Innovators

Have a novel idea, unique discovery or new technology?

OIC works with UH faculty, researchers, students, staff and alumni to identify and navigate individual innovation journeys, and build sustainable, business ventures.

 

OIC Process

Step 1: DISCLOSE

Submit an invention disclosure to start the process.  Review FAQs for more information

Working with OIC

Contact OIC as soon as you think you may have an invention or discovery or are thinking of starting a business. An OIC staff member will work with you to determine the next steps and can help you complete any required form. Also contact us if you have any questions about disclosing an invention or protecting your intellectual property.

For questions about our services or programs, please contact our office at oic@hawaii.edu or (808) 956-9024.

For questions related to  disclosing an innovation or the technology transfer process, the best person to contact is the Licensing Associate assigned to your invention. Otherwise, you can contact OTT at uhott@hawaii.edu or (808) 956-9024.

To request a material transfer agreement (MTA), contact uhmta@hawaii.edu.

To request a confidentiality or non-disclosure agreement, contact uhnda@hawaii.edu.

Technology transfer is the process of transferring knowledge and discoveries to the public. This includes publishing research, educating students to enter the workforce, presenting discoveries at conferences and relationships with private industry.

OIC executes license agreements which grant rights in an UH invention or discovery to a third party for a limited time in order to allow the third party to develop the invention and bring it into the market. License agreements include performance requirements as well as financial terms. Revenue is shared among the inventors, schools/colleges and UH.

A Material Transfer Agreement (MTA) outlines the transfer of materials (ie: innovations in engineering, agriculture, health, physical sciences, etc.) for research use. It addresses any related issues including, but not limited to: ownership of transferred material(s); any limitations of use; dissemination of material(s); publication rights; confidentiality and any other rights to inventions and research results.

A Non-Disclosure Agreement (NDA) is a legally binding document that prevents parties involved from sharing any confidential and/or proprietary information.

Requests to review and execute Material Transfer Agreements (MTAs) or Non-Disclosure Agreements (NDAs) may be submitted via email or through the online request form.

**Processing time varies, depending on the complexity of the matter. It is preferred that the OIC work directly with the other party to allow for timely follow up, and to keep the processing time to a minimum.

Disclosing an Invention

Under UH policy EP12.205, UH may have ownership rights in your invention if:

  • You are a UH employee, and/or
  • The invention was developed using UH equipment, facilities, funds or other resources.

For copyrights: UH employees may have exclusive rights to original works of authorship unless it is a “work for hire.” “Work for hire” is defined as a work:

  • Commissioned by UH and prepared by an employee who is hired or assigned to specifically produce such work; or
  • Prepared by a person (not a regular UH employee) that is specifically commissioned by UH and has signed a written agreement that provides that the work is a work for hire.

To disclose an invention, you may use the myInvention portal or visit the OIC website to download a fillable Word document. Completed and signed disclosures can be emailed, faxed or mailed to OIC. Signatures of all UH inventors and the immediate supervisor of each UH inventor is required.

Submit a disclosure form when you have discovered something unique and before presenting it via publication, presentation or other ways of publicizing the discovery. Be sure to let OIC know of your plans to publish or talk to anyone besides the innovators about your invention. Publicly disclosing your innovation may lead to a loss of protection for your innovation.

Rights to any intellectual property coming out of a sponsored research project depends on the research agreement. The U.S. government has certain rights to all inventions developed with funding from a federal grant or contract.

If you have co-innovators from other institutions or companies, OIC will contact them and work with their institution or company to agree on the next steps for the innovation.

You can log into myInvention to check on the status. You can also contact  the Technology Licensing Associate (TLA) assigned to your innovation, or OTT for the current status of your innovation.

A license is a contract in which the owner of intellectual property grants permission for another party to act under all or some of the owners’ rights. OIC executes license agreements to grant UH rights in a specific invention/technology to a third party for a period of time.

Revenues are shared according to UH Executive Policy 12.205 and collective bargaining contracts. The revenue split can be found at www.hawaii.edu/research/uh-ip-policies/

Once OIC receives a completed disclosure, a Licensing Associate will contact you in a few weeks to review your disclosure and ensure a thorough understanding of your invention. Based on this information, OIC decides on whether to file a patent application. These first steps will take approximately 2-3 months.

