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UConn Microbiome Research Seed Grants

The Office of the Vice President for Research (OVPR) is pleased to announce the UConn Microbiome Research Seed Grant program. In support of the Provost’s Academic Plan Award for the UConn Microbiome Initiative, the OVPR will provide $150,000 per year for 3 years to support innovative and collaborative research proposals that will lead to new proposals for extramural funding in microbiome research.

The program provides short-term (one year) seed funding to encourage novel research projects and spark fresh research collaborations with the goal of growing the capacity of microbiome research community to obtain federal research grants or generate intellectual property in the area of microbiome research.

To learn more about the program, visit the OVPR Storrs site.

START PPOC Fund

Through a generous grant provided by the CT Next Higher Education Fund, the University of Connecticut (UConn) Office of the Vice President for Research (OVPR) is administering a new early stage translational research funding program called the START Preliminary Proof-Of-Concept (PPOC) Fund. Under the grant, funding will be made available to investigators at Central Connecticut State University (CCSU), Southern Connecticut State University (SCSU), University of Bridgeport (UB) and UConn.

The program aims to support the preliminary validation of innovative early stage technologies that have possible commercial potential and is designed to bring those technologies to a stage that may be more attractive for additional later stage translational funding support. We invite proposals for the START PPOC Fund from across all disciplines for early stage projects that may one day result in inventions and technologies that address unmet needs and have potential for commercial application.
Process and Timeline – The START PPOC Fund competition will accept written proposals on a quarterly basis and selections for funding will be made solely on a review of the written proposals by a selection committee composed of representatives from CCSU, SCSU, UB and UConn.

To learn more about this program, visit the OVPR Storrs site.

IPB at UConn Tech Park

The Innovation Partnership Building (IPB), an 113,700 square foot research building, officially opened its doors in 2018. The unique facility boasts state-of-the-art specialized equipment and instrumentation for nanofabrication, precision manufacturing, biomedical devices/sensor development, advanced modeling/simulation and material characterization.  The IPB serves a nexus of intellectual, physical and cyber assets intended to foster industry-academic partnerships for research, innovation technology commercialization and job growth for the State of Connecticut.

For more information visit techpark.uconn.edu

Innovation Partnership Building
Innovation Partnership Building

Useful Links

 

Open Source – External Resources & Tools

General Information

What is Open Source?

Open Source Licenses

Overview of Standard/Popular Licenses

Generally Accepted Licenses

Open Source License Selection

Choosing an Appropriate License

License Differentiator – Interactive License Selection Tool

Tabular Comparison of License Terms

Software Licenses in Plain English

License Compatibility

Available Technologies

Over 600 patents have been issued based on UConn technologies. Visit the UConn Innovation Portal to browse UConn technologies available for licensing or call us at 860-679-3992.

 

 

Tech Transfer FAQs

Protecting Your IP

What is a patent?

A patent gives the holder the right to exclude others from making, using, selling, offering to sell and importing any patented invention. Note, however, that a patent does not provide the holder any affirmative right to practice a technology, since it may fall under a broader patent owned by others; instead, your patent only provides the right to exclude others from practicing it. Patent claims are the legal definition of an inventor’s protectable invention.

Is there a legal definition of an invention?

The United States patent law requires that an invention meet the following three criteria, in order to be eligible for patent protection:

  • Novelty: The invention must be demonstrably different from already available ideas, inventions or products (known as "prior art"). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes, machines, compositions of matter and materials are patentable. Incremental improvements on known processes may also be patentable.
  • Usefulness: For an invention to be patentable, it must have some utility or application, or be an improvement over the existing products and/or technologies.
  • Non-obviousness: The invention cannot be obvious to a person of "ordinary skill" in the field. Non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.

What is a copyright?

