2013 - InventorsHandbook For Web

A HANDBOOK FOR
Inventors &
Innovators
TECH NOLOGY T RANSF ER
AT THE UNIV ERSITY
OF ILLINOIS
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A H A N D B O O K FOR
Inventors & Innovators

T EC H N O LO GY TR A NSFE R AT THE U NIV E R SITY OF I LLI NO I S
2013 THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS

ALL RIGHTS RESERVED 3RD PRINTING, AUGUST 2013
TABLE OF
Contents
INTRODUCT IO N .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 Patent Application Process............................................................................... 16

The Universitys System for Technology Transfer ....................................... 7 Patent Decisions...................................................................................................17
Sponsored Research ........................................................................................ 9 U.S. Patent Decisions ................................................................................... 17
International and PCT Application Decisions ........................................ 17
INTE L L ECT UA L P RO P ERT Y .. . .. . . . . . . . . . . . . . . . . . . . . 10 Foreign Country and Region Specific Patent Decisions . ...................... 17
University Ownership......................................................................................... 10
Student Ownership.............................................................................................. 11 COPY R IGHT & TRAD EMARK......................... 18
Exception to Standard University Ownership Rules for Student Copyright............................................................................................................... 18
Entrepreneurial Activities ........................................................................ 11 Copyright Applies Automatically ............................................................. 18
Trademarks & Service Marks............................................................................ 19
PATE NTS .... . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
Inventions & Patents............................................................................................12 THE TECHNOLO GY TRANSFER PRO CESS..... 20
Inventorship .............................................................................................. 12 The Office of Technology Management........................................................ 20
Ownership . ..................................................................................................... 12 Intellectual Property Disclosures/Reports
The Standard Tests of Patentability .......................................................... 12 of Research Discoveries . ........................................................................... 20
Publication and Public Disclosure ............................................................. 13 Screening Evaluation/Assessment . ........................................................ 20
What Constitutes a Public Disclosure? .................................................. 14 Patenting Decisions ...................................................................................... 21
Being First . ..................................................................................................... 14 Market Assessment . .................................................................................... 21
Patents as Property ...................................................................................... 14 Release License or Assign to Inventor . .................................................... 21
Patents & Freedom to Operate .................................................................. 15 Marketing (Seeking Partners).....................................................................22
Marketing Related Agreements (Pre-Licensing)....................................23 STA RTING A CO MPANY .............................. 28
Licensing...........................................................................................................24 Start-Up Company Formation Guide and Checklist................................... 29
License Compliance.......................................................................................24 IllinoisVENTURES................................................................................................ 31
License Negotiations.....................................................................................24 Research Parks and Incubator Facilities........................................................ 32
Revenue Sharing.............................................................................................25 University of Illinois Research Park & EnterpriseWorks . .................... 32
Other Methods of Innovation Transfer . ........................................................25 EnterpriseWorks Chicago . ......................................................................... 33
Academic and Research Use, Creative Commons Licensing, Health, Technology, Innovation (HTI) ..................................................... 34
and Open Source Licensing . ...................................................................... 26
SBIR/STTR Program........................................................................................... 35
Mobile Apps .................................................................................................. 26
STU DE NT E NTREPRENEURSHI P ................... 37

CO NSULT I N G & Student Entrepreneur Programs...................................................................... 37
INTE L L ECT UA L P RO P ERT Y .. . .. . . . . . . . . . . . . . . . . . . . . . 27
Faculty Consulting and the University............................................................27 CONTACT .. . . . . . ............................................. 40
Scope of Work . ............................................................................................. 27
Intellectual Property .................................................................................... 27
Confidentiality . ............................................................................................. 27
Exclusivity ...................................................................................................... 27
Liability and Indemnification ..................................................................... 27
Introduction
With an annual funded research budget of close to $790

million dollars, the University of Illinois is a leader in generating
innovations that translate into products and services that have
a profound impact on human lives. These advances have come
from all corners of the University, and their impact has created
businesses, jobs, and economic well-being.
This handbook is an easy-to-use guide to fundamental

information about intellectual property (IP), the Universitys IP
policies and practices, the resources available for technology
transfer, and most importantly, your role in the process of
commercializing University innovations.
6 A HANDBOOK FOR INVENTORS AND INNOVATORS: TECHNOLOGY TRANSFER AT THE UNIVERSITY OF ILLINOIS
The Universitys System
UIs Seamless System of Resources
for Technology Transfer Research > Innovation > Commercialization Research
Parks
The University manages a number of resources

Enterprise
designed to facilitate all stages of the process of Existing Works
technology transfer. Overseen by the Office of OSPRA/ Companies
ORS* New company
the Vice President for Research, the Universitys incubation
Grants, contracts,
technology commercialization infrastructure is
and industry
comprised of the following entities: agreements
OTMs Start-ups
The Offices of Technology Management Evaluation,
protection,
(OTMs) The Chicago and Urbana campuses Illinois
marketing, and
each have an OTM that evaluates, patents and VENTURES
licensing
licenses the Universitys intellectual property. New company
funding and
Faculty services
IllinoisVENTURES LLC provides consultative Interactions
services, potential funding, and business
development support for early-stage, research- OSPRA: Office of Sponsored Programs and Research Administration (Urbana);
driven companies, particularly those deriving ORS: Office of Research Services (Chicago)
from the University of Illinois, other midwestern
universities, and federal laboratories.
Defining Technology Transfer For the purposes of this handbook,
University-associated research parks technology transfer is the evaluation,
and incubators in Chicago and Urbana In its broadest sense, technology transfer is protection, marketing and licensing of
support and nurture the growth of early- the transfer of knowledge, ideas, discoveries intellectual property to start-ups and existing
stage companies. They encourage R&D and innovations to the public. There are companies. Additionally, while we use the
collaboration between the University and many ways to accomplish this, including terms technology and intellectual property
partners in industry and government, as publication, student graduation and interchangeably, there are subtle differences
well as attract established companies that employment, participation in scientific between them. Technology is a subset of
benefit from close working relationships with meetings, and collaboration with industry and intellectual property and commonly refers to
University faculty and students. licensing innovations. commercially useful intellectual property.
Introduction 7
MANAGEMENT OF INVENTIONS
FILE PATENT APPLICATIONS
The Bayh-Dole Act LICENSING PREFERENCE
G E CO N O M I C D E V
TIN E
O MO LO
PM
The Bayh-Dole Act, adopted in 1980, PR E
N
T
was established to promote economic
development by allowing small
businesses and non-profit organizations
(including universities) to own inventions
made under federally-funded research
programs. Under the Act, universities are:
Responsible for the management NON-

