Working with Our Team

Advancing the Arizona State University Knowledge Enterprise

Working with Our Team

Working with Our Team

Under President Michael Crow’s vision for the New American University, technology transfer is a critical mechanism for achieving societal impact from the dissemination of knowledge created by university faculty, researchers and students.

Skysong Innovations’ model is based on the rapid and wide dissemination of university discoveries and inventions into the marketplace.

For these reasons, Skysong Innovations was created as a separate corporate entity to act as a proxy for ASU and select partner institutions, but with substantially increased flexibility and speed in its deal-making and venturing activities.

Our Experience

ASU, through the activities of Skysong Innovations, is annually one of the top-performing U.S. universities in terms of intellectual property inputs (inventions disclosed by ASU researchers) and outputs (licensing deals and start-ups) relative to the size of the university’s research enterprise.

The Skysong Innovations executive team comprises industry and university veterans with years of professional experience in technology evaluation and marketing; product development; intellectual property; and startup development.

Skysong Innovations operates as the exclusive intellectual property management and technology transfer organization for ASU. All activities are conducted in accordance with the policies of the Arizona Board of Regents and ASU.

“It is a pleasure to work with the business development and patent professionals at Skysong Innovations. They are responsive to our needs, proactive in their thinking and transparent about the activities and decision-making processes related to commercializing ASU technologies”
Joshua LaBaer, Executive Director and Professor, Biodesign Institute, ASU

Why Patent?

The Benefits of Working with Skysong Innovations

A patent helps protect the inventor(s) and any commercial partners, who frequently must make sizable investments to bring new technologies to market. We understand the importance of publishing research and sharing ideas, but in the commercialization process this must be carefully balanced against the need to proceed in a thoughtful and secure manner.

We carefully review the commercial potential for an invention before investing in the patent process. However, because the need for commencing a patent filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible.

Due to their expense and the length of time required to obtain a patent, patent applications are not possible for all Arizona State University intellectual properties. 

Patent quick facts:

  • Patent costs and legal fees for accepted disclosures are paid by ASU.
  • Patents are a method of publication, as well as translating inventors' work into a product that will benefit society.
  • Patent holders have the ability to prevent others from infringing on their inventions.
  • Our experienced team guides inventors through the patenting process with the goal of filing the best patent application possible while reducing paperwork for researchers.
  • We have excellent industry contacts and years of experience negotiating contracts that work for both inventors and companies.
  • License agreements and Start-up companies provide income to the inventors, the University and inventor departments.
  • Skysong Innovations has the resources and the reputation for defending its patents.

Faculty FAQs

Who is responsible for patenting?

Skysong Innovations contracts with outside patent counsel for IP protection, thus assuring access to patent specialists in diverse technology areas. Inventors work with the patent counsel in drafting the patent applications and responses to worldwide patent offices.

Who pays the costs of patenting an invention?

We cover all the costs of patenting an invention. After an invention is licensed, it is common to ask the licensee to reimburse these expenses.

Who is eligible to disclose an invention to Skysong Innovations and to use Skysong Innovations' services?

Any employee or student of the Arizona State University may disclose an invention to Skysong Innovations.

When will I receive payments if/when my technology has been licensed?

Licensees typically make contractual payments of scheduled royalties tied to revenues generated by your invention. In most cases, payments are distributed the month after they are received.

How will money be distributed if/when my invention is licensed?

Distributions are based on ABOR and ASU policy and completed by ASU.

ABOR/ASU DISTRIBUTION POLICY:
ABOR ASU, the creator’s share of “Net income” received by ASU from commercialization of intellectual property is divided equally among all inventors unless each and every inventor agrees in writing to a different distribution of the creator’s share.

Please contact us if the creators wish to enter into a sharing arrangement for the creator’s share that is different from that provided under university policies.

What if a collaborator from another institution has contributed to my invention?

Skysong Innovations has inter-institutional agreements with many organizations. If this is not the case, we would negotiate such an agreement with your collaborator's institution. This type of agreement determines which institution would take the lead in patenting and licensing of the invention, as well as how any royalty income would be shared.

If I publish a paper or make a presentation on my technology at a meeting, will my invention still be patentable?

After you publish, present or otherwise publicly disclose your invention, you have one year from your first disclosure date to file a U.S. patent, referred to as an inventor grace period. After one year has passed, you lose all U.S. patent rights. Therefore, it is best to file a patent before or as quickly as possible after a public disclosure. Most foreign countries have no grace period; that is, publication (or any form of public disclosure) of your invention immediately bars you from obtaining foreign patent rights.

Does Skysong Innovations file foreign patents on inventions?

Yes, we will file foreign patents on inventions, depending on the availability of foreign patent rights and the level of licensing interest in that country.

Identifying Commercial Potential

The technology licensing process begins when a researcher (faculty, student or staff) submits a Disclosure form. This provides us with a description of the invention as well as potential co-inventors, details about sponsored research, funding, related research, commercial potential, and any public disclosures.

Skysong Innovations strongly encourages researchers to file disclosures on their inventions, even if the commercial potential is unknown or difficult to define. Most university research is so advanced that it takes years before the market is truly ready for it. It is never too early to disclose.

Once we receive the disclosure form it is given a case number and added to our system. At any point in time, you can find out the status of your invention, including details ranging from patent filings to marketing targets by accessing the ASU inventor portal and logging in with your ASUrite ID and password.