  • A copyright is a form of protection provided by the laws of the U.S. and other countries to the authors of "original works of authorship." This includes literary, dramatic, musical, and artistic and certain other intellectual works as well as computer software. This protection is available to both published and unpublished works. The Copyright Act usually gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc. In the United States, copyright protection lasts the lifetime of the author plus 70 years. In some instances, TCS registers copyrights, but generally not until the commercial product is ready for production and distribution/sale. All new software and source code should be disclosed as with any new invention and will be processed and managed by TCS.

How do I represent a copyright notice?

Although copyrightable works do not require a copyright notice, we do recommend that you use one. For works owned by UConn use the following notice: "© 20XX University of Connecticut. All rights reserved."

What is a trademark or service mark?

A trademark includes any word, name, symbol, device or combination that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name.A service mark is any word, name, symbol, device or combination that is used or intended to be used in commerce to identify and distinguish the services of one provider from those of others and to indicate the source of the services. It is not necessary to register a trademark or service mark to prevent others from infringing upon the trademark.

Trademarks generally become protected as soon as they are adopted by an organization and used in commerce (even before registration). With a federal trademark registration, the registrant is presumed to be entitled to use the trademark throughout the U.S. for goods or services for which the trademark is registered. UConn has trademark protection on items such as sports logos, mascots, emblems and images of university events.

Working with Industry

What is a Sponsored Research Agreement?

A university/industry research collaboration is formalized by a Sponsored Research Agreement (SRA). The sponsor and faculty member agree on the specifics of the work and a tentative budget. The final budget and all other aspects of the final contract are negotiated via the Sponsored Program Services (SPS) on the Storrs campus or the Office of Research and Sponsored Programs (ORSP) at the Health Center. The contract addresses a variety of issues including amount of funding, scope of work, IP rights, governing law, etc.

What are Licensing Agreements?

A license grants permission by the owner or controller of intellectual property to another party, under a formal agreement, for use of the intellectual property. License agreements describe the rights and responsibilities related to the use and exploitation of intellectual property developed at UConn. University license agreements usually stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good and provide a reasonable return to UConn. Licenses can be exclusive (only one company/group can make use of the technology during the license period) or non-exclusive (technology can be licensed to others without restriction)

A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established company with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a startup company is a better option. It is rare for UConn to have multiple potential licensees bidding on an invention.

For more information on Licensing Agreements, contact:

Gregory Gallo, Director of Technology Transfer
(860) 679-8774
gregory.gallo@uconn.edu

Can I share my new idea or invention with industry or other inventors outside of UConn?

Non-Disclosure Agreements (NDAs) or Confidential Disclosure Agreements (CDAs) are used to protect the confidentiality of an invention during evaluation by potential licensees. CDAs/NDAs also protect proprietary information of third parties that UConn researchers need to review in order to conduct research or to evaluate research opportunities. UConn enters into CDAs/NDAs for university proprietary information shared with someone outside of UConn. CDAs/NDAs can be prepared or reviewed and signed by the SPS or TCS.

Can I share and/or accept materials from industry or other researchers outside of UConn?

Yes, but the university must execute a Material Transfer Agreement (MTAs) in each case. MTAs are used for incoming and outgoing materials at UConn, especially for outgoing materials to industry, and are administered by TCS. These agreements describe the terms under which UConn researchers and outside researchers may share materials, typically for research or evaluation purposes. Intellectual property rights can be endangered if materials are used without a proper MTA. Material transfers going out of UConn must be accompanied by a formal agreement that addresses a variety of issues including definition of the materials, ownership, licensing rights, publication, etc. MTAs will be generated, reviewed and negotiated by the Sponsored Program Services (SPS) or Technology Commercialization Services (TCS).

Can I accept a contract from a company to provide non-research services that support their development?

Fee for Services Agreements (FSAs) are used in those cases where UConn may perform service-for-a-fee, which is essentially running previously developed tests on a sponsor’s materials, if such work is consistent with a department’s academic mission, and if UConn is uniquely qualified and positioned to do so. Such work is not research, and fee funds cannot be used to conduct research. The material and data provided, as well as those generated, may be proprietary to the sponsor. A pre-agreed Statement of Work is required, and to avoid problems, the Principal Investigator (PI) should not vary from it or any other relevant agreed upon conditions. FSAs are negotiated by the SPS, or the purchasing department of the Health Center.

