Assessment and Strategy Development

Once you have disclosed your invention to CTL, the next step is to work with a licensing officer to explore its market or commercial potential. You and your licensing officer will work together to review the following key issues, among other factors, that affect the assessment of the invention:

The results of the assessment will be analyzed with CTL's missions in mind, which are 1) to turn Cornell ideas into products to serve the public good; 2) to secure a reasonable return for Cornell; and 3) to leverage research results for regional economic development.

The decision on how to move forward with the invention will be made by the executive director of CTL, based on the recommendations of the licensing officer. The licensing officer may consult with entities in industry such as CTL's Industry Advisory Group (IAG) when formulating the recommendation. It is important to note that CTL will try to do what is best for each technology to advance the university’s missions and interests. What may be best for each invention may be very different since it will depend on (i) the stage of development of the invention, (ii) the market need it may fulfill, (iii) the status of competing inventions that may fulfill the same market need, (iv) the patent eligibility and feasibility for enforcement of the invention, (v) the potential financial risk/return for the university investing in the invention, and last but not least (vi) whether there is one or more potential industry partner to help develop and commercialize the invention.

Review

The review will result in placing the invention in one of three status categories:

An "active" invention will continue to the next phases of the process as described below. An invention “in abeyance” may become “active” as requirement for additional information is met. An invention that is “closed” may become active again as new information (including data from the inventor or other researchers) or market opportunities emerge to warrant a change in its status categorization.

Closing A File

There are many reasons to Close the file for an invention. For example, the lack of patent eligibility or the patent eligibility is too narrow in scope to have significant commercial value. As most inventions require investment to be turned into commercial products or services, and as private investors often require the exclusivity that a patent provides, the lack of patent eligibility or scope can mean that there is no commercial path to develop the invention into useful products or services. Another reason CTL might close a docket, is that there is no market need for the invention -- other solutions exist for the problem that the invention solves and the new invention does not provide clear advantages over the existing methods. Yet another reason, could be that the potential market is too small to attract investors to develop a product. These are just a few possible reasons - if CTL decides to close the case, the licensing officer will discuss the reasons with the inventor.

Disagreements

If an inventor disagrees with CTL's decision to close the file of an invention, CTL does provide the inventor with two options, as follows, to keep the invention under active management:

  1. A faculty inventor may enter into a Memorandum of Understanding (MOU) with CTL, agreeing to reimburse CTL all on-going patent costs from one or more of his/her discretionary spending accounts at the university. The MOU will additionally provide for the conditions that (i) CTL will continue to actively protect and market the invention to potential industry partners; and (ii) if and when CTL manages to license the patent right to one or more licensees, the spending from the discretionary spending account(s) will be reimbursed from the licensing revenues prior to any disbursement under Cornell Policy 1.5; or
  2. The inventor (individually, or as a group,) may license the invention from CTL under a special Inventor Grant Agreement. The Inventor Grant Agreement, in short, will be free of any fees but the inventor(s) agree(s) to (i) reimburse all future patent costs as they are incurred; (ii) share with CTL a negotiated percentage of any income that may be generated with the licensed invention; and (iii) when a certain level of cumulative income is generated, reimburse CTL of all past patent costs.

In the event that an enabled invention is not subject to any sponsored project rights or restrictions, inventors can request reassignment if the case meets the conditions described in Policy 1.5 "Inventions and Related Property Rights" in the Ownership of Inventions section (https://www.dfa.cornell.edu/sites/default/files/policy/vol1_5.pdf), and CTL will reasonably consider such a request.

If the inventor elects not to pursue any of the options, the file for the invention will be closed.