EXCLUSIVE
of inventions in compliance with the RIGHTS
terms of the Bayh-Dole Act

Expected to file patent applications
on inventions they elect to own
Encouraged to collaborate with
SAFEGUARD AGAINST SEQUESTERING
commercial concerns through licensing,
to promote the utilization of inventions
arising from federal funding
Expected to give licensing preference
to small businesses
Benefits of Technology Transfer
The Bayh-Dole Act sets the stage for
university participation in technology Leverages the Universitys technologies Supports the growth and development
transfer activities. The government retains to benefit society of the Illinois and U.S. economies
certain rights which include requiring use of
licensed inventions to prevent sequestering, Strengthens the Universitys education and Builds enduring connections between the
requiring U.S. manufacture for exclusive research programs University, industry, and public agencies
licenses, and retaining non-exclusive rights
for government purposes. Assists in recruiting and retaining faculty,
staff, and students
Sponsored Research
Areas of Responsibility: ORS/OSPRA vs. OTMS
The work of the Office of Research
Services (ORS) on the Chicago campus ORS/OSPRA OTM
and the Office of Sponsored Programs Externally sponsored research agreements Non-disclosure agreements involving
and Research Administration (OSPRA) Non-disclosure agreements involving University research OTM-managed intellectual property
on the Urbana campus is often the first (company and University proprietary information being Interinstitutional agreements
step in the technology transfer process, exchanged) Options
since they are responsible for University Materials transfer agreementsinbound, covering materials Evaluation agreements
research agreements involving being transferred by third parties into the University for use in Licenses
University research programs
government and corporate sponsors.
Technical testing agreements
Collaborative agreements including no-dollar agreements
Externally sponsored agreements often
Federal CRADAs (Cooperative Research and
define the role of the sponsor in the Development Agreements)
commercialization process. ORS and Center and consortium agreements
OSPRA review the intellectual property Visiting scientist agreements
terms in such agreements to ensure Facilities use agreements
the interests of the University and the
researcher are addressed. They consult Areas handled differently on the two campuses:
with the OTMs when such agreements
involve existing intellectual property ORS/OSPRA OTM
being managed by the OTMs or when Materials transfer agreements-outbound covering Materials transfer agreements-outbound
the intellectual property terms of the University materials transferred to colleagues and others On the Urbana campus, OTM leads
agreements are non-standard. outside of the University
On the Chicago campus, ORS leads
Because the OTMs and ORS/OSPRA
SBIRs and STTRs SBIRs and STTRs
work closely together, it is sometimes On the Urbana campus, OSPRA leads, with input On the Chicago campus, OTM leads
unclear which office to call when an from the OTM
intellectual property issue comes up. The
list on the right gives general guidelines Intellectual Property Agreements and data sharing plans Intellectual Property Agreements and data sharing
for each offices area of responsibility. in center and consortium agreements plans in center and consortium agreements
On the Chicago campus, ORS leads On the Urbana campus, OSPRA leads, with input
from OTM
Introduction 9
Intellectual
Property University Ownership The only exception under the General Rules is
copyrights in traditional academic work, such
Under the Universitys General Rules, the University as scholarly publications and course notes.
of Illinois owns all intellectual property created Copyrights in traditional academic works made by
by any University employee in the performance faculty and students independently at their own
of employee duties at the University or created initiative and for traditional academic purposes
by anyone, including students and others, using are owned by the authors. Examples include
University facilities, equipment, or funds. manuscripts, curriculum, books, lectures, and
Defining Intellectual
Property
Intellectual property encompasses all forms
of creativity such as inventions, software,
discoveries, creative or artistic works,
know-how, processes, and unique materials.
For example, intellectual property may be
machines, devices, instruments, computer
programs, circuits, biological materials,
chemicals, books, videos, photographs,
paintings, sculptures, or songs.
Intellectual property is protected by law

through patent, copyright, trademark,
and trade secrets. Multiple forms of
protection may be used on the same
piece of intellectual property. For example,
computer software can be protected
by copyright, patent, trade secret, and
trademark. Intellectual property is also
protected through agreements which
control access and use of the
intellectual property.
teaching materials for faculty, as well as class
notes, reports, papers, and theses for students.
Note, however, if the University is the impetus

for the creation of such work, it is not necessarily
considered a traditional academic work. One
example is when the University provides dedicated
funding for the creation of a specific online course.
Ownership associated with online educational
tools and courseware has varied, often complex,
ownership and usage rights depending on the
circumstances of development and the use of
University resources.
Copyright ownership and invention ownership

may be different. While the author or authors
own the copyright in a manuscript or paper
describing an invention (because it qualifies as
a traditional academic work), the University owns
the underlying invention or software described
in that paper. The University also owns the
original records of the research, including networks. However, when students create to the Universitys ownership policy may be
laboratory notebooks. intellectual property using University facilities, applicable to student inventions that result from
equipment or funds, the standard University specific student class projects and entrepreneurial
ownership rules apply. activities when certain criteria are met. The
Student Ownership University may waive its right to own these
EXCEPTION TO STANDARD student inventions. This exception only applies
Undergraduate students likely own their UNIVERSITY OWNERSHIP RULES when the student invention arises solely from
intellectual property because in most cases, FOR STUDENT ENTREPRENEURIAL the class or activity and when the only University
students are only using University resources ACTIVITIES facilities used were those offered for the approved
that are usually and customarily provided. The University encourages student class or activity. This exception does not apply if
Examples of resources customarily provided to entrepreneurism and provides varied programs, the invention incorporates, depends on
students are office space, dorm rooms, library resources and opportunities for students. To or is derived from other University owned
facilities, and ordinary access to computers and enable such opportunities, a limited exception intellectual property.
Intellectual Property 11
Patents
machines, articles of manufacture, devices, INVENTORSHIP
chemicals, and compositions of matter. Inventions A patent application must be filed in the names
can be protected by patents. of the true inventors. The legal criterion for
inventorship does not equal those used for
The U.S. Constitution recognizes the value of authorship. Inventorship is defined by U.S. patent
innovation to the economy and provides the law. Broadly, an inventor is one who alone or
owner of a patent with a time-limited monopoly together with others conceived the ultimate
(20 years) to stop others from exploiting the working invention. Inventorship is not a reward
Inventions & Patents invention. In exchange for this exclusive right, the for hard work to someone who only worked under
published patent document must fully describe direction. Inventorship is tied to the claims in a
An invention is a device, method, composition, the invention in a way that allows others to patent application and is determined at the time
or process made by man, as long as it is new, reproduce and learn from it. In that way, the the patent application is filed. As the claims in
useful, and not obvious. Inventions may include patent monopoly provides an incentive to share an application change, so may inventorship. The
many types of discoveries and technological advances with the public and, thereby, contributes OTMs refer the final inventorship determination to
innovations such as processes, methods, to growth in the field. outside patent counsel.
OWNERSHIP
Inventorship does not equal ownership. In
Patentable Inventions most cases, organizations own the inventions
developed by their employees. University of
Most research conducted at the University can Biotechnology: genetic promoters, genetic Illinois patents are owned by the Universitys
lead to inventions that may be patentable. markers, gene transfer methods, expression Board of Trustees.
A few examples are: vectors, and microorganisms
Chemistry: new compounds, new drugs, drug THE STANDARD TESTS OF
Engineering: laboratory instruments, targets, drug design, separation methods, PATENTABILITY
machinery, semiconductors and chips, coatings, additives, superconductors, metals, For an invention to be patentable, it must meet the
manufacturing techniques, process polymers, and fuel cells following three criteria for patentability:
improvements, nanotechnology, circuits, Software and Algorithms: methods and
sensors, lighting, filtration, and micro-devices processes in computer programs, operating New or novel. The invention must be different
Agriculture: grain and food processing, systems, networking, data mining and from all known inventions, products, and published
germplasm and plant varieties, precision storage, security, and supercomputing ideas. This does not mean that every aspect of an
equipment, devices, and nutrition invention must be entirely new or novel. You can
selectively patent new aspects if they pass the
following two tests.
The America Invents Act, which became law in
September 2011, enacted the most momentous change
to the United States patent system since 1952.
Non-obvious. The invention cannot be an obvious
or a logical extension of known ideas or inventions. Withholding a Graduate Thesis from Publication
It cannot be readily apparent to a person skilled in
the field of the invention. It is occasionally necessary to delay in the thesis. The author, title, and abstract are
publication of a thesis for a limited period of not accessible in any way.
Useful. The invention must work and have a practical time for the purposes of protecting potentially
application or utility. patentable inventions and complying with Upon filing a formal withholding request
the terms of sponsored research agreements with your OTM, the Graduate College will
It is also possible to patent an improvement to (such as prepublication review). A students not transfer the thesis until after the OTM
existing inventions, if the improvement meets the degree requirements can still be fulfilled even has removed the withhold request. Once
above criteria. Furthermore, the patent application though publication of the thesis is delayed. the withholding is removed, any access and
must fully enable someone to make and use your embargo options selected by the student at the
invention. This is called enablement. The optimal way to protect intellectual time of deposit will then be applied to the thesis.
property and adhere to sponsor agreement
PUBLICATION AND PUBLIC requirements is to file a formal submission
DISCLOSURE to your Office of Technology Management
Publication and other public disclosure of an of a Thesis Withholding Request. This must
invention by anyone, including the inventor, if it be done prior to or concurrent with thesis
occurs before a patent application is filed, may deposit in the Graduate College and it delays
prevent the ability to obtain a patent. the Graduate Colleges transfer of the thesis
to IDEALS and ProQuest/UMI Dissertation
Publishing. This mechanism provides an
absolute blackout of information contained
Patents 13
WHAT CONSTITUTES A PUBLIC BEING FIRST To help avoid losing patentability due to public
DISCLOSURE? Not infrequently, two entirely different groups disclosure or not filing first, contact your OTM as
A public disclosure is any oral or written invent the same or very similar inventions. early as possible in the invention process.
communication to others that is not confidential What happens then? In most of the world,
and either teaches the invention completely including the U.S., the first inventor to file PATENTS AS PROPERTY
or provides enough information to make a patent application is entitled to the patent. A patent is property like a house or car that may
development of the invention obvious. This is refered to as a first-to-file system. be sold, leased, or rented to others for royalties.
In the U.S., a public disclosure may be any Patent rights are often transferred to others
written document accessible by others such as Prior to March 2013, U.S. patent law held that the for commercialization through licensing (see
manuscripts, abstracts, websites, meeting notes, or inventor who could document that he or she was licensing section) rather than outright sale. The
presentations. Simply telling a colleague that you the first to conceive an invention was entitled to a patent owner can decide how to allow others to
have made an invention but not telling how to make patent. This is refered to as a first-to-invent system. use his or her property and can divide up rights
or use it is usually not considered a disclosure that The America Invents Act changed the U.S. patent in the property in different ways. For example,
could prevent you from obtaining a patent. system from first-to-invent to first-to-file. exclusively or nonexclusively, by field of use, or by
geographical region.
Inventors Notebook
Inventions that
The inventors notebook is one of the best ways Content
to establish intellectual property ownership. The notebook should be a dated, written record are not patentable
of all experiments, results (even if the
Keeping a Notebook significance is unclear), conversations include laws of
Laboratory notebooks documenting ones (including who you talked to and what topics
research are almost always kept to support
publications. In the case of applying for a patent,
you talked about), thoughts, and future
directions of investigations.
natures, theories,
it is recommended to keep the notebooks in a
more structured way so they can be relied upon Certification
scientific principles,
as evidence to support to invention entitlement. A credible witness who is not a family member
or notary public should be chosen for his or her pure algorithms and
perpetual motion
knowledge and ability to read and understand
the concepts and principles in the notebook.
machines.
PATENTS & FREEDOM
TO OPERATE
Having a patent doesnt
necessarily mean you have
the right to practice your
invention and make products
covered by it. Commercializing
a technology can involve many
processes, methods, and
materials that may not be covered
under your patents, but may be
covered under patents owned by
others. The owners of these other
patents may have the right to stop
you from commercializing your
invention unless you obtain their
permission to practice under their
patents. Obtaining rights to all
the intellectual property needed
to commercialize a technology
without infringing the intellectual
property rights of others is called
freedom to operate.
Patents 15
Patent Application This application is filed in the United States Patent or responds with modifications (amendments)
and Trademark Office (USPTO) and assigned to a to the claims. Two to three iterations are typically
Process patent examiner who specializes in the particular required to obtain allowance of the patent
technology area. The examiner considers the scope application. Once issued, generally a patent has a
Obtaining a U.S. Patent starts with the filing or breadth of the claims against prior patents life of 20 years from the filing of the first regular
of a non-provisional patent application that and publications. They then issue an office action patent application. In the U.S., maintenance fees
includes a specification describing how to make accepting (rarely) or rejecting (typically) the claims are required at 3, 7, and 11 years to keep the
and use the invention and one or more claims (some or all) as not distinguishing over what is patent in force.
that define the scope of what is new about already known. In the case of claim rejections,
the invention. The claims are used by courts to the patent attorney, with the assistance of the A provisional application can be filed in the U.S.
determine invention infringement. inventor, rebuts the examiners arguments and/ before the regular application to stake a claim to
U.S. and Foreign Patent Application Timeline U.S. International
One Year 18 Months 12 to 36 Months Two to Four Years 30 Months Four to 10 Years
First U.S. Patent application First office action Patent may issue
application typically published from USPTO, (average time is 24
generating OTM to 48 months)
U.S.
responses and
amendments to
the claims
File coverage International search PCT examiner If a PCT application is filed, Individual
International
under Patent report indicates indicates individual applications foreign patents

Cooperation related patents and patentability and translations can may issue
Treaty (PCT) publications be filed in specific
countries and regions
when the case warrants
an invention. This type of application does not licensed the OTMs asses whether to continue country amplification effect and the necessity for
require claims or get examined and becomes prosecution or maintenance. translations and additional attorneys. Furthermore,
abandoned within one year of filing unless it is because the laws in foreign countries vary with
converted to a regular U.S. application or a Patent U.S. PATENT DECISIONS respect to the value patent protection affords the
Cooperation Treaty (PCT) application within one The OTMs pursue U.S. patents on a variety owner, the value of foreign protection may be less
year of filing. It is often used to extend patent life of innovations. University technologies are than the corresponding value in the U.S.
for an additional year. usually very early stage and well in advance of
being ready for the market. The OTMs process
A PCT application is an international place holder removes technologies that are not patentable,
application filed in the home country of the inventor cannot provide an exclusionary position, are in
that reserves the right to file in the U.S. and many a technology area that has been unsuccessfully
foreign countries at a later time. Just like provisional pursued before, or are in a market area where Timing
applications, PCT applications will never issue as a investment cannot be justified.
patent and will become abandoned if they are not The average pendency of a patent
converted to regular applications in the U.S. and INTERNATIONAL AND PCT application in the U.S. is between two and
each foreign country in a timely manner. APPLICATION DECISIONS four years. Inventors in the biotechnology
International patents involve escalating expenses, and computing fields, however, should
The first U.S. application can be filed in the USPTO and, as a consequence, the OTMs are much expect longer waiting periods.
either as a provisional, regular, or PCT application. more selective in decisions to file international
applications than U.S. applications. Cost
Patent Decisions Generally, the Offices pursue PCT and foreign Filing and obtaining U.S. patents generally
applications when the technology has been costs between $20,000 and $30,000. Filing
Decisions to file a patent are made by the licensed and the licensee pays for it, or in cases and obtaining patents in other countries
OTMs. These are business decisions based on where there are significant foreign markets. may cost $30,000 or more per country.
market considerations, necessity of protection, Maintenance fees or annuities are also
probability of success in licensing and recovering FOREIGN COUNTRY AND REGION required at 3, 7, and 11 years in the
expenses, and potential market impact. There is SPECIFIC PATENT DECISIONS U.S. and more frequently in foreign countries.
an expectation that all patents filed are potentially Converting a PCT application into a specific foreign
commercially valuable enough to recoup at least country or regional application (or filing in those
the patent expenses. countries directly without having filed a PCT
application) has much greater cost implications
Periodically the OTMs review their patent than the decision to file in the U.S. This is primarily
portfolios and in cases where the patent is not because of the combination of the country-by-
Patents 17
Copyright &
Trademark
What can I copyright?
copies, and make changes to the original
copyrighted work. Changed versions of a work are
known as derivative works. A copyright provides
the owner with the right to determine how the
work is copied and distributed to others, such as Copyrightable
through traditional or online publication, open Literary works: books, poems
access, sale, lease, or lending. Copyright owners
Copyright also determine whether a fee is charged for access
Computer software: object code,
source code
to their work.
Music: notes, words, sound recordings
Copyright is the form of intellectual property
Plays: dances, pantomimes
that protects the expression of a creative COPYRIGHT APPLIES
idea that is fixed in a tangible form. It is like an AUTOMATICALLY Art: paintings, graphics, sculptures
acknowledgement of who created the work. Unlike patentable inventions, copyrighted Motion pictures
works are automatically protected under U.S.
For example, in The Wizard of Oz, copyright copyright laws without having to undergo a
protects the order of the words in the story, as formal registration process. However, it is still
well as the layout of pictures, colors, and words important to affix an appropriate copyright notice
on the page. The ideas, the plot, or the characters so others are aware that they are not free to use
are not protected. Each adaptation of this classic the work without permission. Works owned by Not
Copyrightable
tale (book, screenplay, movie, music) generates the University should bear the following copyright
independent copyrighted works. notice: 20XX The Board of Trustees of the Ideas or concepts
University of Illinois. All rights reserved. Factual information
For scientific writings, copyright does not protect the Listings without originality (phonebook)
procedures, systems, processes, concepts, formulas, There is also a formal registration process to
Titles or short phrases
discoveries, or devices described in the work. document copyright in the Library of Congress.
Similarly, for software, copyright does not protect Type styles
the underlying concepts, processes, systems, Author owned copyrights last for the life of the Public domain information
algorithms, program logic, or layouts. author plus 70 years after the last surviving Slogans
authors death. Employer owned copyrights lasts for
Copyright is literally the right to copy, which 120 years from creation or 95 years from the first
includes the right to display, perform, distribute publication of the work, whichever is shorter.
A registered mark is valid for 10
Trademark Examples
years and is renewable as long as it
continues to be used commercially.
Logos: Apple, Shell, Blue Cross Blue Shield
Names: Xerox, Kleenex, Coca Cola,

