1.) Invention Disclosure Form
Complete the confidential invention disclosure form, print and sign it, submit it to your Department Chair and Dean/Director for signature, and send it to the Office of Technology Transfer at the address below. For information about who to list as an inventor, please see the Inventorship and Ownership page.
Office of Technology Transfer and Economic Development
University of Hawai‘i
2800 Woodlawn Drive, Suite 280
Honolulu, HI 96822
Phone: (808) 539-3817
Fax: (808) 539-3833
The invention disclosure is logged-in and assigned an OTTED number upon receipt. The disclosure creates a record of the invention, the inventor(s) involved, who sponsored the work, and any public disclosures and publications that have been made.
2.) Invention Review
After reviewing the disclosure, the Office of Technology Transfer Manager will assign it to a Licensing Team which will be responsible for all further actions relating to the invention. The Licensing Team will contact you to schedule a time to meet with you to discuss the invention and make a preliminary determination of licensing feasibility, novelty, potential applications, and possible markets.
3.) Review by Patent and Copyright Committee to
Determine Title and Inventorship
If ownership of the invention or inventorship is at issue, the disclosure will be submitted to the University Patent and Copyright Committee (PCC) by the Licensing Team for immediate review. If necessary, the Chairman of the PCC will schedule a meeting to provide you with an opportunity to meet with the Committee and answer questions relating to the invention. The PCC will evaluate the circumstances surrounding the development of your invention and make recommendations to the University on ownership and inventorship issues.
4.) Patent Protection
If there is no question that your invention was developed using University of Hawai’i personnel, equipment or facilities, the Licensing Team will file a US Provisional Patent Application, if appropriate, to protect the technology and any federal or private sponsors of research that led to the invention will be notified of your disclosure. If the invention is clearly a "breakthrough" discovery with substantial commercial promise, the OTTED will immediately apply for a US Utility Patent. At the same time, the Licensing Team will begin to actively market the invention to industry.
5.) Development of a Preliminary Licensing Strategy
A preliminary licensing strategy will be developed and a list of target industries and companies will be identified. Your suggestions of companies and industrial contacts to be approached will be extremely valuable in this effort. A non-enabling abstract of the invention will be sent to contacts in targeted companies along with information about the advantages and applications of technology. If a company shows interest in the invention, the contact will be asked to sign a Confidentiality Agreement (CA) on behalf of the company.
Upon receipt of an executed CA, complete information about the technology will be provided. Company scientists, engineers and other representatives will be put in direct contract with you to discuss the invention and your continuing research in the area. The company may be invited to tour your laboratory and meet with you, or you may be asked to visit them in their offices. If they show continuing interest in the technology, license negotiations will begin and a license proposal will be prepared. Negotiations between the University and company will follow requiring flexibility and creativity by both parties in order to arrive at a mutually satisfactory agreement.
6.) Licensing Your Technology
If negotiations with the company are successful, a Licensing Agreement will be finalized and signed, which marks the beginning of a long-term relationship between the company and the University. The licensee's performance is monitored by the Licensing Team for the duration of the license through periodic financial and/or development reports. Also, support for further research into the technology is often provided by the licensee in a separate Research Agreement. Most licenses include terms for the payment of fees and royalties on sales of products that use the technology, but many alternate arrangements are possible, including those in which the University receives equity in a company in exchange for a technology license.
All royalty and other payments from the licensee are collected are distributed as follows: any direct expenses, such as patent costs, are deducted; the net royalties are then divided according to Systemwide Executive Policy E5.500: Administration of the Patent and Copyright Policy and relevant Collective Bargaining Agreements.
7.) Evaluation of the Results of the Marketing Effort and
Release of the Technology
After reviewing feedback from potential licensees that were targeted, the Licensing Team will evaluate the results of its commercialization efforts. If OTTED has been unable to license the technlogy, but there appears to be significant commercial interest in it, the Licensing Team will file an application for a US Utility Patent and continue marketing the technology.
If OTTED has been unable to license your invention to industry or there appears to be little or no commercial interest in the invention, title to the invention and interest in the patent application will be released to the inventors for you to exploit on your own outside of the University.
If you elect to take title to the invention, you will be asked to reimburse the University for its direct patenting and marketing expenses to date, should you subsequently license the invention yourself or start up your own company to exploit the technology. You will also be required to protect the University from any liability arising from the technology itself or your efforts to commercialize it on your own.