You Have a Bright Idea - What Do You Do Next ?
You’ve done all the hard work in applying for the research grant, spent countless hours doing the research and you may now have results that might be patentable and/or have commercial potential. So what do you next?
The first step is to complete the NovaUCD Invention Disclosure Form (IDF).
The IDF should be fully completed and then submitted to NovaUCD. