Commercialization Guide Office of Innovation and Economic Development Table of Contents Overview

What is commercialization? About the Office of Innovation and Economic Development (OIED) Commercialization, writ broadly, leverages university Overview 1-5 research power to solve real-world problems. When UMaine’s OIED works across disciplines and through most people think about commercialization – also strategic partnerships to leverage University of Maine IP Commercialization 6-21 commonly called technology transfer – they may think resources to help create jobs, develop workforce, and first about translating an innovation from the lab to grow Maine’s economy. Disclosing Your Invention... 6 the marketplace. While that is the classic definition Among OIED’s core missions is turning research Evaluating Commercialization Potential... 8 of the process, commercialization also can refer to Protecting Your Idea... 10 any sponsored activity on behalf of external partners. and development activities into new economic Patents... 11 At UMaine, there are several ways for researchers to opportunities for the state of Maine. Startups vs. Licensing... 17 approach the different aspects of commercialization. In all cases, the goal is to develop real-world applications We provide solutions in three overlapping service areas: Collaborating with External Partners 22-27 for university research that can solve problems and help improve lives. The Department of Industrial Cooperation Getting Started... 22 facilitates UMaine research collaborations with external Getting Organized... 24 groups, including private industry, nonprofits and Agreements... 25 Is this guide for me? foundations, communities, and government bodies, overseeing all aspects of the necessary contracts for Conclusion & Resources 27-29 We created this guide for those who conduct such work. research at the University of Maine – faculty, staff and students – and who think their research may have The Foster Center for Innovation supports researchers commercialization potential or just want to learn more and students who want to turn ideas into action, about what that means and how it works. This guide offering programs, services and courses around will walk you through everything from basic research commercialization, business development and collaborations with external partners to protecting Innovation Engineering. intellectual property related to your work to starting a business related to a discovery you make in an on- The Office of Technology Transfer guides researchers campus lab. through the process of formally licensing technology and intellectual property (IP) developed at UMaine to third parties, coordinating all facets of IP management I’m intrigued, but this sounds including market evaluations and patent and other IP complicated. Who can tell me more? protections.

Commercialization at UMaine is overseen by the Office All of these groups operate under the OIED umbrella of Innovation and Economic Development (OIED). We and are coordinated by the same team of people. created this guide, and you can think of us as your Flexibility is key to our work and solutions are our commercialization concierge. We’re here to support specialty. We’re here to help – from answering your and advise you on commercialization activities related preliminary questions to guiding you through the to your research. Read on! launch of a startup, and everything in between.

The University of Maine is an EEO/AA employer, and does not discriminate on the grounds of race, color, religion, sex, sexual orientation, transgender status, gender expression, national origin, citizenship status, age, disability, genetic information or veteran’s status in employment, education, and all other programs and activities. The following person has been designated to handle inquiries regarding non-discrimination policies: Director of Equal Opportunity, 101 North Stevens Hall, University of Maine, Orono, E 04469-5754, 207.581.1226, TTY 711 (Maine Relay System).

Commercialization Guide 1 Meet the team Cooperating Staff What are the benefits of What is the difference between OIED and commercialization? the Office of Research Administration? Jake Ward Rob Dumas Vice President of Innovation and Economic Food Science Innovation Coordinator Commercialization can seem daunting, especially if The group that would become OIED was established at Development 207.581.3139 | [email protected] you’ve never done it before. Translating an innovation the university in 1947 to conduct contract research for 207.581.2201 | [email protected] from the lab to the marketplace can be rewarding Maine’s manufacturing sector. OIED grew from there Matthew Hodgkin in many ways – for you as a researcher, for your to support the university’s engagement with other Renee Kelly Commercialization Program Professional & Innovation department, your students, the university, the state industries on project work, and those beginnings laid Assistant Vice President of Innovation and Economic Engineering Lecturer of Maine and society at large. Industry collaboration the groundwork for the strategic partnerships we are Development 207.581.1454 | [email protected] offers similar benefits for these same groups. skilled at forging today. 207.581.1401 | [email protected] Shane O’Neill Existing at the intersection of UMaine’s teaching, James Beaupré Forest Industry Business Development Manager research and service missions, OIED is uniquely Director of Industrial Cooperation 207.581.2812 | [email protected] Benefits for You positioned to build coalitions and manage 207.581.1435 | [email protected] collaborations between the university and external New sources of funding/sabbatical support groups. The office bridges business and academia, Chris Coplin Develop advocacy partners understanding and responding to the priorities and Fiscal and Administrative Officer Why does UMaine seek to commercialize Recognition for lab/center/department obligations of both groups. 207.581.2238 | [email protected] research? Broaden experience/inform future research Generate additional personal income The Office of Research Administration manages all Veena Dinesh Commercialization is central to UMaine’s mission as federally funded opportunities and related reporting Director of Business Incubation a land, sea and space grant institution. As the state’s Benefits for Students requirements. 207.581.1454 | [email protected] flagship research university, UMaine has a responsibility Experiential learning to serve the state through integrated teaching, Skills and connections to leverage for internships/job Christopher Fasel research, and outreach. Our faculty and students This all sounds good, but how does it placements Technology Business Development Manager contribute knowledge to issues of local, national, and Undergraduate/graduate research opportunities actually work? 207.581.1488 | [email protected] international significance, and commercialization of Sense of contribution research activity helps that knowledge have meaningful The definition of commercialization is broad, and Ashley Forbes impact in our communities. the process can work in several ways depending on Communications Manager Benefits for Maine the approach you take. Partnering with industry on 207.581.1429 | [email protected] UMaine is able to commercialize research for public Solving problems in Maine’s key sectors sponsored activity is relatively straightforward and will benefit thanks to the Bayh-Dole Act of 1980. Bayh- require less time investment from you. Often, you’ll be Karen Lidral Supports UMaine’s research and service missions Dole allows universities to assert ownership rights to trying to solve a defined problem based on industry Grant Manager and Fiscal Officer Economic development opportunities inventions made by their employees using federal funds need. The longer and more labor-intensive path 207.581.2228 | [email protected] and mandates that universities make reasonable efforts Benefits for Society at Large involves bringing a new invention to market (either to translate potential discoveries into useful products through forming a startup or licensing your invention Kathy Vinson and services via licensing of technology to the private to a company), yet this has the potential to yield more Administrative Specialist Research put into practice/use sector. societal impact and more profit over time. These paths 207.581.2201 | [email protected] Make a difference in people’s lives often intersect – partnering with industry can lead to Economic development opportunities discoveries that you may be interested in pursuing as Emma Wilson a licensing opportunity or through the formation of a Entrepreneurship Events & Marketing Coordinator startup. 207.866.2401 | [email protected]

2 Commercialization Guide Commercialization Guide 3 Option 1: IP Commercialization Option 2: Collaboration with Here are the major mile markers on the paths to (Classic Tech Transfer) External Partners research commercialization at UMaine