Ivory Soap, Kodak
Trademarks & The OTMs may file trademarks on marks
associated with intellectual property when such Color/Sound: Pink Corning insulation,
Service Marks marks have already become well known and NBC chimes
their association with the Universitys research
Trademarks and service marks are distinctive enhances the value of the intellectual property. Slogans: Have you driven a Ford Lately?,
words or symbols used to identify the brand or When units want trademarks associated with Dont leave home without it.
origin of the goods or services provided. The academic and research activities, the Universitys
trademark is not the name of a specific product legal counsel (not OTM) helps advise and file. Current and former University of Illinois
but distinguishes the product from others and The Division of Intercollegiate Athletics handles trademarks: Eudora, Mosaic, Mobius, NCSA,
identifies quality. It can be suggestive, descriptive, trademarks associated with the Universitys Virtual Director
and arbitrary, but not generic. To qualify for a athletic logos.
trademark, the mark must be used consistently on Marks must remain
products in the marketplace. If the mark is used so For more information on patents, copyrights, and distinctive
often that it becomes generic, it loses the ability to trademarks, visit the United States Patent and
identify the source of the product and is no longer Trademark Office Website at www.uspto.gov. Ever wonder why you are asked whether you
entitled to trademark protection. want Pepsi or Coca Cola? It is so that the
trademark remains connected to the brand
and does not become a generic term for the
type of goods. An owner must be diligent in
protecting use of the trademark, or, over time,
the mark becomes generic and is no longer
enforceable. Examples of marks that are no
longer enforceable include Aspirin, Crock Pot,
and Hoola Hoop.
Copyright & Trademark 19

Technology
TH E
Transfer PROC ESS

Patenting
U.S., PCT, Foreign
The Offices of Invention

Disclosure
Screening
Assessment
Marketing Licensing
Negotiations Compliance
Technology Management to OTM

n,
ch Use Distributio
Academic, Resear g
The Offices of Technology Management are Licensin
and Open Source Return
responsible for managing the intellectual property Assign or release
generated by research and educational activities at license to Inventor/
the University of Illinois. Release to Public
The Offices missions are to encourage

innovation, enhance research, and facilitate
economic development through the transfer of
intellectual property.
The Offices have developed a documented, circumstances of its development. The Submitting a disclosure form to your OTM does
systematic, and timely process for the analysis, disclosure also identifies potential applications not by itself protect the intellectual property. Only
protection, and commercialization of and what companies might be interested in a patent or a copyright can do that. Also, disclosure
intellectual property. licensing the IP if that information is known. to your OTM is confidential. It is not considered a
Forms can be found on the OTMs websites. public disclosure under patent law. A disclosure to
INTELLECTUAL PROPERTY someone outside the University is a public disclosure
DISCLOSURES/REPORTS Disclosure forms help the OTMs begin the process unless you have a confidentiality agreement.
OF RESEARCH DISCOVERIES of evaluating the technology transfer potential for
Both OTMs actively reach out to faculty to the intellectual property and complies with the SCREENING EVALUATION/ASSESSMENT
encourage disclosures of new innovations. obligations of Bayh-Dole. A technology manager Through the screening review process, the
A disclosure is a written statement outlining is assigned to guide a disclosure through the decision to pursue or abandon commercialization
a new innovation and documenting the technology transfer process. efforts for a technology is made.
Within six to eight weeks of receiving a to the inventors if the inventors are interested funded invention, the federal agency must
disclosure, OTMs staff completes a business- in pursuing a patent and commercializing the approve the assignment, which may take a few
case analysis, called a screening evaluation, innovation independently. For any federally weeks or months to finalize.
with a recommended course of action on
commercialization. The results of the screening
evaluation, which include patent searches,
marketplace analysis, and identification of possible
licensees, are then shared with the inventors. Technology Transfer Q&A
PATENTING DECISIONS Q: Can I still publish my findings? Q: What is my role in the screening process?
For technologies the OTMs decide to patent,
an initial patent strategy is identified (see Patent Yes, findings can still be published, and Inventors typically meet with OTM staff
Decisions, page 17). In most cases, disclosure to your OTM does not alter your to discuss the invention and clarify aspects
an independent patent law firm is hired to prepare publication timetable. However, because of the disclosure. Once a decision is made on
and prosecute the patent application. publishing can affect the ability to obtain whether to pursue patenting, the inventor will
a patent, it is best to submit a disclosure prior be contacted to discuss the outcome.
MARKET ASSESSMENT to publishing or communicating your findings
Detailed analyses, sometimes through the in a public forum.
engagement of outside consultants who
connect with industry experts, add to the OTMs Q: When should I submit a disclosure? Q: What is my role in patenting?
understanding of the potential market for the
technology and help determine further patenting It is best if inventors submit a disclosure Inventors and OTM professionals speak
and marketing actions. Inventors themselves between eight and 12 weeks before with the patent attorney during the patenting
often help enormously in finding interested publication so that, if necessary, actions can process. Also, inventors will need to
licensees because they have many contacts be taken to protect both U.S. and foreign review drafts of documents, as well as sign
through their own research. rights. Once publicly disclosed, an invention assignments and other legal documentation.
may not be patentable. To be safe, inform your OTM will guide the inventors during the process.
RELEASE LICENSE OR ASSIGN TO OTM of any imminent or prior presentations
INVENTOR that include the IP.
If the OTMs decide not to pursue or to
discontinue pursuit of commercialization efforts
on an innovation, they will release the invention
and may assign the Universitys ownership rights
The Technology Transfer Process 21

MARKETING
(SEEKING PARTNERS) to license existing technologies or to cultivate These activities may include:
OTM staff engage in a variety of marketing relationships, such as sponsored research, that showcasing University technologies to
activities to advocate for University research and may lead to licenses. The best tools to market a venture capitalists, investors, and corporate
intellectual property. Considerable time technology vary from industry to industry, therefore representatives through OTM-hosted events
and resources are devoted to understanding market each OTM engages in a variety of activities on campus and around the country
needs and contacting potential partners either depending on the situation and technology. attending tradeshows and professional meetings
Technology Transfer Q&A (Continued)
Q: What is my role in marketing? Q: What is my role in licensing? Q: What effect does a license have on my
ability to do research?
Inventors are encouraged to work closely with Licensing is the primary function of the OTMs,
their technology manager to market their and inventors will be informed of progress. You can still continue research using a licensed
invention. Inventors are often quite involved in Inventors often are closely connected to others invention, even if it is exclusively licensed.
the early stages of recruiting commercial partners in their field and may be consulted by their OTM The University will always retain the right to
and licensees, as the inventors expertise is often on the business terms of the license. use licensed inventions in academic research
critically important. This involvement includes and teaching.
exchanging information and materials, and Further, the inventors role in licensing is an
sometimes results in further sponsored research extension of their role in marketing since their Q: What if an industry partner funded my
(dubbed pre-licensing agreements). Inventors expertise is often critically important to transfer research and invention?
are often involved in crafting the details of such the technology and related know-how to the
pre-licensing agreements. licensee. The University license places only Your OTM will review the terms of the contract,
nominal obligations on the part of the inventor to send a copy of the disclosure to the company,
assist in the transfer of the licensed technology. determine the companys interest, and take
When more than minimal time and effort is action based on the companys decision.
necessary, the licensee will negotiate a separate
consulting arrangement with the inventor.
making calls and sending collateral materials
producing brochures and sellsheets
maintaining websites
sending press releases
using social media to cultivate contacts
creating campaigns to promote a portfolio
of technologies
hosting events on campus so that inventors
can get to know our services
Finding partners often takes time, since many

