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Inventor FAQs

+ I think I have an invention, what do I do? 

Complete an Invention Report Form and submit it to your Licensing Officer or to techventures@columbia.edu. We strongly encourage inventors to submit an Invention Report Form as early as possible and, ideally, before any public disclosure. Public disclosures include, for example, discussions with a company or investor, presentations, lectures, thesis defense, and posters. Grant applications, journal submissions, and abstracts may also be considered public disclosures, depending on the policies of the sponsor, journal, and/or conference. Public disclosures can impair patentability options for your invention and affect the ability to maximize the commercial potential of your invention.

If you have questions before submitting your Invention Report Form and are unsure who your Licensing Officer is, feel free to schedule an appointment through our Inventor Office Hours

+ What options are available if I've already published or presented on my invention? 

We can still pursue an application to protect patent rights in the United States if we can file a U.S. patent application within one year of the date on which the invention was first disclosed to the public. In most other countries, rights will be irretrievably lost. The decision to file a U.S. patent application is still subject to an assessment of commercial potential. In certain industries, foreign rights are critical to commercial success and loss of such rights may even affect a decision to pursue U.S. patent protection for the invention. This is the reason we encourage inventors to submit the Invention Report Form to our office as early as possible.

+ How do I work with Tech Ventures? 

Transforming an invention into a successful product is an exciting and challenging process which requires good working relationships among inventors, Tech Ventures, and business partners. At Tech Ventures, your main point of contact will be your Licensing Officer, who will work with you to identify, coordinate, and manage the wide array of university and external resources and expertise that are required at each stage. For more information on the technology transfer process, please click here.

+ Who pays the patent costs? 

The University oversees outside patent counsel to manage patent prosecution and assumes all costs associated with doing so, until the point at which the technology is licensed. Once the technology is licensed, licensees are expected to reimburse the University for past patent expenses and to pay for patent expenses incurred going forward. While Tech Ventures makes every effort to ensure patent reimbursement from licensees, in certain circumstances, extraordinary patent costs associated with licensed patents may be deducted from gross licensing revenues before those revenues are distributed.

+ Who owns the invention and the patents? 

University policy requires that inventors disclose and assign to the University all rights and interest to their inventions, and partner fully with the University in the preparation and filing of patents related to these inventions. In return for such disclosure, assignment, and cooperation, Columbia, through the Tech Ventures office, commits resources to patent and market those inventions that are protectable and commercially viable.

+ Who else may have rights to and/or legal interests in the invention? 

Inventions which arise from research supported with external funds may be subject to specific reporting and compliance obligations.

Federally-Funded Research. Columbia must report to the government all inventions and patent applications arising from federally-funded research as well as licenses granted for rights to those inventions and applications. In addition, the University must grant the federal government a royalty-free, nonexclusive license to these technologies, though the government very rarely exercises its license rights. This government license is always noted in our license agreements and is a non-negotiable provision of all licensing agreements for any invention arising out of federally-funded research in the United States.

Industry-Sponsored Research. The terms of an industry-sponsored research agreement may require reporting of inventions and may convey to the sponsor a license to certain research results and inventions that arise from the sponsored research. If you have any questions about industry-sponsored research, please feel free to contact your Licensing Officer or send a general inquiry to techventures@columbia.edu.

Other Sources of Sponsored Research Funding. Traditionally, grants from other sources, such as private foundations, philanthropies, state and local governments, have not required invention reporting and special intellectual property considerations. Increasingly, however, we are seeing more sponsors from all sectors adopt similar reporting obligations as federal and industry sponsors. With respect to intellectual property considerations, some sponsors require specific licensing language to ensure their missions and objectives are met.

+ My invention needs further development to be commercially viable. Can Tech Ventures help me with this? 

Tech Ventures is available to assist faculty in securing funding from government, private, corporate, or industrial sources for translational research programs. Typically, our role includes negotiating agreement terms for industry sponsored research agreements, with particular attention to the intellectual property clauses. We are best able to help if Faculty give us an early notification of any potential industrial collaborations or sponsored research.

+ What happens to proceeds generated from licensing of inventions and patents? 

Inventors/researchers and their labs, schools, departments, and the University all share in any income earned. Revenue received through up-front payments, option fees, equity holdings, milestones, annual license fees, and royalties is distributed in accordance with the Intellectual Property Policy in the University's Faculty Handbook, which is summarized below.

Similar to many of our peer universities, CTV strives to distribute license revenue approximately every six months, assuming the cumulative revenue for the technology to be distributed has exceeded a minimum of $1000. If you have questions about the timing of your specific distributions, please email us at techventures@columbia.edu.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Note: Certain caps and deductions may apply. Please refer to Appendix D of the Faculty Handbook for details.

+ What are typical terms of a license agreement? 

A license agreement should provide for a fair return to patent owners if the product is successful in the marketplace. Typically, the value of patents is returned to the University as royalties on sales of products. Licenses may also provide for the University to receive other payments such as icense issue fees, license maintenance fees, minimum royalties, and milestone payments. When the technology is licensed to a new venture, Columbia may take equity in lieu of some or all cash payments.

FAQ for students