START: INNOVATION START: ID A REAL WORLD Your UMaine research leads to a discovery PROBLEM IP Collaboration with with potential for application outside the lab You understand that your research has Commercialization External Partners real-world applications, and you’re ready to 1. Invention Disclosure explore them. You submit details about your innovation to OIED 1. Understand What You Have to Offer Step 1 Conduct some self-assessment. What are 2. Evaluation your research goals? What capabilities You’ll work with the OIED team and File an invention Understand what you have do you have in your lab? What funding is participate in programs to help you required? How could these things align for a disclosure to offer understand commercialization potential and collaborative research opportunity? markets for your innovation. ↓ 2. Establish and Grow a Relationship with an Step 2 3. Protect Your Idea External Partner OIED and outside counsel will advise Consider the groups outside academia who Evaluate commercialization Establish and grow a you on the best strategy for protecting are interested in the topics you study or the the intellectual property central to your potential relationship with an tools and equipment in your lab. Talk with innovation. your external contacts about their needs and external partner how your research could support them. 4. Determine the Best Path to Make it Real ↓ Step 3 You’ll work with the OIED team to find the 3. Organize Your Offering into a Customized best path to market. Solution You’ve found an external partner to Protect your idea Organize your offering 5a) Form a Startup collaborate with and a project to work on. into a customized solution You’ll form a company and take a leadership Now, OIED will help you develop a scope of role to develop your innovation work and a budget. or ↓ Step 4 5b) Find a license partner 4. Finalize Agreement You’ll find a partner to license your invention You’ll work with the OIED team to finalize for further development Determine the best path to Finalize agreement and execute the formal agreement that will govern the interaction with your partner make it real 6) License Agreement ↓ Depending on which path you choose, you or your partner will enter into a license 5. Do the work Step 5 agreement with UMaine that describes the Complete your project according to the rights and responsibilities related to the agreement terms. Get going! Get going! use and development of the intellectual property. 5a) Invention Sometimes a new invention will FINISH: SUSTAIN, SCALE & result from a sponsored project SUPPORT with an external partner. No matter which path you take, OIED is here to help manage the license, facilitate 6.Evaluation ongoing R&D through the university, and You’ll work with the OIED team Let’s get started! accelerate the growth of companies based on and your partner to explore UMaine IP. commercialization potential and markets for your invention. ↓ 7. Licensing Inventions that come about in this way often have a ready licensing partner in the research sponsor. OIED will work with you and with the potential licensee to develop a license agreement.

FINISH: KEEP IT GOING Productive relationships with external partners can last the length of your career and significantly support your research, your students, and your ability to make meaningful new discoveries.

4 Commercialization Guide Commercialization Guide 5 Will I be able to publish the results How do I submit an invention IP of my research and still protect the disclosure? commercial value of my intellectual Commercialization property? Submit your invention disclosure using OIED’s online portal, Sophia. The Sophia link is https://umaine. There is more to explain about the classic When do I submit an invention In short, yes. OIED considers it essential to protect wellspringsoftware.net/, and you’ll login with your commercialization path, so we’ll begin our journey disclosure? academic freedom and ensure that faculty and Maine.edu credentials. You can access the invention there. researchers can freely publish information related disclosure form by clicking “Invention Disclosure” in the You are required to submit an invention disclosure for to their scholarship and research activities. However, gray “Tasks” box on the top right of the Sophia home STEP 1: DISCLOSING YOUR INVENTION any potentially patentable invention or discovery if you since valuable patent rights may be affected or even page. used federal funds, other external funding, or UMaine invalidated by any public disclosure activities, it is best So, you have an idea or a research discovery that facilities and materials, and you are encouraged to submit an invention disclosure well in advance of you believe might be suitable to commercialize – the to submit a disclosure for all other inventions and communicating or disclosing your invention to people Whom do I contact if I have questions? very first thing you should do is notify our office by developments that you feel may solve a problem and/ outside the UMaine community. In addition, there are submitting an invention disclosure. This is a very simple or have value. Submitting a disclosure should ideally significant differences between the United States and To discuss an invention disclosure, contact James process that will save you significant time down the occur well before presenting the discovery through other countries as to how early publication affects a Beaupré ([email protected]) or Christopher road. publications, abstracts, poster sessions, conferences, potential patent and how damaging a public disclosure Fasel ([email protected]). press releases, or other communications. can be to invention patentability. Once publicly disclosed (published or presented in some form), an What is an invention disclosure? Presentation or publication of an invention in any invention may have zero or at best minimal potential Who is Sophia? form before filing for patent protection may restrict for patent protection outside of the U.S. An invention disclosure is a formal and confidential or eliminate the ability to obtain a patent, particularly Sophia is OIED’s online portal and the hub we use to written description of an invention or development outside of the United States. Within the United States, prior disclosure within one document commercialization efforts. Need to make that is provided to OIED. The disclosure should list all year of patent filing does not necessarily eliminate invention disclosure? Sophia. Need to set up a new sources of support and include all of the information Be sure to inform OIED of any imminent or prior patentability, but the ultimate value of a patent could project with an external partner? necessary to begin pursuing protection, marketing, and presentation, lecture, poster, abstract, website be severely damaged, even within the United States, if commercialization activities. Based on the invention description, research proposal, dissertation/thesis, it is not filed prior to any public disclosure. Sophia, while not a person, will be key to your disclosure and inventor input, OIED may generate a publication, or other public presentation that includes commercialization journey at UMaine. non-confidential description of the invention to assist the invention. If you’re uncertain or have questions, Be sure to inform OIED of any imminent or prior in marketing the technology. Once potential partners contact OIED anytime. presentation, lecture, poster, abstract, website Get to know Sophia at: https://umaine.wellspringsoft- have been identified and confidentiality agreements description, research proposal submission, dissertation/ ware.net/ have been signed, more detailed exchanges of informa- thesis, publication, or other public presentation tion can be made. including the invention and we can help to ensure that it is protected in a timely manner that does not restrict your ability to publish or discuss your invention Why submit an invention disclosure? publicly in any way. OIED can also help to verify if any pre-publication review is required as a result of your The University of Maine System Policy Governing collaborative research agreement and comply with any Patents and Copyrights (linked in full at the back such requirement. of this guide) requires invention disclosures so that the university may assess inventions for potential More information on this question is available in the commercialization and meet its obligations to section on patents. government and other funding sources. When you disclose an invention to OIED, it starts a process that could lead to the patenting and/or commercialization What about publishing results of the technology. The commercialization process often created under collaborative research involves initiating the legal and patent protection agreements? process and working to identify outside development partners. If government funds were used for your The ability to freely publish research results is research, additional information must be reported to fundamental to UMaine’s mission as an academic the sponsoring agency. Similar requirements often exist research institution. Under a collaborative research for other types of sponsored projects. agreement, the sponsor may be afforded a short period of time to review a pending publication or disclosure to protect their own confidential information or to allow the protection of certain rights to intellectual property, but collaborators are not provided with rights to unduly delay or prevent publication. 6 Commercialization Guide Commercialization Guide 7 STEP 2: EVALUATING How do you evaluate market potential? This sounds like a lot of work – what COMMERCIALIZATION POTENTIAL is my time commitment for these Over the past several years, OIED has developed a programs? Learning about the market potential for your invention series of programs designed to help you uncover (and what will be required to actually translate it from the information you need to decide how (or if) to Market evaluation is a time-consuming process, a lab discovery to something that can be used in the move toward commercialization. These programs, but well worth it. In addition to providing valuable real world), is perhaps the most important step in the summarized briefly below (with more information information about your potential customers, commercialization process. What you learn here will available in the helpful links section at the back of going through it will give you a sense of the time determine your actions going forward, and you will this guide), build on one another and also feed into commitment and effort involved in founding and be deeply involved throughout this step. Evaluating national programs that will help you collect the skills running a startup company. This will be useful later as market potential is multilayered process that takes and information you’ll need to continue developing you consider whether to pursue a startup or licensing. time and will require you to think differently about your invention for real-world applications. Your personal involvement is essential to the process as your invention and consider feedback from different you know your innovation best. Doing this evaluation sources. It is enlightening, though not always easy. As 1. Commercialization Training Series can also help to inform your future research as you’ll always, we’re here to help (and we think this is the fun For faculty, staff and graduate students interested gain understanding about what solutions already exist part). in the commercialization process (at any stage), we and what solutions are needed. recommend starting with our Commercialization Training Series. Offered throughout the academic What happens first? year, these professional development workshops Do I have to go through all the provide an overview of different topics related to programs? Once you have submitted an invention disclosure, OIED commercialization at UMaine and are an ideal first will undertake a technical evaluation to consider the step. Not necessarily. The Commercialization Training Series unique features/benefits of your innovation, and what is informational, but useful. If you’re starting with proof is necessary to demonstrate those benefits. We’ll 2. I-Corps Site Program an invention you intend to commercialize, you might also explore the innovation’s development status, also UMaine’s I-Corps site program will help you zero in on skip right to UMaine’s I-Corps site program, which will known as the technology readiness level (TRL). Based key market segments. The six-week I-Corps program lead you directly into MIRTA. We consider UMaine’s on that, we’ll think about next steps for technical offers grant funding for customer discovery activities I-Corps program and MIRTA essential to this process. development, what resources are required (resources and dedicated coaching that can help you identify Participation in the National I-Corps program will only can include money, people, time, partners, equipment, the market opportunity for your STEM-based research help you. etc.) and what plans are in place to obtain those (or research in other disciplines that has a technology resources. application). UMaine’s site program serves as a feeder for both the MIRTA accelerator program and the Whom do I contact if I have questions? Through that process, we’ll talk with you, and National I-Corps program (an expanded version of together we’ll come up with a plan to continue the UMaine’s site program during which teams perform To discuss UMaine’s commercialization programs, evaluation process if the innovation shows promise for at least 100 face-to-face interviews with potential contact Veena Dinesh ([email protected]). commercialization. customers and partners to evaluate product-market fit and their wider business model). From here, OIED will help you evaluate market potential. 3. MIRTA Accelerator Notes: UMaine’s I-Corps program is a pre-requisite for participation in MIRTA, an accelerator program designed specifically to develop UMaine research innovations into marketable new products and services that may lead to new job creation and grow Maine’s economy. MIRTA applies the accelerator model used in the startup world for technology transfer projects in the university ecosystem. During this intensive 16-week program, participants are guided through market analysis, intellectual property analysis, and business model development.

UMaine’s Research Reinvestment Fund supports MIRTA activities. After participation in MIRTA, teams have a roadmap with clear pathways that could include: • Creation of a startup • License to a new or existing company • Direct engagement with the end user

8 Commercialization Guide Commercialization Guide 9 STEP 3: PROTECTING YOUR IDEA Copyrights Data can be considered intellectual property, but is A copyright is an intangible property right that often considered to be a separate asset from registered can arise in an original work of authorship that is intellectual property such as patents, copyrights, and The protection of intellectual property (IP) that may fixed in a “tangible means of expression.” Common trademarks. After a collaborative research project is have commercial potential is a key step in this process. forms of “tangible means of expression” include complete, usually all sides of the collaboration share IP is a valuable intangible asset and its protection books or other written media, and videos. Copyright their results/data with the others, but they do not can help assure your competitive advantage in protection attaches at the moment the original work of necessary share ownership of the resulting patents, the marketplace. Protecting IP also helps to foster authorship is fixed in a tangible means of expression, copyrights, trademarks, and trade secrets. innovation and R&D by ensuring that inventors can whether the work is published or unpublished. reap the benefits of their work. Copyright can protect the way in which an idea is Tangible research property is defined more fully in the expressed, but not the idea itself. Similarly, for a University of Maine System Policy Governing Patents A quick note that IP protection and market evaluation computer program, the copyright may cover the source and Copyrights, but in general, tangible research often overlap on the timeline. It is important to have and object code, but not the processes that the code property or materials describe unique materials that an understanding of the potential market for your causes a machine to perform. Owning a copyright for are owned by and typically created at UMaine. Most invention before investing in IP protection, but the an original work can be a valuable right, as in general often, tangible research property or materials refers decision to protect IP may come before you complete only the owner of a copyright or an individual with the to biological materials such as specialized or unique your customer discovery steps – it all depends on your owner’s permission can make copies of the work and reagents, cell lines, plasmids, and vectors, but can also specific situation. distribute the work publicly through print or electronic pertain to chemical compounds. Tangible research media. For performing arts and visual art, in general property may, or may not, be eligible to be protected To help you navigate this process, OIED has an only the copyright owner or someone with permission by a U.S. patent. intellectual property specialist on staff, Christopher can publicly display or publicly perform the work. A U.S. Fasel ([email protected]), who will work copyright lasts a long time. For many works created in For the purposes of this guide, we will devote the most closely with you. He will help you formulate an IP the U.S. after Jan. 1, 1978, the copyright is in effect for attention to the patent process, but OIED can help strategy and connect you with OIED’s external patent the author’s life plus 70 years. Copyrights are registered you define and understand protection potential and counsel. We work with outside attorneys to ensure by the Copyright Office of the Library of Congress. UMaine policies related to any IP type. Please contact access to skilled patent specialists across a wide Christopher Fasel with all IP-related questions. range of technology areas. Inventors typically work Trademarks/Servicemarks collaboratively with outside counsel to draft patent A trademark is a word, name, symbol, or device that applications and formulate responses to patent office is used in trade with goods to indicate the source of queries, and Christopher will help you manage these the goods and to distinguish them from the goods Patents interactions. of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” What is the definition of an inventor on Types of Intellectual Property What type of subject matter can be and “mark” are commonly used to refer to both patented? a patent and who determines this? Who trademarks and servicemarks. Patents should I include as an inventor on my A patent for an invention is the grant of a property Patentable subject matter includes processes, machines, patent? compositions of matter, articles, some computer right to the inventor, issued by the United States Patent Related Terms and Trademark Office. programs, and methods (including methods of making Under U.S. law, an inventor is a person who takes compositions, methods of using a process or material, part in the conception of the invention(s) claimed Know-how is distinct from patents, copyright, and In the United States, the owner of an issued patent has etc.). in the patent application. Accordingly, inventorship trademarks because it generally refers to the technical the right to exclude others from making, using, selling, may change as the patent claims are changed during knowledge and skill required to perform a task. It can offering to sell, and importing the patented invention. prosecution of the application. A person who only also refer to nonpublished data, information, protocols, This right is not automatic and may need to be actively What is the United States Patent and furnishes the funds to build or practice an invention, techniques, methods, processes, procedures, trade enforced or defended by the patent owner. Trademark Office (USPTO)? or is directed by another to perform a specific task secrets, chemical structures, and sequences or other or series of tasks, is generally not an inventor. The types of knowledge. Know-how often resides with The USPTO is the federal agency, organized under A patent does not provide the owner with any right to appropriate inventors on a patent application are certain faculty members or other individuals and thus the Department of Commerce, which administers the practice a technology that falls under a broader patent determined by a registered patent attorney relying can sometimes be difficult to transfer to third parties patent system on behalf of the government of the owned or controlled by others. The specific claims of heavily on information and evidence presented by the and even harder to protect. In some cases, the know- United States. The USPTO employs patent examiners an issued patent define the legal scope of the owner’s potential inventors. Inventorship is a matter of U.S. how can be identified and/or reduced to writing, such skilled in all technical fields in order to evaluate patent protectable invention. Law (35 U.S.C § 116), and the determination of who is as when it refers to protocols or certain data. applications. The USPTO also issues federal trademark an inventor differs from whether someone should be a registrations. named author on a publication. Because “[c]onception is the touchstone of inventorship,” each joint inventor must contribute to the conception of the invention. Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir.1994)

10 Commercialization Guide Commercialization Guide 11 What is the patenting process? Process for Obtaining a Utility Patent Notes: Patent applications are generally drafted by a patent The graphic at right describes the basic steps in the Researcher’s First Action steps attorney or a patent agent (a non-attorney with a patent application process. In the United States, this science education licensed to practice by the USPTO). 1. Invention! process can be expedited via a fee to take no more than Keep it confidential for now OIED contracts with external patent counsel for the 12 months. Normally, a patent issues between three and protection of inventions owned by the university, thus six years after the application is filed. 2. Patent search assuring access to skilled patent specialists across a wide Is your invention truly novel? range of technology areas. The patent attorney will Currently, the average utility patent application remains 3. File an invention disclosure with typically ask you to review an application before it is pending for about three years, although inventors in the UMaine OIED filed and will also ask you questions about inventorship biotech and computer fields should plan on longer waits. of the invention(s) claimed in the application. At If the utility application is filed in the U.S., depending on 4. Work with OIED to evaluate commercialization potential the time an application is filed with the USPTO, the the type of technology, the patent attorney will receive patent attorney will ask the inventor(s) to sign an written notice from the USPTO in 1.5-2.5 years or longer 5) File a provisional patent application Inventor’s Declaration and an Assignment, which as to whether the application and its claims have been OIED staff and lawyers will help evidences the inventor’s assignment to UMaine of the accepted in the form as filed. More often than not, inventions claimed and any patent(s) that issue. Patent the USPTO rejects the initial application because either Patent Process Timeline applications may be filed in the United States and/or certain formalities need to be corrected, or the claims in other countries, and the required paperwork may are not patentable over the “prior art” (anything that File a provisional patent application differ. scientists in the field have made or publicly disclosed in the past). The letter sent by the USPTO is referred to as 12 Months an Office Action. If the application is rejected, the patent During this time, determine if market Applying for a Patent attorney must file a written response, usually within interest is limited to the U.S. or if there are international prospects three months, and using the advice and assistance of the inventors. Generally, the attorney may amend the claims What is the difference between a What is a provisional patent application? and/or explain why the USPTO’s position is incorrect. This File a U.S.-only or a PCT application provisional patent application and a procedure is referred to as patent prosecution. application (multi-national) Since a patent may only be issued to the first inventor regular or “utility” patent application?

to file an application, it is important to secure an early Often it may take up to two USPTO Office Actions and 18 months 30 months filing date prior to public disclosure. A provisional U.S. provisional patent applications can provide two responses by the patent attorney — and sometimes (from first (from first filing date) patent application is a type of patent application a valuable tool for preserving patent rights while more — before the application is resolved. The resolution filing date)

that secures a filing date for the application, and allowing for further development and refinement can take the form of a USPTO notice that the application reserves the applicant’s right to file a later, more of the claimed invention. This useful feature of is allowable; in other words, the USPTO agrees to issue Application will be For an international patent, detailed nonprovisional application, without provisional patent applications occurs because the a patent. During this process, input from the inventor(s) published by the determine which coun- negatively impacting the length of the patent term if application preserves an inventor’s priority filing date, is often needed to confirm the patent attorney’s U.S. Patent and tries should be selected. Trademark Office Timelines for international a patent ultimately issues. A provisional application but the provisional patent application is not examined understanding of the technical aspects of the invention patents vary by country. automatically expires after 12 months. during the year in which it is pending. A regular non- and/or the prior art cited against the application. OIED will work with you on provisional application must be filed within one year of your application. There is no such thing as a provisional patent – this the provisional filing in order to receive benefit from its Patent applications are kept confidential for a period ~ 2-3 years (from first filing date) term relates only to the type of application used to earlier filing date. However, an applicant only receives of time, but then are published, typically 18 months secure a filing date. the benefit of the earlier filing date for material that after the first application is filed. After an application is adequately described and enabled in the original is published, the full application and information about USPTO takes action! This could be a restriction/election provisional application. prosecution can be found on the Patent Office website requirement, rejection, or allowance (links at the back of this guide).

Once a U.S. patent is issued, in general, it is enforceable Variable timeframe If USPTO requests amendments, work with in the United States for 20 years from the initial filing OIED and lawyers to update application of the non-provisional application or PCT application, until patent is allowed. assuming that USPTO-mandated maintenance fees are paid during that 20-year period. (There are some Patent maintenance exceptions, particularly involving inventions in the pharmaceutical fields; contact OIED for more specific information about your invention and/or patent.) 20 years (from first filing date) Pay maintenance fees and annuities over the life of the patent.

Patent expires

12 Commercialization Guide Commercialization Guide 13 Should I protect my idea outside the Can a provisional patent application, What if I created the invention with What about Retained Rights? U.S.? regular utility patent application, or someone from another institution or PCT application be enforced or used company? Pursuant to the Bayh-Dole Act, UMaine is required We will help you assess this depending on your specific to exclude others from practicing my to retain certain research rights to continue to use circumstances. Foreign patent protection is subject to invention? If you created the invention under a collaborative licensed intellectual property where federal funding the laws of each country, although in a general sense research or consulting agreement with a company, has been utilized in the development of such the process works much the same as it does in the No. Only a validly issued patent can be enforced or OIED will need to review that contract to determine intellectual property, and to reserve rights – also known United States. In most foreign countries, however, an used to exclude others from practicing the claimed ownership and other rights associated with the contract as march-in rights – for the federal government to inventor will lose any patent rights if the invention is invention. Patent applications cannot be enforced. to determine the appropriate next steps. Should the exploit the IP under certain circumstances. In addition, publicly disclosed prior to filing the patent application. technology be jointly owned with another academic it is UMaine’s policy to retain certain research rights in In contrast, the U.S. has a one-year grace period which institution, UMaine will usually enter into an Inter- all of its licensed intellectual property, to enable further may allow for some protection of patent rights for Why does UMaine protect some Institutional Agreement that designates one of the research and education, even if no federal funding publicly disclosed inventions. intellectual property through patenting? institutions to take the lead in protecting and licensing was used in the creation of the licensed intellectual the invention, and provides for sharing of expenses and property. Patent protection is usually highly desirable for a profits. Furthermore, UMaine generally retains the right to What is the process for international potential commercialization partner (licensee) because share its “retained rights” in such licensed intellectual protection? it can protect the commercial partner’s often sizable If the technology is jointly owned with a company property with other non-profit organizations investment required to bring the technology to market. or foundation, or in some cases if a company or and universities for non-commercial research and An international agreement known as the Patent However, not all inventions are patentable or justify foundation funded the university research but did not educational purposes. This “retained right” may allow Cooperation Treaty (PCT) provides a streamlined the significant time, expense, and effort required to participate in the research that led to the invention, a researcher who leaves UMaine for another university filing procedure for most industrialized nations. A seek patent protection. OIED carefully reviews both the OIED will consult with the company or foundation to to continue research related to the invention at a new PCT application preserves the applicant’s right to file patentability and commercial potential of an invention determine the appropriate patenting and licensing university, while the ownership rights in the original in domestic and certain foreign jurisdictions. For U.S. before investing in the patent process. strategy. applicants, a PCT application is generally filed one licensed invention remain at UMaine. year after the corresponding U.S. application (either Most of the time, these agreement terms are provisional or regular) has been submitted. Eighteen Who decides what gets protected? negotiated by OIED at the beginning of the research months after the PCT is filed (30 months after the collaboration or research funding, before the invention actually occurs. Notes: provisional is filed), the application must be filed in OIED and the inventor(s) will often jointly consider the national patent office of any country in which the relevant factors necessary to make decisions relating applicant wishes to seek patent protection. to the potential filing of a patent application. If your Will the university initiate or continue invention was made using external research funds, patenting activity without an identified The PCT provides two main advantages. First, it delays OIED may also consult with the funder(s). Ultimately, licensee? the need to file costly foreign applications until the however, OIED makes the decision as to whether to 30-month date, generally providing the applicant with file a patent application, seek another form of legal On the basis of its evaluation, the university may elect ample opportunity to further develop, evaluate, and/or protection, or decline to pursue through OIED. If OIED to accept the risk of filing and protecting a patent market the invention for licensing. declines to pursue a patent for a particular technology, application without an identified licensee. After usually the inventors are granted the right to do so at university rights have been licensed, the licensee Second, the International preliminary examination their own expense. generally pays the patenting expenses that have been often allows an applicant to get early feedback about incurred up until the time of license (historical costs) patentability of the invention. and any patent expenses from the time of license What is the cost of obtaining a patent? forward (ongoing expenses). An important international treaty called the Paris Convention permits a patent application filed in a Filing and prosecuting a regular U.S. patent application The university sometimes decides to cease further second country (or a PCT application) to claim the through to issuance can cost between $15,000 and patent prosecution and expense after a reasonable benefit of the filing date of an application filed in a $40,000, on average. Filing applications and obtaining period of attempting to identify a licensee has first country. However, pursuant to this treaty, these issued patents in other countries may cost $30,000- transpired or if it is determined that it is not possible so-called “convention applications” must be filed in $40,000 or more per country per application, on to obtain commercially valuable issued claims from the foreign countries (or as a PCT) within one year of the average. Also, once a patent is issued in the United USPTO. If this occurs, the inventors are usually given first filing date of the U.S. application. States or in foreign countries, certain maintenance fees the option to continue with prosecution or patent

are required to be paid every few years, to keep the maintenance at their own expense. patent valid and enforceable.

14 Commercialization Guide Commercialization Guide 15 IP Revenue STEP 4: DETERMINING THE BEST PATH TO MAKE IT REAL

How are license revenues from So, your innovation has market potential and you’ve intellectual property distributed? Notes: protected the IP – now what?

In summary: for the first $100,000 of cumulative net Your two best-defined options are to form a startup income, 50% will be distributed to the inventors and and develop the project yourself OR seek a partner who 50% will be retained by UMaine; and for cumulative will license and further develop your IP. net income in excess of $100,000, 40% shall be distributed to the inventors and 60% will be retained Three basic questions will help to identify the best by UMaine. approach, and OIED will work closely with you to figure it out. License revenues from UMaine-owned intellectual property (including patents, patent applications, 1. What do you want? know-how, copyrights, trademarks, and trade secrets) are distributed according to the University of Maine 2. What level of involvement is realistic for you? System Policy Governing Patents and Copyrights. Revenues from license fees, royalties, and equity — less 3. Do you have access to funding and other necessary any unreimbursed patenting, licensing expenses, and resources? certain types of other qualifying costs — are shared with inventors according to the distribution formula set As mentioned previously, startups offer more direct forth in the applicable policy. Please refer to the Policy control and long-term financial upside if you are Governing Patents and Copyrights for the specific terms successful, while licensing allows you to take a hands- regarding how revenues, expenses, and payments to off approach and collect revenue if your licensee is inventors are calculated. successful. Startups also require significantly more work and personal involvement. A third option, in certain situations, is direct development for the end What if I personally receive equity user. This may be appropriate when the market for the (stock) from a company? technology is very small or there is limited expertise outside the institution that can help it grow. For now, Under the Intellectual Property Policy, inventors who we’ll examine startups and licensing. receive equity or other shares of ownership from a licensee exceeding 10% of the ownership interest in said licensee are generally required to waive their Startups inventor’s interest in their share of profits received by UMaine from that licensee. What is a startup company? • UMaine and inventors agree it is the best route to market What are the tax implications of any A startup is a new business entity formed to • There is revenue or funding potential sufficient to revenues I receive from UMaine? commercialize inventions through the development sustain and grow a company and eventual sale of products or services. • The startup commercialization pathway stimulates Income distributed from license agreements to economic development in the region inventors are reported on Form 1099-Misc as Royalties. We strongly encourage you to consult your own tax Why consider the startup journey? The OIED team can help to evaluate these and other adviser for specific advice and guidance. factors to decide whether a startup is the ideal route A few key factors when considering whether to form to market. The choice to establish a new company for and launch a startup company are: commercializing UMaine-owned intellectual property Whom do I contact if I have questions? is typically a mutual decision made by OIED and the • The innovation is not an incremental improvement on inventors of the technology. A faculty or staff member To discuss IP questions, contact Christopher Fasel something that already exists can establish a business without the assistance of ([email protected]). • There is evidence of sufficient market opportunity UMaine as long as the faculty member and the business • There is potential for expanded product lines otherwise are compliant with UMaine’s policies. A • The innovation is immature and needs further business created in partnership with UMaine, or development through independent means, must still take a license to • The invention team is critical to future success any UMaine-owned IP it intends to use.

16 Commercialization Guide Commercialization Guide 17 Types of Startups We Work With 2. Startups based on UMaine-owned IP What new venture and business (no employee ownership) incubation services are available through UMaine? 1. Employee-led startup with UMaine- Disclosures of this nature must be made prior to Intellectual property owned by UMaine can be licensed owned IP the submission of a proposal for funding. ORC is by new or existing startups to develop and sell licensed Previously mentioned programs, such as I-Corps and responsible for administering the Financial Conflict of products/services. In some cases, the invention team MIRTA (Pg. 8), provide important resources related When an employee decides to take an equity Interest (FCOI) Policy. Examples of potential conflicts at UMaine may decide not to take fiduciary roles (e.g. to starting a business, but many other programs are ownership stake or has a significant financial interest include the treatment and roles of students and board seats, officer positions, full-time employment available through OIED and our network of statewide in the startup company that desires to commercialize trainees, supervision of individuals working at both arrangements, etc.) at companies that were created partners. technology owned by UMaine, they need to complete UMaine and a licensee company, use of space and to commercialize technology or research developed at OIED’s Startup Checklist. This checklist (linked at the equipment for company benefit, etc. UMaine. Faculty inventors do typically serve as advisors First, OIED provides support to ventures through its back of this guide) ensures that all approvals have been or consultants for the company, often chairing or business incubation program. Employee-and student- obtained, prior to the final execution of any license participating on a Scientific Advisory Board, particularly led startups can access the following services for free: agreement between such startup company and the When should I seek guidance on when the technology is immature or has platform university. Employees will also have to submit a conflict conflicts? applications. • Business coaching management plan when required by policies. Conflict • Office space on campus or with partner business awareness and management is especially important for Addressing conflicts early protects you and protects the incubators in the state employee-led startups. institution. Because a finding of an FCOI Committee 3. Student-led startups • Connection with UMaine’s mentor network may have considerable implications related to your • Priority intern assistance Employees permitted to engage in outside participation in research, you should contact ORC early The OIED team will work with UMaine students entrepreneurial activities continue to be responsible in the process if you currently have, or anticipate that choosing to start their own businesses. Students are for the performance of all their university teaching, you may have, a financial relationship with a company provided with business coaching services, free office Resources and Funding Mechanisms research, and service obligations. If an employee is that could affect or be affected by the conduct or space at the student business incubator housed at the outcome of your research. unable to meet these obligations, he or she must Foster Center for Innovation and access to mentors • Previously mentioned UMaine programs (I-Corps, either reduce outside activities or request a reduction and resources on campus. The Innovation Center hosts MIRTA) The Startup Checklist can help you anticipate potential of appointment or other approved leave from the entrepreneurship-related events, student meet-ups • Top Gun Entrepreneurship Accelerator Program conflicts that may arise later and OIED staff can help university. and competitions every semester. Students can also (statewide, Bangor-region cohort run by OIED) you develop a plan for managing those conflicts. apply to be considered for StartUp Lab, an Innovation • Scratchpad Accelerator Program (Bangor-based seed The startup must obtain a license from UMaine to Engineering course designed for students committing accelerator program) practice the intellectual property rights. These licenses to taking their idea to market. • Maine Technology Institute (state funding assistance Can I do contract work for my startup include performance milestones that, if unmet, could for Maine companies) company at UMaine? result in termination of the license agreement. • SBIR/STTR (Federal funding programs) 4. Employee-led startups not related to • Angel and venture capital funding (private funding Yes, with a proper conflict of interest mitigation What conflicts should I be aware of? research at UMaine options) plan an employee-held company can do work at the • Innovate for Maine (OIED-run fellowship program university. Conflicts may arise when a university employee has Perhaps you want to start a company unrelated to that can provide talent support) significant financial interest in a company, ownership any work done at UMaine. OIED offers a variety of or otherwise. OIED’s Startup Checklist will walk you new venture and business incubation services to such through potential areas of conflict, and employees startups. should also refer to the Office of Research Compliance Notes: (ORC) on the need for declaring any significant financial interest that may present a conflict of interest in relationship to externally sponsored projects. © 18 Commercialization Guide Commercialization Guide 19 Licensing What about licensing research STEP 5: GET GOING! materials? If the startup route does not appeal to you or is not What can I expect to gain if an invention Congratulations! Whether you’ve chosen to form a appropriate in your situation, licensing your invention I made is licensed? Research materials are proprietary materials developed startup or license your invention, you’re now well on to another company (either one that already exists or a in the course of research that can include but are not your way. startup formed by external interests for the purpose of Most inventors enjoy the satisfaction of knowing their limited to biological materials, chemical compounds, commercializing your IP), is a good option. inventions are being developed for the benefit of the and even some types of software or data. Research In the case of a startup, OIED will remain a useful general public. New and enhanced relationships with materials can help facilitate scientific development and partner. Our office has connections with business Of course, in order to license your IP, you first need businesses are another outcome that can augment the creation of new inventions. When shared with a incubator programs and other resources throughout to find a licensing partner. This is where industry one’s teaching, research, and consulting activities. In commercial entity, a license agreement is typically used the state (and beyond) that can support you as you collaboration can be especially helpful – if you already some cases, additional collaborative research funding to protect any associated intellectual property rights sustain and scale. Not only that, but we can facilitate are collaborating with industry on your research, often and support may result from the licensee. Additionally, and provide commercialization income. OIED can help ongoing research and service support through the there is a ready-made licensee for the discoveries you as required by the Bayh-Dole Act and per university you with this. university – read on through the next section on might make. If you’re not collaborating with industry, policy, a significant portion of any net income from collaboration with external partners for information it can be more difficult to find a licensing partner, but a patent license is shared with the inventor(s). For you may find useful. there are things you can do (described below) to help. additional information on how licensing income is May I use research materials created by distributed, please see the University of Maine System others? If the university has decided to pursue a licensing Statement of Policy Governing Patents and Copyrights. agreement, the final steps involve executing the agreement and continuing to work with the licensee What is a License Agreement? Yes, if the other party is willing to share materials for ongoing R&D and other needs. Once you have and if any conditions the provider may impose are licensed an innovation related to your research, the License agreements describe the rights and What is the relationship between an acceptable to you and to UMaine. It is important licensee can become a valuable partner to support your responsibilities related to the use of intellectual inventor and a licensee, and how much to carefully document from whom and under what work going forward. OIED will work with both parties property developed at UMaine by the party obtaining of my time will it require? conditions you obtained materials so that we can help to help manage the license. the license. University license agreements usually to determine if your use may impact the ownership stipulate that the licensee should diligently seek to Many licensees request, and sometimes require, the rights of a subsequent invention or technology. put the intellectual property to commercial use for active assistance of the inventor to facilitate their the public good and provide a reasonable return to commercialization efforts, at least in the early stages UMaine. License agreements can be exclusive, meaning of development. This assistance can range from Will I be able to share research materials that only that licensee has rights to exploit a particular infrequent, informal interactions to a more formal created in my research with others? technology in the licensed field, or non-exclusive, collaboration. Working with a new business startup meaning that more than one licensee can obtain a in contrast to working with an established company Yes. UMaine requires the use of an outgoing Material license to the same intellectual property in the same can, and often does, require substantially more time, Transfer Agreement (MTA) for the sharing of materials field of use. depending on your role in or with the company and developed at UMaine to any outside for profit or not- your continuing role within the university. Under all for-profit party. circumstances, your participation with a startup or well- What kinds of things can be licensed? established company is governed by university conflict- Sharing any materials with commercial colleagues or of-interest policies. sharing human-derived materials with commercial or Generally, licenses include a grant of rights to a form academic colleagues may require the use of additional of intellectual property such as an issued patent or terms and conditions. All requests for outgoing MTAs Notes: pending patent application, a copyright, a piece of Will you help me find a licensee? should be made through Sophia. software, a device prototype, a tangible research material or reagent, a defined data set, etc. OIED can help, but your active participation will be required. As an inventor, you have an opportunity to Whom do I contact if I have questions? connect with potential licensees through conference How is a company chosen to be a presentations, trade shows, and the customer For general startup and licensing questions, you can licensee? discovery component of programs such as I-Corps reach out to James Beaupré (james.beaupre@maine. and MIRTA. These can all be great routes to identify edu), Christopher Fasel ([email protected]), A licensee is chosen by OIED in consultation with the potential licensees, and you are your invention’s best or Veena Dinesh ([email protected]). inventors, based on its ability to commercialize the advocate. OIED does not have the staffing resources technology for the benefit of the general public. to aggressively market UMaine-owned IP, but we do Sometimes an established company with experience connect regularly with industry across the state and the in similar technologies and markets is the best choice. world. The more closely you work with our office and In other cases, the focus and intensity of a startup the more information you provide, the more we can do company is a better option. to help identify potential connections that could turn into licensing opportunities.