University innovations are on the cutting
edge and well in advance of the needs of the
marketplace. The OTMs work with inventors
and others to determine the best time to
market a technology.
Both campuses MARKETING RELATED AGREEMENTS

are developing (PRE-LICENSING)
sustainable sources of Once a potential corporate partner is identified negotiated directly through the OTM, or they
funding for proof-of-concept for a technology, non-disclosure agreements are may be clauses contained in other agreements
development. used to protect the confidentiality of any non-public such as sponsored research agreements or the
Talk to your OTM for more information. Materials transfer agreements and above pre-licensing agreements.
information. evaluation agreements may be used to provide
companies with certain rights to use the technology If intellectual property is developed by more than
for short term evaluation purposes only. one institution, an inter-institutional agreement
is often negotiated to set out the terms under
Option agreements reserve the right of a which the two universities will cooperate to
company to negotiate a commercial license. assess, protect, market, license, and share
Options may be stand alone agreements revenues from the jointly-owned property.

LICENSING potential. If the licensee does not comply, steps as a percentage of sale or a fee per selling unit.
A license is the technology transfer agreement may be taken to terminate the license, in which Royalty rates vary according to the industry,
granting some of the Universitys rights as case the invention would be available for licensing the significance of the invention, and the base
owner of an intellectual property (licensor) to a to another company. upon which the royalty is applied (e.g. unit,
company who has agreed to certain obligations component, subsystem).
and responsibilities to commercialize the LICENSE NEGOTIATIONS
intellectual property (licensee). The University The licensing process begins with negotiations Sublicense Sharing
licenses its varied technologies (patents, with interested industry partners, including start- Exclusive licenses usually provide the licensee with
software, databases, copyrights) to companies up companies in which term sheets summarizing the right to sublicense, or authorize others, to make,
who demonstrate the capability and commitment the essential business terms of the licensing use, and sell the Universitys technology to facilitate
to develop the early stage innovations into agreement are exchanged. Below are the types of widespread use. Revenues received by the licensee
commercial products. Sometimes both the business terms generally addressed. from sublicenses are shared with the University.
inventors and the University agree that the best
entity to bring a technology to market is a start- Scope of License Rights Minimum Royalties
up company. License rights such as exclusive, nonexclusive, Minimum royalty payments are established
field of use limitations, and territory limitations to encourage diligence in sales of products or
Whether the licensee is an existing company are established to be commensurate with the services requiring the use of the technology.
or a start-up, licensees also demonstrate such licensees product development plans and the
commitment by providing a written technology market. The Universitys licensing objective is to Patent Reimbursement
development plan to the University. This plan obtain widespread use of its technologies. Recovery of the costs incurred for protecting the
should include, but not be limited to, a description technology in the U.S. and other contries are part
of the technologies to be licensed, the resulting License Fee of the license.
product, market analysis, a product development Together with the royalties and other monetary
timeline and the company resources committed terms, the value depends on the scope of the Performance (Diligence) Milestones
to development. The terms of the license are license rights and the market value of the University technologies often require a signficant
negotiated based on the licensees plan. technology licensed. period of time and effort in product development
before they are ready for the market. During
LICENSE COMPLIANCE Royalties the development phase, licensees are required
After a technology is licensed, the Offices manage Royalties are paid by the licensee when to provide periodic reports and meet specific
the license to ensure all terms and conditions are products or services that require the use of the milestones in order to retain a license, especially
adhered to and the technology reaches its fullest technology are sold. Royalties can be expressed an exclusive license.
REVENUE SHARING Agreed allocations are formalized in a The Offices of Technology Management handle
When an invention, software or other proceeds distribution agreement. The proceeds more than just traditional licensing and, in fact,
intellectual property is successfully licensed, distribution agreement also addresses the work with faculty and staff across all departments
or commercialized, the net revenues are shared shares among multiple departments or units, to help disseminate copyrighted works, software,
with inventors and creators. using the recommendation of the inventors and data, code, materials, and research results outside
the concurrence of the associated departments the University for greater impact.
Inventors receive 40% of revenue after deducting or unit heads.
expenses (such as costs for protecting the ACADEMIC AND RESEARCH USE,
intellectual property), the inventors department or How is Equity distributed? CREATIVE COMMONS LICENSING,
unit receives 20%, and the University receives 40%. Equity from a license is shared with inventors AND OPEN SOURCE LICENSING
when it is cashed in by the University. The money Other common ways of transferring University
is distributed according to the proceeds intellectual property include:
distribution agreement, under the same sharing
40%
formula as royalties. Academic and Research-Use licenses: often
used for software, biological materials and
What are the tax consequences? data sets; allows uses by other institutions for
Inventor(s) Licensing revenues are considered taxable income. academic purposes only
The University reports licensing revenue paid
to inventors as income on Form 1099. Your tax Creative Commons licenses: often used for
40%
advisor can provide specific advice. literary and artistic works; has a matrix of
options for both academic and commercial uses
20% Other Methods of

University Open Source licenses: often used for
software; makes source code freely available
Inventors Innovation Transfer for commercial and non-commercial use under
Department(s) certain conditions
Certain types of intellectual property,
such as copyrighted software, copyrighted All of the above licenses retain copyright for the
content, and biological materials, are commonly creator and stipulate proper attribution. Even
disseminated to the public through ways other though such transfers and dissemination are
than traditional licensing on a royalty or revenue not revenue generation to the University, they
generating basis. promote visibility and public use of University
research and potentially aid in the Universitys
mission for public good.

When choosing between academic, creative Academic and Research-Use licenses permit institutions to transfer the software or materials
commons, and open source licensing, the OTM can research institutions or individual researchers to third parties or make commercial use out of the
assist creators in deciding which option is the best to use a program or material free of charge or technology. Such research use licenses also leave
for their specific situation. at a research-use rate, but do not permit those open the possibility of future traditional revenue
generating commercial licensing.
Creative commons licenses are a matrix

