| The Commercial Ventures and Intellectual Property (CVIP) within the Office of Research and Development (ORD) is responsible for protecting, marketing and licensing all University of Maryland, Baltimore (UM) intellectual property (IP). Our processes for meeting these responsibilities fall within 6 major “activity” categories: Disclosure Review, Evaluation, Tracking and Reporting - Documentation/Recordation of Inventions disclosed by UMB faculty and staff
- Filing and updating reports required by federal sponsors of research project(s) which led to the invention(s)
- Reporting
- Evaluation of Patentability, Market Size, Market Interest and Encumbrances associated with each invention
- Evaluation of Science by CVIP and the Scientific Review Committee (SRC -- comprised of faculty and staff from various UMB Schools)
- Tracking and reporting of information for inventions accepted for marketing by TEC-COM
- Return of incomplete, unpatentable inventions and release of rights for unaccepted inventions to the inventors
Protection of Intellectual Property
- Managing public disclosures of confidential information and ensuring IP rights are not lost through scientific or other publications and/or presentations
- Resolving inventorship issues
- Working with inventors to ensure that a suitable IP plan is developed and maintained
- Drafting, filing and prosecuting patent, trademark and copyright applications
- Working with outside patent counsel to draft, file and prosecute patent, trademark and copyright applications
Marketing & Business Development
- Working with inventors to develop contact lists and marketing plans for their inventions
- Preparing letters for initial marketing efforts and making follow up telephone calls to determine level of interest for potential licensees
- Presenting/describing inventions and research opportunities to potential licensees
- Providing opportunities for PI presentations to potential licensees (companies, VCs & other potential investors)
- Negotiating business terms with potential licensees
- Working with inventors, outside investors and managers to develop plans for start-up companies
Licensing
- Negotiating, drafting and finalizing contract language for all agreements related specifically to UMB intellectual property
- Preparing Inter-institutional Agreements (IIAs) and Memoranda of Understanding (MOU) for establishing cooperative licensing activities when IP is co-owned by UMB and other institutions or non-corporate entities
- Preparing option agreements for companies willing to pay a fee to reserve exclusive rights to UMB invention(s) while evaluating the scientific merits and business advantages of executing a license agreement
- Preparing license agreements with or without associated sponsored research agreements
License Compliance
- Tracking licensee progress against business plan schedules and objectives, including research and financial objectives
- Ensuring that UMB, our licensees and other UMB business partners comply with terms as specified in IIAs, MOUs, option and license agreements
- Preparing and negotiating license, IIA, MOU and option modifications and amendments
- Tracking and accounting for all patent expenses, license fees, milestone payments, royalties and disbursements to inventors
Back to top | |