20 Commercialization Guide Commercialization Guide 21 STEP 2: ESTABLISH AND GROW A Collaborating with External RELATIONSHIP WITH AN EXTERNAL PARTNER

Partners The first step to formally collaborating with external Who are they and why does your research area matter partners is as straightforward as uncovering groups to them? What problems are they trying to solve? You outside of academia who are interested in the topics probably already have a good idea, and likely have Now that you’ve seen the longer paths to developing How do I quantify my expertise? you study or the facilities and equipment in your lab. informal relationships with these groups. Talk with a novel invention for commercialization, it’s time to those people, try to understand their needs and wants. learn about the more straightforward route (one that This is all part of the same self-assessment process. First, can also lead to novel inventions and ready licensing understand your education, your background, your partners for those inventions). If you have no desire fields of interest and how they intersect. What is the What should I know before I start Your interactions with external partners can lay the to form a startup or participate in classic forms of demand for your knowledge? Do you have the ability working with external partners? groundwork for someone else to be successful or tech transfer, but you are interested in solving real- to solve a problem or a particular type of problem? ensure that they never get the same opportunity. world problems and finding additional funding Developing a base of know-how and experience that When you commit to conducting work for an sources to support your research, collaborating with can be repeatedly applied to similar challenges can external partner, they become your customer. These external partners may be the ideal commercialization be helpful, both for developing further expertise and Do I need a Confidentiality/Non- relationships, if productive for both parties, can last opportunity for you. establishing a reputation as someone with expertise in the length of your career and significantly support Disclosure Agreement (NDA) to talk with this area. your research, your students, and your ability to make an external partner? Within OIED, UMaine’s Department of Industrial meaningful new discoveries. Cooperation (DIC) functions as a liaison between You don’t, but an NDA is helpful because it allows business and industry and the university, coordinating How do I know what tools in my lab are Industry timelines tend to be tighter and more rigid you to receive and share proprietary information with formal agreements that make UMaine facilities, useful to outside partners? than those in academia, and delivering timely results your prospective partner. The protections offered by equipment, and research expertise available to on a service contract is essential to the success of the an NDA allow for freer conversations that can help external clients. DIC’s involvement serves to maintain Useful tools could include capabilities and technologies relationship over the short and long term. move negotiations forward. It’s easy to request an NDA the integrity of UMaine’s institutional mission and that aren’t yet available or aren’t widely available in through our online management software, Sophia. avoid conflicts with the private sector. DIC can help the commercial sector in Maine or elsewhere. This Timely turnarounds are a key element of customer you formalize existing relationships with industry could be a new technology, or perhaps a resource in service in these relationships, but not the only one. Be related to your work (including helping you assess which a single company would be unlikely to invest but friendly and communicate updates on your work often. What is the purpose of a Confidentiality/ potential opportunities and connecting you with new where the state could support a sector or a group of While your contract agreement may include dedicated opportunities that may come through our office). By Non-Disclosure Agreement? companies. The tools in your lab combined with your progress milestones, it’s helpful to proactively update working with DIC, you will be able to leverage a much research expertise or knowledge base can be a real your partners more frequently and to be responsive A confidentiality/non-disclosure agreement is broader network of contacts across the state, the asset. when they contact you. Whenever possible, try to typically mutual between the involved parties and country and the world. return calls and emails within 24 hours, even if your acknowledges that content is confidential, proprietary, initial response is just an acknowledgment with and should not be shared or published in any form. What are the limitations on what I can STEP 1: UNDERSTAND WHAT YOU a promise to respond in more detail later. Ask for This type of agreement should be considered as part of offer? feedback on your work and use the feedback your any interaction with an external client to protect the HAVE TO OFFER partner gives you. While these are common sense parties even if the project doesn’t develop as expected. Your offering must be legal. It must follow established tips, good customer service is critical to building and The university has a standard mutual confidentiality/ If you’ve never thought about where your research principles of research ethics. It must abide by UMS maintaining a strong relationship with an external non-disclosure agreement that can be shared with expertise could add value or help solve problems in the policies related to doing business with the private partner. a client, or DIC can initiate a review of a client’s wider world, this is where you should start. It’s a useful sector, which include not making guarantees related standard agreement for compliance. An important exercise – we can prompt you through it – that will help to your work. Finally, it must not directly compete with Recognize that you may not be the only researcher factor of confidentiality/non-disclosure agreements is you strategically approach opportunities for sponsored the private sector in Maine. coordinating with a particular company at any one the preservation of existing intellectual property. This activity. time. Your partners may be leveraging contacts in type of agreement is formally between the university multiple parts of the institution simultaneously for and the client and is signed by both parties and The first step is to think carefully about what interests different reasons, and you want to help ensure that acknowledged by the PI. you. Sponsored activity offers a way for you to their experience is uniformly positive. accelerate the impact of academic research in the world we live in – what areas of your research have the Finally, remember that you are always representing potential to both make a difference and advance your UMaine, and that individuals outside the university will academic interests and career? Is there a way you can not distinguish between individual departments. educate a student along a masters or doctoral path that could facilitate that research?

22 Commercialization Guide Commercialization Guide 23 STEP 3: ORGANIZE YOUR OFFERING STEP 4: FINALIZE AGREEMENT Are there any agreement types DIC INTO A CUSTOMIZED SOLUTION doesn’t handle? Here, we’ll walk through the different agreement types How do I build a scope of work? there are instances that might be considered instruction you might encounter and the process for initiating Due to reporting requirements, any collaboration or research. Please contact us to discuss your specific development of an agreement through our online that involves federal funding must be routed through First, make sure you’re directly addressing the needs case. management software, Sophia. After you’ve gone UMaine’s Office of Research Administration: https:// that the partner has presented. Remember that the through the process for the first time, it’s easy to set umaine.edu/ora/ goal is to deliver an anticipated result, and your scope up new agreements in Sophia for future projects. DIC of work should reflect an appropriate path to deliver The partner I’m working with has asked is always here to support you – remember, we manage Any collaboration that involves a gift must be routed that specific result. That said, don’t get too caught for a quote on the work – can I provide the administrative process related to each project and through the University of Maine Foundation: https:// up in outlining every detail of your process – focus on one? How? will handle all the paperwork, including billing, on your umainefoundation.org/ the assigned deliverable for the partner, ensuring that behalf. Procurement contracts are managed by UMS you can you can meet their needs on their timeline. Informal and non-binding quotes can be shared with a Procurement: https://www.maine.edu/strategic- Industrial research is not peer reviewed, and setting potential client and revised and edited until everyone procurement/ a scope of work for an external customer is quite comes to agreement. You can share informal and non- Why do I need a formal agreement to different than presenting a question that you’d like to binding quotes in any way that you’re comfortable. collaborate with a company, group or answer purely for the sake of growing knowledge. Quotes are formalized and made binding through individual outside the university? the agreement process outlined in the next step What kinds of agreements are there? The three things you must include in any scope of work (Formalizing an Agreement). An agreement is required by the UMS General Counsel for sponsored activity are: in order to engage with an external partner. This There are several basic agreement types, some version protects you and protects the university, providing a of which will be involved in most project work. DIC will 1) Timeline 2) Deliverables 3) Cost What if I just want to consult in my legal framework to govern your interaction that: always work with you to tailor the agreement to suit spare time? the project. Common agreement types include: 1) ensures compliance with UMS policies as well as state • Confidentiality and Non-Disclosure Agreements What is an appropriate timeline? You may consult outside the university, but keep these and federal laws (already explained in Step 2) factors in mind: Timelines are developed mutually between the 2) preserves the right to academic publication for • Material Transfer Agreements • Agreements for Services (consulting, fee-for-service, researcher and the customer in order to balance 1) You may not use university facilities or equipment or confidential work testing, etc.) between your capacity to present the solution and the enlist the help of students on outside consulting. company’s required time to implement the deliverable. 3) protects you as the PI from personal liability • Facility / Equipment Use Agreements (use of space, labs, tools, equipment etc.) More often than not, these timelines are significantly 2) You are not covered by university insurance or • Research Collaboration Agreements (fundamental accelerated compared with traditional research liability when you consult on your own time. 4) preserves the rights to any intellectual property timelines. Some projects involve long engagements generated as part of the collaboration and applied research, graduate students, etc.) • Customer- or client-derived agreements (e.g. sponsored activity into a broad question or 3) You are required to report income related to such questions), others are quick turnarounds (e.g. fee-for- work according to IRS guidelines. service testing). If you need assistance, DIC will work What sorts of external collaborations with you and your partner to set timelines for proposed 4) You should refer to the Associated Faculties of would require a formal agreement? What is a Material Transfer Agreement? projects. the University of Maine (AFUM) or UMPSA contracts A Material Transfer Agreement governs the transfer regarding the reporting of outside employment to your There are several basic agreement types that should in or transfer out of materials between the University How do I know what to charge? department and supervisor. be considered when working with an external partner. Scenarios in which these agreements might apply of Maine and an external collaborator for use in research. Materials may include biological samples, We’ll help you build a budget using the DIC budget include: chemicals, prototypes, or pieces of equipment. These sheet (see link to full sheet at the back of this guide). What are the benefits of consulting in agreements are typically only a few pages in length Using the budget sheet, we can work with you to • Project work for domestic and international coordination with the university? and address issues such as ownership of the transferred determine the amount of anticipated effort, materials, companies, communities, individuals, and non-profits material and modifications and derivatives made by cost of testing that will be required and appropriately Consulting in coordination with UMaine allows you to • Consulting/problem solving the recipient. They also may limit the use and further calculate what the university refers to as “fully use university facilities and equipment, enlist the help • Training dissemination of the material by the recipient, address burdened charges.” Fully burdened charges are used of UMaine students and other staff and be covered by • Fee-for-service work or testing publication rights and confidentiality as well as rights to calculate fixed-price contracts and factor in fringe university insurance. The client will contract with the • Facilities use to inventions and research results. and appropriate indirect costs, where applicable, as university for your expertise, and DIC will manage the • Collaborative Research & Development required by UMS administrative practice letters. Most administrative process and handle all paperwork. An • Sharing of research materials/results industry projects are considered “other” when being added benefit is that your income from the project and considered for indirect charge rates – that is, not any tax withholding will be handled through regular It’s important to note that not all agreements involve fundamental research or instructional for credit – but university payroll channels. financial contributions from external partners. Some agreements simply govern exchange of information, materials, or mutually beneficial endeavors.