Open Source Q&A of licensing allowing free use and sharing
(redistribution) of a copyrighted work with
Q: What is the Open Source? Q: Whats my role in open source licensing? proper attribution. The options include whether
modifications to the work can be made, whether
In the software community, Open Source is a As with decisions for publication, the faculty the work can be used for commercial purposes,
forum in which multiple unaffiliated parties or head of the research program makes the and whether further sharing of the work must carry
have access to the source code of a software recommendation for open source dissemination. the same options for re-distribution.
program for the purposes of collaborative Often, the decision to release code into the
development. People who participate in open source is made early in the software Open source licenses allow free and less
the Open Source believe that more scrutiny development process: as a condition of the restricted distribution of software, including
brings greater reliability and that software funding, as a requirement of participation in commercial use, and promote testing and further
is an evolving entity that can achieve its the software community, or as a consequence development and adoption of the software in a
fullest potential without the restrictions of of incorporating third party code that requires collaborative environment. Most federally funded
commercial sale. placement in the open source. research in software development requires open
source dissemination. However, open source
When software is placed in the Open Source, licenses may limit future proprietary commercial
it is usually through the University of Illinois licensing potential.
or NCSA Open Source License. This license
places minimal restrictions on use, thereby MOBILE APPS
maximizing flexibility of use and dissemination. The University has signed the iOS Developer
The University of Illinois license can be Program License Agreement and the Android
viewed at http://www.opensource/licenses/ Market Developer Distribution Agreement.
UoI-NCSA.php. Your OTM can help you get access to iOS
and Android developer tools and manage the
submission of University-owned apps to Apples
App Store and the Android Market.
Consulting
& I N TE LLECT UAL PROPERT Y research obligations. The scope of work should be CONFIDENTIALITY
limited to the specific work to be performed. It is Typically, the consultant must have access
best to avoid overly broad statements, such as other to company proprietary information that the
services as may be requested from time to time or consultant must keep confidential. Be specific
services in the area of cancer research, as these about what information is to be confidential. If
may encroach on your University research areas. there is potential for overlap in research, ensure
you have continued rights to publish.
Faculty Consulting INTELLECTUAL PROPERTY
Often consulting agreements require that EXCLUSIVITY
and the University the company own the intellectual property There may be provisions that restrict the
developed by the consultant. This requirement consultant from providing advice or working with
Faculty consulting often enhances the skills may be difficult to comply with when the other companies. This may impact the facultys
and reputation of the faculty, is a benefit to the area of consulting overlaps with the faculty ability to work with other corporate sponsors
University, and provides a public service. Faculty members area of research. Narrowing the scope within the University.
are expected to arrange their consulting activities of work (such as only to company proprietary
so as not to conflict with University duties innovations) may help. LIABILITY AND INDEMNIFICATION
and responsibilities. The consultant has no control over what the
The consulting agreement should not convey to company does with the advice and services he or
Your OTM is happy to talk with you about the company any rights in intellectual property she provides. Therefore, it is advisable to include
consulting agreements, but please keep in mind developed using University facilities or developed a provision that limits the consultants liability
that the Office cannot provide legal advice under University grants or contracts. Make the and expressly disclaims liability for any products
on these documents, and this overview is not client aware of your University obligations related produced by the company. Further, the company
considered legal advice. to ownership of intellectual property. Watch out should indemnify the consultant for any third
when the consulting agreement asks for rights to party claims or actions related to the consulting
The following overview provides information about improvements or future inventions in the area, services. Since consulting work is private, it is not
the general terms and conditions of consulting so you dont put your related research programs covered under the Universitys general insurance.
arrangements, as well as identifies areas of at risk. If the company owns it, you do not have a If there is a potential for liability, the consultant
overlapping obligations and responsibilities that right to use it in your research. should check whether his or her personal liability
may arise when undertaking consulting work. policies would cover such claims.
In view of recent court decisions (e.g., Stanford
SCOPE OF WORK v. Roche), the OTMs urge you to pay attention to
A clearly defined scope of work is often the best wording that may diminish your rights and the
way to avoid overlapping intellectual property and Universitys ownership in existing IP.
Consulting & Intellectual Property 27

Starting a
Company
Start-Up Q&A
Q: What is a start-up company?
A start-up company is a new business entity

created to market a specific invention. It is
Starting a new company is one way to further optimization of stakeholder positions (University, an alternative to licensing an invention to
develop and commercialize technologies created faculty, etc.), improvement of the probability another already existing company.
at the University of Illinois. A start-up can be a that the technology will reach the market, and
preferred route for commercialization because techniques to accomplish further commercial Q: What role does the inventor play in the
it can provide the professional guidance development outside the research laboratory. start-up company?
and development needed to demonstrate The licensing or optioning process begins with
commercial viability, and thus improve the somewhat standardized templates that tend to The inventor usually serves as a consultant or
chances that an early-stage technology reaches provide both equity and royalty consideration to adviser to the new company. That role may
the market. the University in exchange for commercial rights change as the company develops. However,
to the technology. much more time is required early in the
Numerous resources exist within the University process of establishing the company.
system to support the development of new When a start-up includes one or more
businesses commercializing University intellectual University faculty members, a conflict of Q: What support does the University
property. IllinoisVENTURES is a premier seed and interest management plan is required. provide to start-ups?
early-stage technology investment firm focused on That plan outlines the relationship between a
research-derived companies. It was launched by faculty members activities with the company and The University provides resources and
the University, and has been consistently named his or her research and teaching responsibility. services that make start-up formation
by Entrepreneur magazine to its national list of The plan identifies and mitigates possible areas easier, such as IllinoisVENTURES and
the top 100 venture capital firms. In addition, of conflict, such as those related to conflict of incubation facilities.
Research Park and incubation facilities on both commitment and/or conflict of interest and lays
campuses provide the physical space and the out a plan for disclosure and management of University licenses to start-ups are
environment to foster start-ups. these conflicts. To initiate a conflict of interest structured so as not to overburden the
management plan, contact the Office of the Vice company financially during the first years.
Many factors are involved in the OTM decision Chancellor for Research. See box on page 30 for
to license a technology to an existing company more information.
or to a start-up company. Considerations include
Start-Up Company Formation
Guide and Checklist
Review the companys business model with
professionals to determine whether a viable
business case is possible. IllinoisVENTURES
and the Offices of Technology Management
can help with the review. Negotiate a license deal framework with For more information about
the OTM. The deal terms represent a package starting a company see
Let your OTM know you are interested in whose value depends upon the type and
forming a start-up. You may then want to significance of the technology being licensed The Start-Up
enter into a standstill or option agreement
to ensure the University wont license the
and external market factors. Components
of the package include exclusivity, field of
Handbook
technology to any third party. This allows use, equity, royalty rates, sublicense sharing,
time for an individual or a company to diligence milestones, minimums and other
develop a business plan and satisfy other payments. The terms are interrelated, and
licensing requirements. there is trade-off among terms in arriving Establish company as a legal entity. A
at the entire deal. Equity is typically taken license for a technology will only be granted
Develop a preliminary business plan and in start-up company deals in exchange for to a company demonstrating the capability of
submit to your OTM. The business plan lessening the cash burden on the company developing the technology into a commercial
should include a business description, market in the early years. product. Documentation needed includes
analysis, management team, financial plan, articles of incorporation, bylaws, and founders
and marketing plan. Seek conflict of interest management plan agreements or equivalents.
approval. When a start-up company involves a
The plan should also identify what University faculty member, a plan is developed Finalize the license agreement. License
technologies are needed and their benefits describing the relationship between the drafts are exchanged, and the final deal terms
to the company. The business plan needs company and the facultys University research and contract language are negotiated and
to be specific enough that the OTM and and students. This plan identifies and mitigates agreed upon.
the company can begin to negotiate the potential conflicts of interest and should be
deal framework and to identify meaningful initiated as early as possible with the Office of Complete a business plan acceptable
milestones for the license. the Vice Chancellor for Research. to the University.
Starting a Company 29
Finalize the investment agreements.
Investment documentation and agreements are
reviewed and approved by the University and
should be ready for signings. These types of
agreements can include, but are not limited to:
Charter (Articles/Certificate of Incorporation)

Rights Agreement
Stockholders Agreement
Have experienced management on board at

the time of signing the license agreement.
If that management is on an interim basis,
specify that a qualified management team will
be assembled within a period of time after
execution of the license agreement.
Provide a capitalization plan and

capitalization table. A start-up must disclose Conflict of Interest Faculty Responsibilities
the current levels of financing, equity value, or
capitalization at the time of license signing and Obtain prior written approval to engage in Refrain from advancing ones own interest
must reach specified levels of such financing non-University income-generating activities. or the interest of family members to the
within an agreed-upon time. detriment of the Universitys interest.
Disclose such activities annually, whenever
Sign license and investment agreements and a substantial change occurs, or when Disclose involvement of University students
provide stock certificate. required by granting agencies. or employees in ones external activities.
Monitor agreements. The company, the Refrain from spending so much time on Work with your department head to identify
University, and the investors monitor company external activities that they interfere with and evaluate potential conflicts and manage
progress toward commercialization obligations University responsibilities. or eliminate them.
and milestones.
IllinoisVENTURES About IllinoisVENTURES
The Board of Trustees of the University of Illinois Total assets under management: Focus: Research-derived investment
$65 MILLION
launched IllinoisVENTURES in 2002 to catalyze opportunities
the creation and development of research-
derived technology companies. Industries: Information technology, physical and
life sciences, cleantech
Under the guidance of a world-class board
comprised of leaders from all phases of the Stage: Origination and early-stage venture capital Geography: Illinois and the Midwest
investment community as well as academia,
IllinoisVENTURES has created a state-of-the-
art environment for new company formation
via a unique public/private partnership that is Building on University, State, and Private Investment
450
a valuable resource for those interested in
starting a company. In 2004 IllinoisVENTURES Consultative interactions with over 3,000 Created more than:
raised their first venture fund, the Illinois technologies since 2002.
Emerging Technologies Fund, in recognition of high-
ATTRACTED
$600
the limited presence of seed and early-stage value
technology investors actively committing capital 3rd-party jobs
in Illinois. co-investment
in holdings
To date, IllinoisVENTURES has formed and over 13:1
supported an array of companies in multiple
business domains throughout the region. MILLION leverage Invested over $45 million in 75
companies, often acting as co-founder
IllinoisVENTURES provides guidance to faculty

