Technology Transfer at the University of North Florida

1. Management of UNF's Intellectual Property

The Office of Research and Sponsored Programs (ORSP) facilitates the identification, protection and promotion of intellectual property (IP) at the University of North Florida . Through marketing and licensing activities, ORSP brings technology forward to public use and for the benefit of the inventor, the University, and the community. Income is generated for both the inventor and the University through licensing agreements, and ORSP encourages agreements with local and regional companies.

With a reputation for excellence, faculty members at the University of North Florida have demonstrated a capacity to integrate innovative research activities with a commitment to teaching that is at par with the best liberal arts colleges in the nation. In addition to its excellent undergraduate programs, UNF is expanding its graduate programs in selected areas of local and regional relevance. Growth in faculty research has resulted in a number of excellent research products with distinctive IP contents. ORSP administers the University's IP policy, facilitates the legal protection of IP and manages the technology transfer process. ORSP assists researchers in documenting and processing applications for copyrights and patents, and is the institutional negotiating and licensing agent for the commercialization of UNF-owned Inventions and Works. The University of North Florida encourages interested partners, including entrepreneurial members of our faculty and the local venture capital community, to establish start-up ventures based on UNF's portfolio of technology.

2. Policies

The policies that govern intellectual property at the University of North Florida include (a) the Patents, Copyrights, Trademarks and Other Intellectual Property policy, which covers all students, out-of-unit faculty and staff, and (b) Article 25 of the Collective Bargaining Agreement (CBA) between the University's Board of Trustees and the United Faculty of Florida, which governs in-unit members of the faculty. Both documents provide UNF's definitions of intellectual property, set out the University's policy on the ownership of intellectual property, and establish the procedures for the identification, disclosure, and assessment of University interest in IP developed by University personnel. The Patents, Copyrights, Trademarks and Other Intellectual Property policy establishes the distribution of proceeds from IP between the University and the relevant students, faculty and staff. This provision for compensation is incorporated by reference in Article 25 of the Collective Bargaining Agreement.

3. ORSP Services

Guidance to faculty, students and staff on IP protection and Commercialization
Evaluation of IP disclosures for technical and commercial potential
Facilitation of the legal protection of IP
Management and marketing of UNF's IP portfolio
Linking private sector businesses with UNF's applied research centers
Developing collaborative research partnerships with industry
Facilitation of the development of technology-based start-up
Negotiation and execution of IP-related agreements including:

Sponsored Project Contracts with Industry
Licensing Agreements
Confidentiality Agreements
Materials Transfer Agreements
Collaborative Research Agreements

4. Technology Transfer Processes and Procedures

a. Overview: Technology transfer may be viewed as a process through which knowledge developed in the research and creative endeavors of faculty, staff and students is disseminated for application and commercialization in the community at large. From this perspective, technology transfer is an aspect of community engagement, a value to which UNF is firmly committed. Although the University's mission of teaching (dissemination of knowledge), research and service, encompasses technology transfer, the full commercialization of IP frequently demands a commitment of significant financial investments and the assumption of risks beyond what may be appropriate for the institution. Successful transfer of technology from the University therefore requires partnership with the private sector. UNF's IP is normally transferred to the private sector under licensing agreements that enable companies to develop new or improved products and services for the enhancement of the quality of life in our communities. Intellectual property, in the context of this overview, includes patents, copyrights, trademarks and trade secrets. The Association of University Technology Managers (AUTM) provides additional information for those interested in further exploring different aspects of technology transfer: About Tech Transfer - http://www.autm.net/aboutTT/index.cfm

The technology transfer process is complex and requires a commitment of financial resources before the commercialization phase. The Office of Research and Sponsored Programs invests in this process in order to recognize discoveries made at UNF, comply with federal regulations, encourage the efforts of our talented faculty, engage the industrial segment of our community, contribute to local economic development, and support faculty research and the education of our students through revenue derived from this activity. Florida Statute 1004.23 empowers the University to "secure letters of patent, copyrights, and trademarks on any work products and to enforce its rights therein."

Technology transfer is founded on research expertise and capabilities that yield intellectual property with commercial potential. Such intellectual property arises from research and scholarly work supported by the federal and state governments, industry, nonprofit organizations and/or the University. The technology transfer process begins with the faculty, staff or students filing an invention disclosure with the ORSP. The Office of Research and Sponsored Programs, with the assistance of UNF personnel knowledgeable in the disclosed technology area and under a written nondisclosure agreement , evaluates the disclosure for technical and commercial potential. Depending on the outcome of the evaluation, a decision is made regarding the University's interest in the disclosed intellectual property. If the University does not choose to assert its interest, or decides to withdraw from the process, the University notifies the disclosing individual(s) in writing that it will not assert its rights in the disclosed intellectual property. The disclosed invention or work is then returned to the inventor(s).