Can my industry partner have rights to my IP without taking a license?

Yes through an Option Agreement. Option Agreements are entered into with third parties wishing to evaluate the technology prior to entering into a full license agreement. Option clauses within research agreements describe the conditions under which UConn preserves the opportunity for a third party to negotiate a license for intellectual property. Option clauses are often provided in SRAs to corporate research sponsors.

Policies & Compliance

Experience indicates that there is no uniform approach that will meet the needs of our diverse industry partners.  The University is committed to working with its partners to provide leases for incubation space, contact terms and IP rights necessary to meet company goals. Faculty working with industry partners should contact the Technology Commercialization Services (TCS) about specific requests; our policies provide an ability to offer industry research partners options that serve their unique needs.

Licensing Policies

Royalty Sharing Policy

The University of Connecticut policy provides that our faculty inventors share in revenue generated by their discoveries as follows:

  • 33 1/3% to the Inventor(s) as personal income (Multiple Inventors share the income).
  • 33 1/3%to be further subdivided as follows: (a) 50% to the Inventor(s)’ research program to be administered through an account set up by the Office of the Vice President (OVPR). (This allocation is only available to Inventor(s) having an active research program at the university); 30% to the Inventor(s)’ primary academic unit (department) or other administrative unit to be administered by the Director or Department Head; and (c) 20% to the Inventor(s)’ school or college to be administered by the Dean.
  • 33 1/3% to the University of Connecticut.

If a faculty member is no longer at UConn, the portion of the revenue that would have gone to the inventor’s research program (50% of the 33 1/3%) will be shared equally between the appropriate dean and the university.

License Back Policy

If the University does not believe that it can successfully commercialize a University Invention, and if the faculty member is not interested in founding a Startup, the University will offer the inventor a license of the University Invention (such license referred to as a “license back”). In addition, the inventor may request a license back from OVPR at any time. OVPR is not required to grant a license back but will respond to any request within three months.  If the University elects to license back the University Invention to the inventor, the inventor, as licensee, will assume obligations related to patent expenses and commercialization and will agree to pay a portion of the gross revenue that the inventor receives through his or her commercialization efforts. In addition, the inventor will not be entitled to the net revenue payments described in Section 3 of this policy.

As stated in the UConn IP and Commercialization Policy

Other Policies

Guidelines for Faculty, Staff, and Students who are affiliated with a company:  Guidelines for FACs and SBIR-STTR

Student Employment:  https://policy.uconn.edu/2011/06/02/use-of-students-in-outside-employment/

Faculty Consulting:  https://consulting.uconn.edu/

Financial Conflict of Interest:  https://research.uconn.edu/fcoi-home/

CT Code of Ethics:  https://policy.uconn.edu/2011/05/24/guide-to-the-state-code-of-ethics/

UConn Code of Conduct:  https://policy.uconn.edu/2011/05/17/employee-code-of-conduct/

Intellectual Property and Commercialization:  https://policy.uconn.edu/2015/10/08/intellectual-property-and-commercialization-policy/

Starting a Company

A startup is a new business entity formed to commercialize one or more related intellectual properties. Forming a startup business is an alternative to licensing the IP to an established business.  There are several factors you should consider to determine if a startup is viable path. Examples include:

  • Idea-Team-Plan Trifecta.  A successful start-up evolves around three key ingredients:  (1) a new idea, supported by initial data, (2) an experienced team to develop and deliver technical and business goals, and (3) a business plan that serves as a road map.
  • Not every great idea needs to be a company.  Consider alternative paths, such as partnership, co-development, licensing, and more.
  • Execution Risk.  While having a new idea is necessary for creating a startup, it is not sufficient for its success. It requires focused team-work, and willingness to take in advice and to pivot when necessary.
  • Competition and Collaboration.  Two key elements to be fully aware of and respond to with a dynamic approach.
  • Funding.  How much capital is required to deliver various milestones, what sources to pursue, and Return on Investment (ROI)?
  • Market Size and Dynamic.  Is the market large enough and is it a stable, shrinking or expanding market?
  • Revenue and Exit.  What is the revenue projection and potential key opportunities for exit?