in early market assessment, competitive
analysis, business strategy, and other activities
necessary to create high potential, venture-
ready businesses. The firm also provides funding
through all stages of business creation and
development. IllinoisVENTURES has offices in
Champaign and Chicago.
Research Parks and established companies that benefit from close EnterpriseWorks provides an ideal environment
working relationships with University faculty and for starting a high-growth technology venture
Incubator Facilities students. These research parks provide critical with 24 full wet-labs, furnished office space,
infrastructure space for early-stage companies an extensive array of shared equipment, server
University-associated research parks and that require wet and dry laboratory capacity for co-location facilities, and conference rooms with
incubators at Urbana-Champaign and Chicago product research and development. complete presentation facilities and high-speed
support and nurture the growth of early-stage wireless Internet access. EnterpriseWorks offers
companies, encourage research and development UNIVERSITY OF ILLINOIS RESEARCH many support services for its clients including:
collaboration between the University, private PARK & ENTERPRISEWORKS
industry, and public agencies and attract The Research Park at the University of Illinois Entrepreneur-in-Residence Program:
at Urbana-Champaign provides an on-campus Local experienced technology entrepreneurs
environment where technology-based businesses provide monthly consulting to new startup
can collaborate on research and development ventures and prospective technology
with faculty and students, as well as enjoy entrepreneurs.
University of Illinois access to the campus vast intellectual
resources and research infrastructure. I-Start Professional Service Assistance:
Research Park
The Research Park is now home A matching award program targeted
2013 Three College-Town Incubators to to a range of companies employing to researchers that have a strong potential
Watch by Inc. Magazine many people in high for technology commercialization through
technology careers. new company formation. I-Start offers a suite
of first-year professional startup services for
2011 Outstanding Research Park of the Year by the EnterpriseWorks is a 43,000 new University of Illinois entrepreneurs. This
Association of University Research Parks square foot start-up business includes business development, legal setup,
incubator in the Research SBIR application, bookkeeping assistance, and
Park for early stage tech marketing assistance.
2011 Top Ten Start-Up Incubator to Watch by Inc.com firms. It is owned and operated
by the University of Illinois to NSF I-Corps Site: A public-private
help launch successful start-up partnership program launched in 2013 that
companies. Since the incubator teaches university entrepreneurs to identify
2010 Top Ten Incubator that is Changing
opened in 2003, its incubator valuable product opportunities that can
the World by Forbes.com facilities have become the launching emerge from academic research, and offers
pad for over 145 startup companies. entrepreneurship training to students.
ENTERPRISEWORKS CHICAGO industry experts, and functional specialists will
Additional Resources from EnterpriseWorks Chicago creates a vibrant cultivate new talent and create an environment
EnterpriseWorks Urbana entrepreneurial ecosystem that engages the entire that, in turn, will attract serial entrepreneurs
University of Illinois at Chicago campus, leverages and fill the talent pipeline for emerging
Start-up Caf events with successful University of Illinois system-wide assets, connects technology companies.
company founders resources within and beyond the University to
Allied agency status for companies with support emerging technology companies, and Innovation
the University shares economic benefit with the greater Chicago EnterpriseWorks Chicago will serve as a vehicle for
Research support services from the community and the state of Illinois. innovation, finding commercial potential through
Vice Chancellor for Research company formation and start-up ventures.
CEO roundtable dinners for networking EnterpriseWorks Chicago executes this function
and peer-to-peer support around five pillars of an entrepreneurial ecosystem. Infrastructure
Entrepreneur pro bono legal services EnterpriseWorks Chicago will work to develop
Talent and revitalize incubation offices and laboratory
EnterpriseWorks Chicago will educate facilities, implement training and support
inventors on the business of commercialization programming, and provide an operational
and create entrepreneurial experiences for infrastructure to serve as a hub for a robust
students to develop broader skills. Providing entrepreneurial ecosystem.
access to entrepreneurs-in-residence, mentors,
Networks
EnterpriseWorks Chicago will create
opportunities for entrepreneurs, students,
and inventors to formally and informally
connect to a broader community through
events, exchange engagements and news
of entrepreneurial interest at the city, state,
national and global level.
Capital
EnterpriseWorks Chicago cultivates
funding sources and builds relationships
within the capital community to improve
opportunities and access to capital along the
commercialization continuum.
HTI was funded
through matching
investments
from the Illinois
Department of
Commerce and
HEALTH, TECHNOLOGY, Economic
INNOVATION (HTI) in addition to office space. It will be anchored
As EnterpriseWorks Chicagos flagship program,
HTI brings scientists, clinicians, engineers, and
by a fully equipped meeting and classroom
space with high-definition video conferencing,
Opportunity,
industry together for an interdisciplinary approach recording, and streaming.
to drug, diagnostic, device, and information
technology development. With the support of The facility will provide the infrastructure where
as well as the
University of
the Department of Commerce and Economic technology development work can take place
Opportunity, and Governor Pat Quinn, we are outside of academic labs, with support and access
establishing a proof-of concept facility to validate to professional services, talent, industry networks,
Illinois at Chicago.
commercial viability of health care technologies. and connections to capital sources.
Located in the Illinois Medical District near UICs HTI will serve faculty, staff and students, Chicago
Medical School campus, the new facility will area research institutions, and the broader
house both shared wet and dry laboratory space, entrepreneurial community.
SBIR/STTR Program SBIR funds support research by businesses with
or without academic partners. STTR funds are Federal Agencies
The Small Business Innovation Research (SBIR) also awarded to businesses, but recipients must Participating in SBIR
and Small Business Technology Transfer (STTR) collaborate with a U.S. research institution. The
programs provide qualified small businesses, SBIR/STTR programs are structured in three Each year, 11 federal departments and
including faculty start-ups, with opportunities to phases, the first two of which are supported by agencies reserve a portion of their R&D
propose innovative projects that meet specific SBIR/STTR funds. funds for award to small business through
federal needs. These programs offer more than the SBIR program. These agencies include:
$2 billion dollars annually to support the research Phase I. The objective of Phase I is to determine
and technology development of small businesses the scientific or technical merit and feasibility of Department of Agriculture
across the nation. Awards are based on small the proposed R/R&D efforts. The Phase I period Department of Commerce
business qualifications, degree of innovation, concentrates on the R&D efforts that prove the Department of Defense
technical merit, and future market potential. scientific or technical feasibility of the approach Department of Education
or concept and that which are a prerequisite for Department of Energy
Standard Phase I Process further support in Phase II. SBIR Phase I awards Department of Health and
are for periods of up to six months in amounts Human Services
of up to $150,000. STTR Phase I awards are for Department of Homeland Security
Solicitation Topics periods of up to twelve months in amounts of up Department of Transportation
to $100,000. Environmental Protection Agency
National Aeronautics and Space
Phase II. The objective of Phase II is to continue Administration
the research or R&D effort initiated in Phase I with National Science Foundation
Proposal Submission approaches that appear sufficiently promising
because of Phase I. SBIR Phase II awards are for Q: May a portion of an SBIR award be used
periods of up to two years in amounts of up to to pay for outside services or assistance
from a university or other nonprofit
6 to 9 months
$1,000,000. STTR Phase II awards are for periods