If the University intends to assert its interest in an intellectual property, the University notifies the disclosing individual(s) of its intent to assert its interest, and enters into a contractual agreement with the disclosing individual(s) to assign the IP to the University and to confirm the terms for the distribution of revenue from the marketing of the IP, consistent with applicable University policies. The University subsequently makes a decision to protect the technology by appropriate legal means. If it is unable to protect the IP, the University returns the IP to the inventor(s).

Simultaneous with the decision to protect an IP, ORSP begins marketing the technology as the next step in linking the technology with partners in the relevant industry. A successful marketing process would result in the identification of a partner with whom to negotiate and execute an appropriate business agreement. This collaborative partnership with the private sector initiates the commercialization process. The most common means for collaborative partnership is through licensing the technology to a company that makes an investment in its development, production, and marketing, within a specified geographic region.

Licensing income and revenue generated from the royalties are distributed as incentives to the inventor(s) and as reinvestment in research, in accordance with the University's Patents, Copyrights, Trademarks and Other Intellectual Property policy and the provisions of the current Collective Bargaining Agreement between the University's Board of Trustees and the United Faculty of Florida.

b. Process Chart: This chart gives a schematic presentation of the current technology transfer process at UNF.

c. Reporting on Invention or Works

The first step in reporting a novel idea or concept, as an invention or work, is to fill out and submit to the Assistant Vice President for Research an Invention Disclosure Form , which can be found on the ORSP web site. The form also may be obtained directly from ORSP (Building 3, Room 2501). The form requests information to be used in evaluating the invention or work. This disclosure is confidential and will remain so until the process for filing for patent or copyrights is complete.
The University will review the disclosure forms and advise the individual(s) submitting the disclosure if further information is needed in order to assess whether it will assert its interest in the intellectual property. Once the University receives all necessary information to make its assessment, the University will notify the disclosing individual(s) in writing that it is beginning its assessment process.
Following this notification, the University, within 120 days, will advise the individual(s) in writing whether it will assert its interest in the IP. The University may use internal expertise or seek the assistance of outside entities in assessing whether to assert its interest in the IP. Should an outside entity require further information from the disclosing individual, the individual shall provide the requested information to the University as quickly as possible. Should the disclosing individual(s) delay in providing the requested information, the University's assessment period will be extended commensurate with the length of delay of the disclosing individual(s) in providing the requested information. Each review, internal or external, will be done under a confidential non-disclosure agreement with the reviewer.

Related Records and Publications

It is important that inventors pay attention to the following important details that are pertinent to the protection of IP:

There should be a careful record of all the work leading to an invention, preferably in one or more bound notebooks or secure electronic database. These records should be dated, signed by the inventor(s), and countersigned by a witness. In the event of a challenge to claims of priority of invention, these documents could prove invaluable.
Inventors should refrain from discussing the invention or publishing (making public) information on the invention until the Invention Disclosure Form has been filed. In particular, the invention should not be submitted for publication or presented at a scientific meeting prior to the disclosure. Publication of information about an invention may place the invention in the public domain, thereby defeating the effort to obtain patent protection.
Placement of a student's thesis or dissertation on the shelves of the University Library amounts to the publication of the information contained therein and will place the information in the public domain. The Assistant Vice President for Research and the Dean of the Graduate School, in consultation with a student, relevant faculty, departmental chair, and college dean, may withhold a publication for a period of up to three months (after acceptance of a thesis or dissertation) to enable the protection of an intellectual property in a thesis or dissertation.

5. Research Collaborations and Partnerships

The Office of Research and Sponsored Programs facilitates the linking of UNF research expertise and capabilities with private sector businesses and public entities for the development of technology and the provision of services that are consistent with University mission and goals. Research collaborations and partnerships enable public organizations to improve their processes and services to the community. They similarly enable businesses to advance their technology platforms, create competitive products, and offer value-added services. Private sponsorship for research and training at UNF not only supports the University's community engagement objectives, it allows businesses to leverage University research expertise and capabilities to develop products and services for public good. All research collaborations and partnerships are conducted under appropriate, mutually approved agreements to protect the rights and obligations of all parties.

Private sector collaboration and partnership may arise from a number of situations including, but not limited to, the following:

A company has a concept but the path to development is not clear or well defined and the company needs University research expertise to clarify and define the path to development.
A company and the University have similar concepts and agree to the joint development of the concepts.
The University and a company approach one another because of similar interests in finding solutions to specific problems.
A company approaches the University with a specific problem, seeking a solution that requires the research capabilities of the University.
The University approaches a company to develop and commercialize an IP.
The University approaches a company with an idea, a concept, or a potential solution appropriate to the solution of a problem.

Intellectual property developed in a collaborative research with a company is subject to negotiation between the University and the company. Florida Statutes 1004.22(2) provides for confidentiality of information related to the "methods of manufacture or production, potential trade secrets, potentially patentable material, actual trade secrets, business transactions, or proprietary information received, generated, ascertained, or discovered during the course of research conducted within the state universities."

UNF personnel planning research collaborations and partnerships with private sector businesses are encouraged to contact ORSP for assistance in developing agreements to support related activities. In order for an agreement to be binding on the University, it must be signed by a duly authorized University representative.