Office of Innovation and Commercialization

Technology Transfer

UNCW's intellectual property (IP) is something that the OIC strives to develop and protect. Intellectual property includes not only "patentable" technologies and designs, but also software, integrated solutions, databases, trademarks, and other potentially valuable knowledge (called "non-patentable intellectual property, or "NPIP" in UNCW Policies). Not surprising, there are a number of rules, procedures, and policies that must be followed by the UNCW Community when it comes to intellectual property. These procedures are driven not only by UNCW policies, but also by the requirements to obtain IP protection in the U.S. and internationally. When a faculty or staff member thinks they have a patentable technology or an NPIP the starting point is "disclosure". This "record of invention" triggers the required evaluation process by the OIC. Please submit all dsiclosures to oic@uncw.edu.

NOTE TO UNCW INVENTORS AND INNOVATORS: Public or non-confidential disclosure or sale (or offer for sale) of intellectual property (IP), particularly the "enabling elements" of the IP, prior to obtaining protection will seriously jeopardize our ability to obtain appropriate IP protection. The UNCW process provides timely evaluation and necessary protection. In cases where meeting these time requirements is not possible, please contact the OIC immediately for advice and guidance. Public disclosure includes publication of the "enabling elements" in a manuscript in a printed or online journal, poster board at a conference, a presentation to an audience that describes the nondisclosed inventions (including class-room lectures), and a description to individuals or groups about the technology without an appropriate non-disclosure agreement (NDA). The key issue is publication of the "enabling" information.

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Technology Transfer Process

UNCW's Technology Transfer process involves a number of different stages. They are:

Step 1: Invention - Developing a technology that might result in a patent (IP), or a solution to a problem that involves university derived knowledge, a database, software, application or anything else that involves "non-patentable" intellectual property (NPIP).

Step 2: Disclosure - Once an IP or NPIP is at a stage where it needs to be protected, or has commercial potential, it needs to be disclosed. UNCW has forms for both IP and NPIP.

Step 3: Technology Assessment - Once disclosed, the OIC and designated committees will examine the IP, and decide what to do. This could be to revert the ownership back to the inventor, to support additional developmental research, or to actively protect the IP.

Step 4: IP Protection - Depending on the IP, UNCW can take different approaches to IP protection, including filing for a patent, filing for a provisional patent, filing for copyright or trademark protection, arranging non-disclosure agreements, or treating the IP as a trade secret.

Step 5: Deciding How to Commercialize the IP or NPIP - This can be through licensing to other firms, by forming a firm to "spin-out" the technology, by developing joint ventures with existing firms, or by selling the technology or solutions through different mechanisms.

Step 6: Supporting the Commercialization - UNCW, and the OIC, is committed to supporting the commercialization process. This includes seed stage financing, business mentoring, market research, grant writing assistance, networking, incubator space through the Center for Innovation and Entrepreneurship, and other resources depending on the situation.

Disclosures and Inventions

In general, for Faculty, EPA-Non Faculty and SPA Employees anything developed within the work environment that is "patentable" is "owned" by the University and must be disclosed and evaluated. In addition, NPIP, such as software, integrated systems, databases, pedagogical tools and resources, and by-products from research that have commercial value are also "owned" by the university. These should also be disclosed to UNCW for evaluation. And in some cases, so are creative works (books, artistic works) that have involved "exceptional use of institutional resources". We have created a fillable disclosure process for both patentable IP and NPIP (see below).

Disclosure creates a "Record of Invention", and also triggers a formal review process. The OIC is committed to a timely review (within 3 months) of disclosed IP. Several things can happen. For patentable IP, the UNCW IP Committee can take a "wait and see" as the technology is developed further, they can file for a provisional patent, they can file for a utility or design patent, they can file for international protection, or they can revert ownership of the IP back to the developer. For NPIPs, several approaches are available, ranging from copyright protection, trademark protection, developing a term sheet with the developer outlining future responsibilities and obligations, and recommending further development toward commercialization.