of up to two years in amounts of up to $750,000. research institution?
Evaluation
Phase III. An objective of the SBIR/STTR program Yes. In Phase I, up to one-third of the award
is to increase private sector commercialization of can be used for outside assistance, and in
innovations derived from Federal R/R&D. During Phase II, up to one-half of the award.
Phase III, the small business concern is to pursue
Phase I Award commercialization with non-SBIR/STTR funds.
Both the SBIR and STTR programs have specific eligibility
Federal Agencies criteria for participation.
participating in STTR
Each year, five federal departments and
agencies reserve a portion of their R&D
funds for award to small business or
nonprofit research institution partnerships. Small must fulfill the following Small businesses must fulfill the
These agencies include: criteria to participate in the following criteria to participate in the
SBIR program: STTR Program:
Department of Defense American-owned and independently operated American-owned and independently operated
Department of Energy
For-profit For-profit
Department of Health and Human
Services Principal researcher at least 51% employed by the Principal researcher need not be employed
business, not a full time faculty member by small business
National Aeronautics and Space
Administration Company size limited to 500 employees Company size limited to 500 employees
National Science Foundation
Q: What is the minimum percentage of

research that can be conducted by the
small firm and institution receiving an
STTR award?
Small business must perform at least 40

percent of the work, and research institutions
must perform at least 30 percent. While there is no size limit for a nonprofit research The agencies participating in the SBIR/STTR
institution, the nonprofit research institution must programs have differing requirements for
Q: When are the proposal deadlines? also meet certain eligibility criteria: program involvement, and it is very important
to understand and comply with these individual
Information on solicitations and Located in the U.S. requirements. Each agency publishes a proposal
proposal deadlines can be found at Nonprofit college or university solicitation at least annually. These solicitations
http://www.zyn.com/sbir/. Domestic nonprofit research organization can be viewed on their individual websites
Federally funded R&D center accessible at http://www.zyn.com/sbir/.
Student
E N TR E PRENEURSHIP
The University of Illinois encourages

entrepreneurship among everyone on campus
including students. In fact, the University
offers various programs, courses, competitions,
mentoring opportunities, support programs, and
many other resources geared especially towards
student entrepreneurship.
Note: for more information on intellectual property

created by students, see the earlier section on
student ownership.
Student Entrepreneur Business Plan Competitions
Programs Cozad New Venture Competition: One annually to U.S. colleges and universities
UIUC-enrolled student must be actively in support of technology innovation and
The Student Start-up Initiative by involved in the company to apply. entrepreneurship with a positive social
EnterpriseWorks provides student entrepreneurs impact.
with free space each semester. This space Illinois Innovation Prizes:
is assigned based on competitive proposals awarded annually to students displaying Concept2Venture: This is an annual
submitted by students. outstanding innovation. business plan competition that provides UIC
students with an opportunity to pitch their
NCIIA Grants: With support from The business plans to potential investors and
Lemelson Foundation, the NCIIA awards compete for awards exceeding $10,000.
approximately 2 million dollars in grants
Student Entrepreneurship 37
The Technology Entrepreneur Center (TEC) where students are provided with specialized entrepreneurship basics and network building
is an interdisciplinary program in the College of resources and programming to further their skills. Several workshops are offered each year.
Engineering on the Urbana campus that engages entrepreneurial goals.
faculty, students, and alumni in the practice of Discarded to Precious (D2P) is a competition
entrepreneurship. The center provides students and SocialFuse is a recurring pitching and hosted by the Technology Entrepreneur Center
faculty with the skills, resources, and experiences networking event that brings together students and the School of Art + Design that challenges
necessary to become successful innovators, from a variety of majors and backgrounds and students to transform discarded material into
entrepreneurs, and leaders who are prepared to fuses them together through their skills, ideas, something more useful.
tackle grand challenges and change the world. and entrepreneurial passion. The event begins
with a round of short pitching and idea sharing The Patent Clinic is a joint effort between the
TEC OFFERS: presentations followed by informal networking. TEC and the College of Law in which selected
Innovation LLC was created as a partnership participants from the Cozad New Venture
between University Housing and TEC, Invention to Venture (I2V) is a program of the Competition and the Lemelson-Illinois Student
and is an entrepreneurial living-learning National Collegiate Inventors and Innovators Prize entrants can compete to have their patent
community at Illinois Street Residence Hall Alliance that teaches students technology application drafted for them free of cost.
TEC Facts
100 4,500+ ~1000 $20,000 $110,000 +

Million+ participants in students enroll in TECs was awarded for the awarded in funding
people are impacted TECs programs and courses annually inaugural Illinois and in-kind prizes at the
daily by projects that events annually Innovation Prize 2013 Cozad Competition
began at TEC
Contacts
CHICAGO URBANA-CHAMPAIGN OFFICE FOR THE VICE PRESIDENT

OF RESEARCH
Office of Technology Management Office of Technology Management University of Illinois at Urbana-Champaign
University of Illinois at Chicago University of Illinois at Urbana-Champaign 346 Henry Administration Building
1853 West Polk St., Suite 446, Chicago, IL 60612 Ceramics Building Suite 319 506 S. Wright St., Urbana, IL 61801
312.996.7018 otm@uic.edu 105 S. Goodwin Ave., Urbana, IL 61802 217.265.5440 vpr@uillinois.edu
otm.uic.edu 217.333.7862 otm@illinois.edu research.uillinois.edu
otm.illinois.edu
IllinoisVENTURES IllinoisVENTURES
University of Illinois at Chicago University of Illinois at Urbana-Champaign
312.251.0700 217.239.1950
IllinoisVENTURES.com IllinoisVENTURES.com
EnterpriseWorks Chicago Research Park and EnterpriseWorks

2201 West Campbell Park Drive, Chicago, Il 60612 University of Illinois at Urbana-Champaign
ewchicago@illinois.edu 60 Hazelwood Drive, Champaign, IL 61820
www.enterpriseworkschicago.com 217.333.8324 research-park@illinois.edu
researchpark.illinois.edu
Health, Technology, Innovation (HTI)
2242 W. Harrison Street, Chicago Il. 60612
2013 THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS

ALL RIGHTS RESERVED 3RD PRINTING, AUGUST 2013

2013 - InventorsHandbook For Web

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A HANDBOOK FOR

Inventors & Innovators

2013 THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS

INTRODUCT IO N .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 Patent Application Process............................................................................... 16

STU DE NT E NTREPRENEURSHI P ................... 37

With an annual funded research budget of close to $790

This handbook is an easy-to-use guide to fundamental

The University manages a number of resources

The Bayh-Dole Act LICENSING PREFERENCE

Responsible for the management NON-

terms of the Bayh-Dole Act

Intellectual property is protected by law

Note, however, if the University is the impetus

Copyright ownership and invention ownership

U.S. and Foreign Patent Application Timeline U.S. International

under Patent report indicates indicates individual applications foreign patents

Names: Xerox, Kleenex, Coca Cola,

Copyright & Trademark 19

Transfer PROC ESS

The Offices of Invention

Technology Management to OTM

The Offices missions are to encourage

The Technology Transfer Process 21

Technology Transfer Q&A (Continued)

Finding partners often takes time, since many

Both campuses MARKETING RELATED AGREEMENTS

The Technology Transfer Process 23

20% Other Methods of

The Technology Transfer Process 25

Creative commons licenses are a matrix

Consulting & Intellectual Property 27

Q: What is a start-up company?

A start-up company is a new business entity

Charter (Articles/Certificate of Incorporation)

Have experienced management on board at

Provide a capitalization plan and

IllinoisVENTURES provides guidance to faculty

$1,000,000. STTR Phase II awards are for periods

Q: What is the minimum percentage of

Small business must perform at least 40

The University of Illinois encourages

Note: for more information on intellectual property

Student Entrepreneur Business Plan Competitions

100 4,500+ ~1000 $20,000 $110,000 +

CHICAGO URBANA-CHAMPAIGN OFFICE FOR THE VICE PRESIDENT

EnterpriseWorks Chicago Research Park and EnterpriseWorks

2013 THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS

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