After the initial disclosure is filed, please be sure to inform us of any new developments or contemplated publications that may describe improvements to your invention.

The Patent Process

The patent process is lengthy and requires a number of steps.

Expires one year after file date
Skysong Innovations will work with you to draft a provisional patent application. The provisional application will not be examined and will expire after one year. We will work with you and any co-inventors to draft as robust an application as possible. During this time we will market your technology to see whether or not there is any commercial interest.

Expires 18 months after file date (in most cases)
This is a temporary patent application process that preserves your right to file foreign patent applications in countries that participate in the treaty with a few exceptions (Taiwan being the most notable). The application is examined and a search report is provided which includes a general opinion about the patentability of the invention; this report informs the decision to file any national-phase patent applications. The PCT application will not issue as a patent (and, there is no such thing as an international patent).

As a general rule Skysong Innovations will not file in foreign countries unless we find that there is a significant market for your invention in that country or there is a potential licensee.

Can also be referred to as a National Phase or Non-Provisional application
We will work with our attorneys, you and your co-inventors to incorporate any additional material into the nonprovisional patent application. This application is examined by the United States Patent & Trademark Office (USPTO).

Due after a non-provisional patent is filed
This refers to a submission of background art or information that may be relevant to the patentability of your invention.

Due 2 months after mail date, four 1 month extensions are available but there is a late fee assessed every month after the second month
A restriction requirement will be issued when the examiner determines that the application claims two or more independent inventions.

Due 3 months after mail date, three 1 month extensions are available but there are increasing late fees assessed for every month after the third month
A NON-Final office action is an official communication from the examiner and gives reasons why the examiner has allowed and/or rejected the claims. Often our team along with the attorney working on your case will contact you to assist with overcoming any objections that were raised.

Due 2 months after mail date, four 1 month extensions are available but there are increasing late fees assessed for every month after the third month.
A FINAL office action means the examiner did not find the response to your non-final office action persuasive and is maintaining their rejection(s) or has found new grounds for rejecting the claims. Often our team along with the attorney working on your case will contact you to assist with overcoming these objections.

Response and payment due 3 month after mail date, NO EXTENSIONS
A notice of allowance is an official communication that lets us know which claims have been allowed to issue as a U.S. Patent. At this time we may ask for your input about filing any additional applications around the claims that were not allowed.

Licensing Process

Evaluation

After you file an invention disclosure, Skysong Innovations takes up to 60 days to evaluate the technology based on:

  • Market size
  • Growth potential
  • Competitive analysis
  • Prior art
  • Patent landscape
  • Probable patentability of disclosed invention
  • Market risks, hurdles and technical merit

Industry experts and patent counsel may participate in the evaluation of your invention to provide a more robust view of market needs and patentability. During this process, someone from Skysong Innovations may contact you with additional questions.

We will review the information gathered and make an initial decision on the next appropriate steps to begin the protection of your invention. You are welcome to review evaluation materials relevant to your technology compiled by Skysong Innovations.

If the conclusions of the assessment indicate that the best opportunity for commercialization is through the formation of a startup company, we offer services to assist you in that process as well.

Marketing

If the invention is ready to be marketed, we will create a non-confidential summary (NCS) of your invention to send to potential licensees. The NCS will also be searchable on the internet through the SI Technology Publisher, iBridge, and the AUTM Global Technology Publisher.

A list of target companies will be compiled from many sources, including our extensive, in-house industry database, market research and your industry contacts. The campaign will commence using the NCS along with any other relevant publications. Skysong Innovations staff actively contact target companies to talk about your invention and determine their interest.

After approximately 10 months, a second decision is made at a review meeting to determine whether to continue with prosecution of any patents filed on your invention. This decision is made based on market interest determined during this stage.

The marketing and licensing process is ongoing and may be done in stages as improvements are made. Please be sure to inform us of any new developments or contemplated publications that may describe improvements to your invention.

Protection

One of the most critical jobs that Skysong Innovations performs is managing the components of IP protection on behalf of ASU. (See Patenting FAQ’s for additional information.)

Patenting is the most common way to protect ASU's intellectual property. Other methods include non-disclosure agreements (NDA), trademarks, and copyrights.

Our team closely safeguards new technologies to provide all parties with the highest level of protection in a licensing transaction.

Please use the following links for further details regarding IP assets:

License

Ongoing

When we find a licensee for your invention, we will negotiate, execute and manage the resulting license agreement. Please note that negotiating a license agreement can be a lengthy process.

Our team endeavors to structure licensing agreements that provide fair value to the inventor, university and licensee. In addition to the financial terms, agreements typically include reporting requirements and performance milestones.

A component of the successful commercialization of licensed technology is the financial rewards generated for the inventor. See “Royalty Distribution” section below.

Licenses can lead to collaborative research relationships or sponsored research agreements that are mutually beneficial and lead to valued, long-term relationships.

As a final note, please be aware that not all inventions make their way to the licensing stage and that the timeline above is approximate.

Royalty Distribution

Royalty distribution happens in accordance with ABOR/ASU distribution policy:

ABOR/ASU, the creator’s share of “Net income” received by ASU from commercialization of intellectual property is divided equally among all inventors unless each and every inventor agrees in writing to a different distribution of the creator’s share.

Please contact Skysong Innovations if the creators wish to enter into a sharing arrangement for the creator’s share that is different from that provided under university policies.

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