When tech transfer offices such as ours use the word, “commercialization”, we are usually referring to the processes that we use to help bring your invention to market. These processes lead to licensing IP rights to existing or start-up companies.
The first step for you is to complete and submit a disclosure informing us of what your invention or creation is. The disclosure you submit does not have to be a manuscript, however we need enough information to identify what the technology is and its potential commercial uses or applications. In completing a disclosure form, first, you’ll provide a description of your invention. You’ll then be asked several questions about the funding, materials used, and the parties involved and what they did to contribute to the technology. You will also be asked what your publication plans are. These are all fundamental questions, and your answers provide us additional information useful in our evaluation of your disclosed technology.We are available via phone, email, or in person to answer any questions you may have as you complete the disclosure form.
After you submit a disclosure, it will be reviewed for completeness (all required information provided), and then assigned to a manager. The manager will perform an initial review based on your written description. Then we will contact you to discuss the disclosed technology to ensure our understanding of the invention and to get your thoughts on applications or uses for it.
We also look at the funding source to see if there are obligations to a sponsor. There may be no obligations in the case of internal funding only. Some may include reporting obligations required under federal funding or may include negotiating a license agreement with the sponsor. We also review obligations or restrictions based on the source of materials used in the development of the technology and for restrictions such as export control restrictions.
Our Evaluation Process
After a disclosure has been accepted and the manager assigned to it has performed his or her preliminary review, he or she will continue the evaluation. Some evaluations may follow many steps, and some may not. As varied as the technologies are that we see coming from a large research organization, it is difficult to envision a “cookie-cutter” process for evaluating their IP and commercial potential. However, the following describes some of the commonly used steps taken in our process to get to commercialization:
- Prior art is similar to a literature review. What we are looking for are publications, presentations, patents, patent applications, media coverage, etc. that may teach what your invention does or even some parts of it. This search is not a review for providing a patentability opinion, but it does provide us some insight as to the challenges we may face if we were to seek patent protection. This review is an important factor in our decision to move forward or not. Additionally, this prior art search may give us some ideas on the commercial need for the technology as well as identifying potential licensees.
- After gaining information from the prior art search, we will explore the market for interest or need for the technologies. We look at public market data and identify and contact companies we believe can provide insights on the market opportunities. Even when research sponsors may be the likely licensee, market research helps us better understand what type of terms may be appropriate for a license agreement.
- Once we have found companies that have expressed an interest in licensing, we may enter into negotiations with them for a commercial license to the technology. Licensing can take a couple of weeks or many months to accomplish, depending on various factors. Our goal is to get licensing agreements completed as quickly as possible and with terms that don’t hinder the licensees’ efforts but do provide us assurances that the company will commercialize the technology (use and make the benefits of your research available to the public) as well as provide modest financial returns back to us.
- Both parties will sign the agreement after it has been successfully negotiated. The company then has the right from us to make, use, and sell products created using the IP they’ve licensed so that the results of your research may benefit those who could utilized such products.