The Bayh-Dole Act is a federal law that allows universities, nonprofit research institutions and small businesses to own, patent and commercialize inventions developed using federal funds. This law created a uniform patent policy among federal agencies funding research (including reporting requirements) and reserves a royalty-free license to the federal government. Bayh-Dole regulations are found under Title 37, Section 401 of the Code of Federal Regulations.

University innovations are typically in the early stages of concept and development and require a significant amount of time and investment in order to commercialize, or translate the innovation to market. Disclosing your innovation is the first step. Note, publicly disclosing your invention before filing a patent application may lead to a loss of protection for your invention.

UH policy also requires that any innovation developed and/or modified through University research, must be disclosed on a timely basis to UH. This allows UH to fulfill its obligations to the federal government under the Bayh-Dole law and UH patent and copyright policy.

Net licensing revenues may be shared with UH employees, per UH patent and copyright policy.

Submit a Disclosure

Innovation disclosure submission options:

Option 1: Online via myInvention (UH login required) | User Guide | FAQs

Option 2: Downloadable form

Your disclosure will be logged and assigned a docket number upon receipt. A disclosure creates a record of the innovation, the creator(s) involved, who sponsored the work, and any public disclosures and publications that have been made. A technology licensing associate will review your innovation disclosure and contact you to discuss further within a few weeks.

Related Information

Step 2: ASSESS

Meet with OIC team to analyze innovation patentability, tech readiness level, commercialization pathway.  See FAQs for additional background.

Intellectual Property FAQ

A patent gives the holder the right to exclude others from making, offering to sell or selling, and importing the patented invention. Each patent is enforceable only in the country the patent is issued. The patented invention is defined by the patent claims in the issued patent. In the US, patents are issued by the US Patent and Trademark Office (USPTO).

A copyright is a form of protection for authors of original works. Copyrights protect the form of expression and give the holder the exclusive right to reproduce the work, prepare derivative works, distribute copies and perform the work. Copyright may be used to protect educational materials, artistic works or computer software. Copyrights are registered by the Copyright Office of the Library of Congress.

According to US patent law, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent” subject to the conditions and requirements of the law.

  • “Process” is defined by law as a process, act, or method, and primarily includes industrial or technical processes.
  • “Manufacture” refers to articles that are made, and includes all manufactured articles.
  • “Composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.

A patent cannot be obtained upon a mere idea or suggestion. Rather, a complete description of the subject matter for which a patent is sought is required.

More information concerning patents can be found on the USPTO website.

According to the US Patent and Trademark Office, an inventor is a person who “contributes to the conception of the invention.” Inventorship is a matter of law and determined by US patent law. For more information, please visit www.uspto.gov.

Throughout the process, inventors are needed to review drafts of the patent application, answer any technical questions about the invention and assist patent counsel with providing responses to any communications from the USPTO.

Filing and obtaining a US patent application may cost between $25,000 and $30,000. Filing and obtaining patents in other countries may cost an additional $25,000 or more per country. Once a patent is issued in the US or other countries, there are required maintenance fees to keep the patent alive.

A public disclosure occurs when you show your disclosure in any form that would allow for someone skilled in the art to reproduce your invention. This includes oral presentations at a conference or meeting, publishing research papers, thesis/dissertation presentations and posting on the Internet.

A trademark or servicemark is a word, name, symbol or device used in trade with goods to indicate a source of goods that distinguishes it from other goods.

Step 3: PLAN

Strategize and determine commercialization pathway options and opportunities.  OIC staff provides guidance on identifying options to further develop and commercialize your innovation, including:

  • License – Marketing, identifying and negotiating a license agreement with a company for rights to an innovation
  • Startup – Providing resources and/or assistance with an innovation startup business.  See Ideation Studio@UH program for more information.
  • Collaboration – Connecting companies with businesses and resources to further develop an innovation

Step 4: PROTECT

Receive Intellectual Property (IP) guidance on options to protect your innovation.

Step 5: CONNECT

Access and expand innovation network partnership and marketing opportunities.  OIC staff may assist with providing access to networking events; customer discovery support; investor pitch training and opportunities; potential business and/or other partnerships.

Step 6: COMMERCIALIZE

Advance commercialization journey – licensing and partnership agreements or startup pathway.

Step 7: MANAGE

Track and manage innovation portfolio and opportunities with the help of the OIC team.  OIC manages UH’s IP portfolio, including administering license agreements, tracking innovation development and/or growth of UH startups.