24 Commercialization Guide Commercialization Guide 25 What is a Service Agreement? The partner I’m working with wants to STEP 5: GET GOING! Conclusion use an agreement that they drafted. Is In these cases, a client contracts with the university for that allowed? The logistics are taken care of, now you can go to work There you have it. After reading through this guide, a specific service such as consulting an expert or some executing the terms of the agreement. Remember that we hope you have gained a better understanding type of evaluation. Clients typically seek this type of Yes, DIC is happy initiate a review of a client’s proposed we’re always here to support you through the process of the many aspects of commercialization and the arrangement because UMaine may have capabilities or agreement for compliance. We may add or remove if you have questions or concerns. resources available to support you at UMaine. While equipment not otherwise available to the private sector language as part of that process, which generally we have tried to be as thorough as possible, we know in state. Fee-for Service or Testing Agreements can be involves attorneys for UMaine working directly with we haven’t addressed every possible scenario herein. standardized to meet a specification offered repeatedly lawyers who represent the external partner. How do I manage a conflict with an As always, reach out to us with any questions you may or one-off and specialized, with a fee established per external partner? test, per sample, based on fixed price, or based on have. At the very least, we hope you understand that OIED is here to enable all of your research to have the actual costs such as labor, consumables, equipment As soon as you have any concerns about a potential May I negotiate an agreement with an impact it should, and our most important mission is depreciation, and maintenance. There is no expectation conflict, reach out to DIC. We can help mediate external partner? working with you to make that possible. of intellectual property related to these agreements. By conversations and resolve issues, especially if you state statute, UMaine cannot compete with the private As noted previously, you can negotiate the scope of involve us early on. sector in Maine, and DIC will help navigate this with work and the budget, however the remaining terms you, as well as manage the process, budgets, invoices, of the agreement are negotiated by DIC with the Notes: etc. assistance of UMS General Counsel. What if I want to extend an agreement or the partner wants a change?

What is a Facility/Equipment Use May I sign an agreement with an All agreements can be amended with mutually agreed Agreement? external partner? terms at any point in time. Amendments can include, but are not limited to, extended timelines, budget- A Facility or Equipment Use Agreement specifies No, only UMaine and UMS authorized signatories can related changes, expanded or reduced scopes of work, terms and conditions by which a company and its bind the institution to a contract. and early terminations. employees can gain access to university facilities and/or equipment on a short-term basis. At UMaine, this type of agreement is commonly associated with equipment How do I start the process to develop an How do I invoice the company? use at research centers, lab facilities, and start-up/ agreement? incubation spaces. The agreement ensures that the The invoice schedule will be outlined as part of the collaborating party will be liable for any issues and If you’re initiating a project for the first time, call contract or agreement and managed by DIC. You’ll protect the investment in the resource for future use. or email Director of Industrial Cooperation James need to work with DIC to ensure that invoices are sent Beaupré (207.581.1345 / [email protected]) at the appropriate time – e.g., if a contract calls for billing upon completion, you’ll need to notify us that What is a Collaborative R&D Agreement? for a preliminary conversation and to walk through the process of using our Sophia management software to you have completed the work – but you will not need formally submit your project. to invoice anything yourself. A research collaboration agreement between an external client and the university tends to be larger in scope than any of the previously mentioned agreement What happens when I finish the work? types. It will often include milestones and go/no- go decisions. Both the company and the university Once you have fulfilled your obligations to the partner often bring background intellectual property to the under the terms of the agreement, all that’s left is collaboration, and the agreement will specify terms to notify DIC the work is done so that we can submit related to the protection and commercialization of final invoices. After that, the agreement automatically any intellectual property that may be developed. sunsets. Often there is graduate student involvement, and publications related to the project are mutually agreed upon as part of the agreement. Specific project details and other factors dictate the terms of these agreements.

26 Commercialization Guide Commercialization Guide 27 Helpful links Acknowledgements OIED website: https://umaine.edu/econdev/

Sophia: https://umaine.wellspringsoftware.net/ The University of Maine wishes to acknowledge that this document was strongly influenced by the University Helpful project and budgeting forms: https://umaine.edu/econdev/forms/ of Pennsylvania’s excellent and comprehensive “PCI Commercialization Guide.” Substantial adaptations UMaine Startup Checklist: https://umaine.edu/econdev/resource/university-of-maine-startup-checklist/ and revisions were made to reflect the specific policies and practices of the Office of Innovation and Foster Center for Innovation: https://umaine.edu/innovation/ Economic Development, UMaine and the University of Maine System. We are very grateful to the Penn More UMaine commercialization resources: https://umaine.edu/econdev/faculty-resources/idea-development-programs- Center of Innovation for their permission to use their resources/ materials and helpful guidance on our process. UMaine also wishes to acknowledge the time and effort of Office of Research Compliance: https://umaine.edu/research-compliance/ the University of Maine Division of Marketing and Communications for their help with graphic design and Office of Research Administration: https://umaine.edu/ora/ layout.

University of Maine Foundation: https://umainefoundation.org/

University of Maine System Full Statement of Policy Governing Patents and Copyrights: https://www.maine.edu/board- of-trustees/policy-manual/section-209/

UMS Procurement: https://www.maine.edu/strategic-procurement/

Associated Faculties of the University of Maine: https://afum.info/

Universities of Maine Professional Staff Association: http://myumpsa.org/

U.S Patent Office: https://www.uspto.gov

Google Patent Search: https://patents.google.com/advanced

28 Commercialization Guide Commercialization Guide 29 Office of Innovation and Economic Development [email protected] 207.581.2201 umaine.edu/econdev/