OTD's Decision Making Process
MCW evaluates inventions based on two distinct elements, 1) intellectual property and patent merits, and 2) license potential.
The patent evaluation considers the type of patent claim likely to be obtained, the option on filing foreign patents, whether a patent can be effectively enforced, the cost of obtaining a patent, and the existence of any administrative problems that could complicate the case. The decision to patent also takes into consideration the licensing potential of an invention. Patents are expensive, costing upwards of $20,000 in the U.S. and perhaps 5X more in foreign countries. The Office of Technology Development (OTD) must be able to recoup these costs.
The licensing evaluation considers the likely return on OTD's time and capital investment into a project. General considerations include the likelihood and straightforwardness of licensing, the need for further research and development, and the future product's commercial potential in existing markets. For example, a therapeutic discovery might be technologically advanced and highly patentable. However, if companies aren't willing to license the invention because of competing technologies, difficulties in manufacturing, or costly clinical trials, then OTD may not elect to take on the project.
If the MCW Office of Technology Development (OTD) declines to pursue the patenting and/or licensing of an invention, rights can be reverted to the inventor(s) who would be free to patent and commercialize the invention on their own, subject to the rights of third parties such as the NIH. Refer to MCW's Patent and Copyright Policy.
If OTD accepts an invention, OTD assumes all costs related to marketing and licensing the technology. Successfully patenting and licensing an invention requires the assistance of the inventor(s). Willingness to provide follow-up information and to work with potential licensees, all play a vital role.