. In other words, while there is no such thing as an international patent, there are international patent applications. For U.S. applicants, a PCT application is generally filed one year after a corresponding U.S. application (either provisional or regular) has been submitted. The PCT application must later be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months of the earliest claimed filing date. The PCT provides two advantages. First, it delays the need to file costly foreign applications until the 30-month date, which often falls after an applicant has the opportunity to further develop, evaluate and/or market his/her invention for licensing. Second, the international preliminary examination often allows an applicant to simplify the patent-prosecution process by having a single examiner speak to the patentability of the claim, which can save significant costs in prosecuting foreign patent applications. An important international treaty called the Paris Convention permits a patent application filed in a second country (or a PCT application) to claim the filing date of an application filed in a first country; however, pursuant to this treaty, these so-called “convention applications” must be filed in foreign countries (or as a PCT) within one year of the first filing date of the U.S. application.

Currently, the average U.S. utility patent application is pending for about two years, although inventors in the biotechnology and computer fields should plan on a longer waiting period. Once a patent is issued, it is generally enforceable for 20 years from the initial filing of the application that resulted in the patent, assuming that USPTO-mandated maintenance fees are paid. The actual life of a patent may vary based on its lineage and whether the USPTO grants any additional time extensions.

Patent protection is often required by a potential commercialization partner (licensee) because it can protect the commercial partner’s often sizable investment required to bring the technology to market. Because of its expense and the time required to obtain a patent, patent applications are not possible or appropriate for all Rush intellectual property. We carefully review the commercial potential for an invention before investing in the patent process; however, because the need to launch a patent-filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible.

Rush ITT personnel with guidance from our IP counsel and the inventor(s) consider all relevant factors in making recommendations about protection of Rush University intellectual property.

Rush often accepts the risk of filing a patent application before a licensee has been identified. After the University’s patent rights have been licensed to a licensee, the licensee generally pays the patenting expenses, especially when the license is exclusive. At times, Rush ITT must decline further patent prosecution after a reasonable period of attempting to identify a licensee or if it is determined that we cannot obtain reasonable claims from the USPTO.

Copyright is a form of protection provided by U.S. laws to the authors of “original works of authorship.” This includes literary, dramatic, musical, artistic and certain other intellectual works, as well as computer software. This protection is available to both published and unpublished works. The Copyright Act of the United States generally gives the copyright owner the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works.

Yes, we register copyrights, although copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video or mobile application, as examples. A Rush copyrightable work product disclosure form can be found here.

Our personnel use many sources and strategies to identify potential licensees and market inventions. Existing relationships of the inventors, the tech transfer staff and other researchers are often most useful in marketing an invention. Market research also can help identify prospective licensees. In addition, we investigate other complementary technologies and agreements, leverage conferences and industry events and make direct contacts. Faculty publications and presentations are often excellent marketing tools as well.

Nationwide studies of university licensing have shown that 70 percent of licenses result from inventors’ contacts. Thus fellow researchers, consulting relationships, alumni, and even former students and postdoctoral candidates are often valuable sources for investigators to identify licensees. Our tech transfer staff also have relationship with potential licensees. In addition, our licensees often license more than one technology from Rush. We continually work to broaden these relationships through contacts made in market research, industry events and by cultivating existing licensing relationships.

It can take months and sometimes years to locate a potential licensee, depending on the attractiveness of the invention, its stage of development, competing technologies, and the size and intensity of the market. Most University inventions tend to be in the early stages of their development cycle and so require substantial commercialization investment, making it difficult to immediately attract a licensee.

Your active involvement can dramatically improve the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies. Once interested companies are identified, the inventor is best suited to describe the details of the invention and its technical advantages. The most successful technology transfer results occur when the inventor and the licensing professional work as a team to market and sell the technology.

Yes, an invention can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies, each for a unique field-of-use (application) or geography.

Rush ITT chooses a licensee based on a company’s ability to commercialize the new technology for the benefit of the general public. Sometimes an established company with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a startup company is a better option. It is rare for ITT to have multiple potential licensees bidding on an invention.

Per Rush IP policy, a share of any financial return from a license is given to the inventor(s). Most inventors enjoy the satisfaction of knowing their inventions are being deployed for the benefit of the general public. New and enhanced relationships with businesses also can augment an Inventor’s teaching, research and consulting work. In some cases, the licensee may fund additional sponsored research.

Many licensees require the inventor’s active assistance to facilitate their commercialization efforts, at least at the early stages of product development. This can range from infrequent, informal contact to a more formal consulting relationship, to additional sponsored research in the inventor’s laboratory. Working with a new business startup can require substantially more time, depending on your role with the company and your continuing role within Rush University. Your participation with a startup or any consulting arrangement with a licensee is governed by Rush University's conflict-of-interest (COI) policies. More information about the University's COI policies can be found here.

Most licensees continue to develop an invention to enhance the technology, reduce risk, prove reliability and satisfy the market requirements for consumer adoption. This can involve additional testing, prototyping for manufacturability, durability and integrity, and further developments to improve performance and other characteristics. Documentation for training, installation and marketing is often established during this phase. Benchmarking tests are often required to demonstrate the product/service’s advantages and to position the product in the market. Medical products (i.e., therapeutics, diagnostics and devices) require extensive animal and clinical trials in humans to achieve regulatory approval. Software used in medical applications also may require regulatory approval.

That can vary depending on your interest and involvement. Your role also depends on in the licensee’s interest in utilizing your services for various assignments and any contractual obligations related to the license or any personal agreements.

Licenses typically include financial payments and performance milestones that if unmet can result in termination of the license. That termination allows for subsequent licensing to another business. While licensees usually can terminate at will, generally, the University is only able to terminate a license if the licensee is not performing under the agreement.

Most licenses have licensing fees that can be very modest (for startups or in situations where the value of the license is deemed to warrant a modest license fee) or fees can reach hundreds of thousands of dollars. Additional revenues also may come from annual minimums and payments for achieving certain milestones, prior to actual sales of the licensed product. Royalties on the eventual sales of the licensed products can generate revenues, although this can take years and depends on the type of technology. Equity, if included in a license, can yield returns, but only if a successful equity liquidation occurs. Most licenses do not yield substantial revenues; however, the rewards of an invention reaching the market are often more significant than the financial considerations alone.

Per Rush IP policy, revenues from license fees, royalties and equity, minus any unreimbursed patenting and file expenses, are shared with inventors and Rush colleges, departments and central administration.