Our FIVE Step Process for Inventors
Disclosure || Assessments + Patents || Marketing || Start-Ups || Licensing
1. Disclose your invention
Fill out the Invention Disclosure Form and return the form to Tech Transfer at 1800 Sherman, #504, Evanston, IL 60201.
According to patent law, publication or public disclosure of an invention negates the novelty requirement. Therefore, it is important to send your Invention Disclosure before any public disclosure is made of the invention.
Tech Transfer is REQUIRED to report all inventions to your research sponsors, whether public or private.
Link to Disclosure Forms
Link to University Policies
Link to Types of Intellectual Property
2. Tech Transfer Assesses Your Disclosure and Decides on Patenting
Tech Transfer will:
- Review disclosures in consultation with you, the Inventor(s)
- Request a literature search from you, the Inventor
- Perform a patent search to determine the probability of meaningful patent protection and the freedom to operate in a commercial setting
- File a patent application if novelty, utility, non-obviousness are met, and if the invention is enabling
Provisional patent applications are usually filed in U.S., and within the first year these are converted to utility patent applications for filing in U.S. and worldwide, as warranted. Legal expenses and other fees for such filings are paid by Tech Transfer.
Link to Patent Law You Can Use®
Link to Inventorship Guide (PDF)
Link to Recordkeeping for Inventors (PDF)
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3. Marketing
Tech Transfer promotes your inventions to industry/investors.
After consultation with you, the Inventor, non-confidential material is prepared for distribution to targeted industry/investors to identify a potential partner for commercialization.
Commercial attractiveness is determined by two considerations:
- The idea must be protectable (e.g., by valid patents or other means), so the company taking the risk and expense of development, seeking regulatory approval, and/or marketing, can control its use (and sale) for the life of the patents or long enough to receive a return on investment.
- The idea must have market relevance large enough to justify investment in development, manufacture, sales and marketing.
Technical details of an invention may be disclosed under a confidential disclosure agreement. If further evaluation of the invention by the company, which often involves direct communication with the Inventor, leads to an interest for development and commercialization, license negotiations may begin. When additional University research is needed to determine the merit of the invention, a research agreement with an option to license may be appropriate.
4. Start-Up Company & Business Development
Interested in starting a new company? Work with Tech Transfer to:
- understand the issues related to University Policies
- prepare a detailed plan
- negotiate the license
- explore financing (federal, angel, venture capital)
- gain referrals to consultants, funding sources and space
Link to Start-Ups
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5. Licensing Deals
A license is an agreement under which the licensor (Northwestern University) grants a licensee (the company) the right to make, use and sell products based on the licensed invention.
The license agreement may be based on patent rights, copyrights, proprietary material, know-how, and/or trademark and it can be exclusive or non-exclusive.
In cases where discussions with industry representatives are necessary before a patent application can be filed, potential licensees often receive the technical details of an invention under a confidentiality agreement, which is executed by Tech Transfer .
Link to More Licensing details
Agreement Negotiation
Although each agreement is unique, there are common steps in every negotiation:
- MEETING: The NU Inventor(s), Tech Transfer professionals and representatives of a potential licensee or industry research sponsor will meet to evaluate common interests. If the parties agree in principle that the innovative ideas are sufficient and the shared goals aligned, this forms the basis for a license term sheet, which begins the negotiations.
- NEGOTIATIONS: These conversations between the parties, which may or may not include the University Inventor, are aimed at reaching a formal agreement. Whether the proposed agreement establishes a license to a Northwestern invention or initiates sponsored research, negotiations focus on the following issues
- term of the agreement
- exclusivity or non-exclusivity
- field of use, territory
- ownership of future intellectual property (IP)
- compensation (such as royalties, license fees, research budget)
- publication rights
- confidentiality of information
- provisions for indemnification, warranty, infringement, termination, and extension.
- AGREEMENT EXECUTION: The final step in the negotiation process is execution of the agreement by the parties concerned.
The entire process can take a few months or a year or more. Patience and perspective are essential to working successfully through all of these steps. After execution of the agreement, institutions and individuals involved can work toward the common goal of developing important and beneficial technologies for public use, receive the recognition and compensation that is due when the technology is successfully developed and products are in the market.
Sponsored Research
In most cases industry-sponsored research represent a commitment by both parties to collaborate in investigating an area of mutual scientific interest. As with any agreement, terms and conditions must satisfy the basic goals of both parties.
Research agreements are executed by the Office of Sponsored Research (OSR). Tech Transfer provides assistance in the review and negotiation of the protection of intellectual property, invention rights, and options to license.
Helpful LINKS outside of Northwestern
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