IP Policies and Procedures

UNCW's intellectual property policies and procedures are designed to provide appropriate protection in a timely manner, but also to encourage and facilitate moving UNCW's creation of knowledge into the public realm. UNCW's IP policy is based upon UNC system wide policies, "best practices" at other public universities, and the unique characteristics of the UNCW environment.

Every faculty and staff member within the UNCW community who is working on projects that might result in patentable IP, non-patentable IP (NPIP), or anything with commercial potential, should be familiar with UNCW IP Policies and Procedures.

In general, for Faculty, EPA-Non Faculty and SPA Employees anything developed within the work environment that is "patentable" is "owned" by the University and must be disclosed and evaluated. In addition, NPIP, such as software, integrated systems, databases, pedagogical tools and resources, and by-products from research that have commercial value are also "owned" by the university. And in some cases, so are creative works (books, films, etc.) that have involved "exceptional use of institutional resources".

The UNCW IP Policy and a UNCW Copyright Ownership Policy Table are provided. UNCW IP Policy also defines how royalties, payments, and receipts are allocated.

Patents and Procedures

Patents provide a means to encourage the development and utilization of discoveries and inventions. A policy has been established to ensure that those inventions in which the university has an interest will be utilized in a manner consistent with the public good through patents, licenses, or otherwise. The university is also aware of the value of patents in directing attention to individual accomplishment in science and engineering. Where possible, the university should make inventions resulting from its research available to industry and the public on a reasonable and effective basis and, at the same time, provide adequate recognition to inventors. Patents and their exploitation, however, represent only a small part of the benefits accruing to the public from the research program of the university.

The university is dedicated to instruction, research, and extending knowledge to the public (public service). It is the policy of the university to carry out its scholarly work in an open and free atmosphere and to publish results obtained there from freely. Research done primarily in anticipation of profit is incompatible with the aims of the university. The university recognizes, however, that patentable inventions sometimes arise in the course of research conducted by its employees and students using university facilities. The Board of Trustees of the university has determined that patenting and licensing of inventions resulting from the work of university personnel, including students, is consistent with the purposes and mission of the university.

Selling Products or Services to External Customers

Oftentimes groups of faculty, or individual faculty, provide products and/or services to customers outside the UNCW community for a fee. Often times these are very small scale. But if these efforts use university resources (other than e-mail, telephone, etc.) such as labs, room space, or equipment, this constitutes "selling goods and services to external customers".

The OIC wants to assist and expand these commercial efforts. These efforts are good for the university and good for the public. However, there are many policies and rules that must be followed. The major issues are generally related to contracts, pricing, potentially hazardous material, payment, and selling internationally.

Contracts must be approved by the UNCW contracts office. Pricing needs to be approved in order to support various Federal Laws and overhead audits for grants. Selling internationally may involve "expert control" issues. Payment for the products or services needs to go through approved mechanisms at UNCW. And there are always risk management and insurance issues. Some types of selling may be very low risk, while others have a high risk profile and need higher level approvals.

When selling products and/or services to outside customers, the starting point is to contact the UNCW Contracts Office and the OIC.

Other Forms and Agreements

Not surprisingly there are a lot of different forms and agreement that are available to assist in the technology transfer process.

These include IP and NPIP disclosure forms which trigger a formal evaluation process at UNCW.

Other important forms are related to limiting "publication" of IP. Remember that "publication" can severely limit the ability to obtain IP protection. A standard way of protecting IP when you want to talk about it, or disclosure the technology to others, is the use of a "Non-Disclosure Agreement" (NDA). We have included a sample NDA, but NDAs are so important (and a legal document) that if you have any questions talk to your Supervisor, the OIC or an OIC liaison. See Policies and Forms for other useful forms and agreements that you might be interested in depending on your type of IP or stage of development.