TOP

Information for Faculty & Inventors

What You Need to Know If You Have an Intellectual Asset with Potential

The University of New Haven is supportive of its faculty and staff in their development of intellectual property and the exploitation of those ideas that show promise for commercialization.

Guidelines and Policies

Faculty Handbook - Conflict of Interest

Faculty Handbook - Intellectual Property

The Process

The technology transfer process ideally begins with a discussion between the technology transfer team and a faculty member interested in exploring the commercial possibilities of their intellectual assets.  When appropriate, select intellectual assets with distinct (potential) commercial value are identified, an invention disclosure form is submitted and a rigorous commercial assessment is performed.  If justified, a commercial strategy is then developed.  Prior to implementation, University of New Haven administration reviews the assessment and commercial strategy to determine if the project meets the threshold for further university investment.  In the event this threshold is met, the commercial strategy is then implemented.  If the threshold is not met, the opportunity is either ‘returned’ to the inventor or ‘parked’ for further research and re-assessment at a later date. 

Key Steps in The Process

When appropriate, select intellectual assets with distinct (potential) commercial value are identified, an invention disclosure form is submitted and a rigorous commercial assessment is performed.  If justified, a commercial strategy is then developed.  Prior to implementation, the University of New Haven administration reviews the assessment and commercial strategy to determine if the project meets the threshold for further university investment.  In the event this threshold is met, the commercial strategy is then implemented.  If the threshold is not met, the opportunity is either ‘returned’ to the inventor or ‘parked’ for further research and re-assessment at a later date. 

The key steps in the technology transfer process are:

  • Blue sky discussion between TT and faculty innovator
  • Communicate discovery
  • Assess commercial feasibility  
  • Advance stage of development with internal resources as much as possible
  • Develop commercial strategy
  • Obtain appropriate University of New Haven approvals to pursue project (including a patent budget)
  • Secure IP Protection
  • Implement commercial strategy (e.g. source and secure commercial partner)
  • Execute agreement(s) with partner (e.g. option, license, sponsored research)
  • Manage partnership
  • Ensure revenue sharing is followed in accordance with IP policy.  See Faculty Handbook - Intellectual Property

Roles and Responsibilities

Successful technology transfer depends on University of New Haven administration, TTP personnel and inventors fulfilling certain Roles and Responsibilities.

Roles and Responsibilities of Stakeholders TTP Faculty 
Completes research update questionnaire on quarterly basis   x
Communicates discoveries and/or potential projects on a timely basis    x
Maintains proper laboratory books   x
Provide regular educational opportunities so faculty is knowledgeable about technology transfer and IP issues x  
Alert University of New Haven and TTP of impending public disclosure well in advance    x
Assess research programs from a commercial prospective interest x  
Faculty – TTP dialogue about promising developments x x
Assess investibility and provide feedback for submitted concepts x  
Faculty submit completed invention disclosure form   x
Initial commercial assessment performed (unmet need, market, IP, investibility) x  
Provide feedback to faculty.  Discuss “go,” “no go,” or “not yet” thoughts x  
Develop preliminary report for review and discussion x x
Prepare Recommendation for IP Committee consideration (include overall commercialization plan with budget and investibility analysis  x  
Complete administrative requirements (e.g. iEdison, IIA, Sponsor rights, etc.) x  
Prepare non-confidential information for distribution x  
Engage patent counsel to implement patent plan x  
Assist counsel with patent application and prosecution x x
Sign documents required for patenting and licensing   x
Provide copies of references and supporting material for patent prosecution   x
Continue research to support patent and proof of concept studies (if able)   x
Pursue commercialization plan x  
Participate in due diligence with prospective partner x x
Negotiate Option/License Agreement x  
Attract venture capital for new venture projects x  
Provide feedback to faculty on status of commercialization x  
Sign deal acknowledgement form   x
Sign agreement x  
Prepare deal summary document for proper internal tracking x  
Facilitate “transfer” of technology from University of New Haven to licensee, as appropriate x x
Monitor license agreement, pay ongoing patent maintenance fees, distribute net income in accordance with University of New Haven policy x  

Guidelines for Faculty Consulting with Private Companies

Consulting by University of New Haven researchers with corporate firms can be a win-win situation, provided the activity is undertaken with care and attention to the consultant's existing commitments to the University of New Haven and his or her obligation to abide by University of New Haven policies and procedures.

Below are some suggested guidelines:

  • Companies which enter into private consulting agreements with University of New Haven researchers should be aware of the policies and procedures which govern such arrangements
  • Consulting is a private matter so the consultant should seek independent legal advice and not rely on University of New Haven attorneys or administrators to guide him or her in deciding whether to enter into a consulting relationship
  • Faculty are responsible for making sure the activity does not conflict with conflict of interest, conflict of commitment and other relevant policies of the University of New Haven
  • There should be no use of University of New Haven resources, other than those generally and freely available to the public, in the performance of the consulting responsibilities including use of funds, personnel, equipment or facilities
  • Consulting arrangements must not be used to conduct what is essentially sponsored research
  • Consulting activities must not result in the transfer of University of New Haven intellectual property assets into the client company, i.e., the default is that inventions are the University of New Haven’s and the consulting agreement should clearly distinguish instances where inventions are owned by the company
  • In certain circumstances, in order to manage potential conflicts of interest, inventions made by the consultant should be owned by the University of New Haven and made available to the client company via a licensing agreement

Contact Us

Stuart Sidle, Associate Provost
ssidle@newhaven.edu