TCS Venture Development can help to determine if a startup company is viable, and will advise on other key issues relating to starting a company. The choice to establish a new company for commercializing intellectual property is a joint decision made by TCS and the inventors. If a new business startup is chosen as the preferred commercialization path, TCS can assist you and the other founders in meeting investors, consultants and entrepreneurs and accessing other resources at UConn to advise you in founding the company. It is advisable for inventors to have agreements regarding their roles with the startup reviewed by their own counsel to ensure that all personal ramifications – including taxation and liabilities – are clearly understood.

The general process for the selection of potential technologies for a university startup includes a review of inventions based on criteria such as:

  • Technology novelty, supported with initial data
  • The market size
  • The technology can be adequately protected through patents, copyright or trademark to create barriers that make market entry difficult for competitors.
  • The technology is scalable.
  • The estimate of the net present value of the return (less the costs of getting the business going) is much greater than the value that can be obtained by executing a typical license with an existing company.
  • Is a prototype/proof of concept available?
  • Do the inventors have a reasonable understanding of what is required to build a business, and what their roles may be?
  • Does the business model have a visible path to profitability?
  • Are the initial management and financing needs reasonably clear?

TCS Assistance:

  • Early stage involvement. TCS Venture Development staff is actively involved in the early stages of the company formation and work with their network of professionals to develop a business plan and find initial management, space and other critical elements. In some cases, the advisors and Executives In Residence (EIRs) may take on interim management roles to facilitate the accomplishments of key milestones, such as drafting a business plan, meeting with venture capital firms or angel investors to obtain funding and assisting with a liquidity event.
  • Business/financing assistance.  TCS Venture Development staff can provide business help and/or financing advice.  We have several programs for assisting in market research, business planning and the set-up of new companies including a business incubator that offers space and business services and the Business School’s Innovation Accelerator where MBA students and faculty undertake semester-long projects.
  • Connections with industry partners.  TCS Venture Development helps to connect researchers and industry partners.  We strive to connect external entrepreneurs and businesses with collaborators within a university or to identify resources that will help them advance their technologies and business interests. Many opportunities to create mutually beneficial projects between university researchers and regional tech entrepreneurs can be initiated thanks to this ability to efficiently connect.
    • TCS serves in a liaison role.  External businesses and entrepreneurs are invited to contact TCS Venture Development staff and discuss their initiatives, needs, goals and objectives. TCS works with these clients to understand the key issues and to determine if there are opportunities to develop mutually beneficial working relationships and projects. Venture Development staff can provide business help and/or financing advice.
    • Establishes projects that advance businesses toward commercial success.  These projects are selected to align with UConn research interests, such that as early-stage companies achieve success, they are well positioned to strengthen their collaborations with UConn researchers. These projects are also selected based on the ability to generate positive economic development outcomes in the region. Typical engagements include market research projects on behalf of small firms who are applying for SBIR grants that, if successful, will lead to opportunities to engage UConn researchers and their graduate students on larger development programs. UConn faculty who are interested in reaching out to small technology businesses in the state are encouraged to contact TCS.
  • Incubator program. UConn’s Technology Incubation Program (“TIP”) is part of TCS.  TIP offers new companies that have a technology linkage or synergistic relationship with UConn the ability to be located on campus and access resources that could be otherwise unattainable for a fledgling company. TCS supports the incubation process offering lab and office facilities on campus, business-planning resources, and access to faculty experts, expensive instrumentation and specialized equipment. In some cases TCS clients are working with UConn technology and others have their own intellectual property.  TIP provides the following services to startup companies:
    • Investment Network – Access to various sources of capital available within CT and other locations, through direct introduction, office-hours with investors and public and private events.
    • Library and Computer Network – Access to UConn Libraries, the largest public research collection in the state. The University of Connecticut Libraries provide users with intellectual content that fulfills their academic and research needs through electronic and physical access.
    • Equipment/Instrumentation – Some of the departments and faculty have large and expensive specialized items of equipment. TCS’s incubator helps negotiate agreements between the relevant faculty and the company, given that time is available on the instrument and client employees have been properly trained.
    • Business Support – Through a network of service providers and advisors, TIP provides a variety of business consultants including accountants, lawyers and subject matter experts to help with issues important to startup companies. TCS staff can support business plan development and financial planning. TCS organizes educational and networking events to promote collaboration among faculty and company scientists, to provide exposure to experienced entrepreneurs and entrepreneurial resources, and to assist through connections with advisors and mentors. Through the School of Business, TIP can arrange access to knowledgeable faculty and students able to conduct business development projects for emerging companies. Learn about our TIP program.

