Faculty/Staff Startup Guide for technology-based businesses: Making the transition from research to a commercial enterprise.

Main Overview
Business Development
Technology Development
Intellectual Property
ISU Administrative Responsibilities
Startup Guide (PDF)

Intellectual Property

Overview

Intellectual property is a key component of a successful technical start-up company. Intellectual property includes patents, copyrights, and proprietary materials, such as biological materials and software. The Office of Intellectual Property and Technology Transfer/Iowa State University Research Foundation (ISURF) works with you to evaluate university-generated technologies, seek appropriate protection, and provide the start-up company with the rights necessary to commercialize the innovation.

Facilitators

Ken Kirkland
ISU Research Foundation
310 Lab of Mechanics
Phone: 515-294-4740
Email: kenk@iastate.edu

Nita Lovejoy
ISU Research Foundation
310 Lab of Mechanics
Phone: 515-294-4740
Email: nlovejoy@iastate.edu

Assistance Provided to Start-Ups

ISURF works with inventors to identify, develop, and maintain a protectable patent portfolio. They help authors and researchers who develop software, germplasm, biological materials, or other proprietary materials to identify appropriate means of protection. ISURF provides referrals for start-up companies to select a patent attorney; offers up to $5,000 for consultation with attorneys and other professionals; and provides up to $25,000 in seed funding for further development at ISU of disclosed technologies that have commercial potential.

Protecting the Technology

ISU faculty and staff are required to disclose a detailed description of the inventions and proprietary materials, including software, that result from their research or other university supported activity. ISURF will assist you in the disclosure process, including the completion of an intellectual property disclosure form, located at www.techtransfer.iastate.edu.

It is important that the description be disclosed to ISURF as soon as you think that your research results may be unique. Publications, presentations, and distribution of tangible materials may cause the loss of intellectual property rights. Consequently, an early review and discussion with ISURF is an important first step in the protection process.

Once a technology is reported to ISURF, a due diligence process is begun.  ISURF reviews all documentation associated with the discovery and development of the invention to determine ISU’s rights and responsibilities. ISURF then conducts a commercial viability review that is shared with you.

Licensing Intellectual Property

It is important to recognize that as an inventor, author, or developer of proprietary materials you will not own the intellectual property or proprietary materials. First you must obtain rights from ISURF to utilize the technology for purposes other than your research and teaching at ISU.

A license is an agreement in which ISURF (the licensor) grants the start-up company (the licensee) permission to use intellectual property owned by ISURF. A license may be exclusive or non-exclusive. An exclusive license prevents ISURF from licensing the intellectual property to others. Intellectual property licensed non-exclusively can be licensed by multiple parties.

Other agreements might be utilized during your technology review process to assure that intellectual property and other rights are not lost. These include confidentiality, material transfer, and option agreements. These agreements provide limited, non-commercial rights for you to analyze information and materials.

A license is not automatically granted. The company must demonstrate its ability to bring the technology to market in a manner consistent with ISURF’s mission, university policy, and in many instances federal law to ensure that the technology is used for the public good. ISURF requires start-ups to have a business plan, including market research, a capitalization plan and a management plan, to assist in determining whether to proceed with license negotiations.

Further Technology Development

As your company grows and begins to further develop the intellectual property, ISURF/OIPTT will continue to help you with intellectual property protection, including ongoing prosecution of patents and patent strategies. In addition, if new technologies are developed, ISURF/OIPTT will assist in determining if the inventors are ISU employees, company employees, or both.