For additional resources to help you start your business, see our Startup Guidebook.

Licensing

Once a faculty discovery has been patented, that’s not the end of the line!  The next step is to find an industry partner who would like to license the technology.

Marketing a technology:

TCS uses many sources and strategies to identify potential licensees and market inventions. Sometimes existing relationships of the inventors, TCS and other researchers are useful in marketing an invention. Market research can also assist in identifying prospective licensees. In addition, we also examine other complimentary technologies and agreements to assist our efforts. Faculty publications and presentations are often excellent marketing tools as well.

Licensees can be identified in many ways. First, the inventors are often aware of the commercial companies who would be interested in the work. Industry-specific marketing efforts, including trade show participation, affiliations and market research carried out by TCS, also seek to identify potential licensees. Additionally, issued patents listed by the USPTO can provide names of companies who currently have patents similar in nature; often these can prove to be potential licensees.

How you can help:

Your active involvement can dramatically improve the chances of matching an invention to an outside company. Studies have shown that 70% of licensees were known to the inventors. Thus research and consulting relationships are often a valuable source for licensees. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful technology transfer results are obtained when the inventor and TCS Licensing Director work together as a team to market and promote use of the technology.

Working with industry:

Marketing technology to a potential licensee will usually require that a Confidentiality Agreement be established.  The OVPR can negotiate these agreements for you and has the legal authority from the University to do so. Confidentiality Agreements, named Non-Disclosure Agreements (NDAs) or Confidential Disclosure Agreements (CDAs), are agreements between UConn and an outside entity (company, person). These are used to facilitate discussions of information that the parties wish to keep out of the public view. For companies, sharing of their business needs can lead to developing solutions with UConn personnel; however, they may not want such needs to be known to their competitors. For UConn, maintaining confidentiality can preserve patent rights to inventions. Many university offices and the programs of OVPR can provide NDAs/CDAs and can ensure proper agreements are put in place.

Once their evaluation is completed, the potential partner may want to discuss the terms of a license. TCS will negotiate the terms of the license with input from the inventor regarding valuation, and other obligations, that occur in such legally binding agreements. Other terms that are included in a license include exclusivity versus non-exclusivity, world-wide rights versus rights in only some territories, all fields of use versus restricted fields of use, and many other considerations. On occasion, we will sign an option agreement, which gives a company the right to evaluate the technology for a limited time prior to making a decision about licensing (usually 6 months – 1 year). The TCS is experienced in negotiating contracts and is the designated legal authority from the University to do so. If a potential partner asks what kinds of terms the University would want in a license, please refer them to TCS.

Agreement Management:

TCS tracks the progress of the licensee towards milestones and goals established in the signed agreement. Licenses usually state that technology progress reports must be submitted regularly until a product hits the market. Some companies will fund research and development of the technology at UConn in the inventor’s lab. Others may offer a consulting position to the inventor as they develop a product at the licensee’s facilities. TCS usually continues to manage the patents, if there are any, and will sometimes need to handle patent interferences, patent infringement or deal with arbitration or litigation surrounding a technology or a license. Once a product is offered for sale, then TCS requires quarterly reports and royalty payments from the licensee, although specific terms vary from license to license. Payouts are made according to the royalty sharing policy after UConn has recouped its out-of-pocket expenses, primarily the cost of obtaining patent protection.

License Back Policy:

If TCS decides not to pursue a patent on a technology, the inventors have the option to license back the technology. The license back is a legal agreement that enables the Inventor(s) to patent and commercialize technology developed at the University.

Royalty Sharing Policy: 

Inventor contribution percentages refer to the share of net royalty income that is split amongst the inventors; the standard disposition is equal sharing. However, it is up to the inventors to propose and agree on a different formula and communicate that agreement to TCS. This is accomplished by filling out the back of the Invention Disclosure Form. Invention-related income is allocated based on the university’s Royalty Sharing Policy.

 

If you have any questions please contact us!

 

Protecting Your IP

As researchers uncover new knowledge, often times they develop novel techniques or demonstrate new and valuable applications of their results.  New ideas that can be applied in useful ways can be considered new inventions, and inventions are intellectual property (IP) that can be considered for patent protection. IP includes inventions and other creative works and/or materials that may be protected under the patent, trademark and/or copyright laws.

Understanding and being mindful of intellectual property is so crucial in a research environment because:

  • in the course of pure research, you may be creating inventions to solve problems and not realize it
  • technologies created in faculty labs belong to the University and need to be disclosed
  • inventions can be commercialized, which can lead to income and research support for the inventor(s)

There is a logical order to ideas as they take shape, coalesce into inventions and move forward to commercialization. TCS guides this process and is often the first stop for inventors and industries seeking to advance new ideas and products.  TCS manages all intellectual property created at the university.

TCS will assess the invention for its commercial potential by evaluating its technical strength, market potential, patentability and strength as if issued as a patent. We will also take into consideration whether a prototype exists or proof of principle experiments are complete, as well as whether a potential commercial partner has already been identified or has expressed interest. If the invention is considered to be a reasonable risk, a patent application will be filed.

Patenting is a legal and technical process, which is overseen by TCS, but which very much involves the inventor(s) and the University’s outside patent attorneys. Specifically, the inventor(s) may be asked by the attorney to: clarify details of their invention,  describe all its possible uses, differentiate the invention from related technology and describe its potential advantages, and help define what each potential inventor contributed to the creation of  the  invention. The inventor(s) will also be asked to review patent applications and to help respond to questions raised by the Patent Office. To be granted a patent, an invention must be novel, non-obvious, and useful.

Faculty Invention Ownership

UConn owns all inventions made by its employees while working under a grant or contract to UConn, or while using UConn resources.

U.S. patent law specifies that all inventions are owned by the inventor(s) unless the inventor(s) has transferred ownership or title to another entity. This applies to UConn. Under Connecticut law (C.G.S., Sec. 10a-110b), UConn has the right to own title to any invention conceived by university employees (including but not limited to full-time and part-time faculty, post-doctoral fellows, student employees, research assistants, visiting scientists and emeritus professors) in the performance of customary or assigned duties or which emerges from any research or other program of the university, or which is conceived or developed wholly, or partly, with the use of university funds, facilities, equipment or materials.

That is, by virtue of employment, employees of UConn are required to assign their right, title and interest in inventions to the university. Click here to review an invention ownership flowchart.

Student Contribution to an Invention

A student can even be the sole contributor or inventor. The policy for ownership of an invention developed with or by a student is the same as for any other member of UConn in circumstances where a student is participating in sponsored research at the university and the research contract addresses ownership. Procedurally, a student who believes he or she should have clear title to an invention, which is developed at the university, should contact TCS. Upon disclosure of the invention and examination of the details surrounding its development, the university may execute a waiver of rights regarding the invention to the student, or ask the student to assign his or her rights to UConn.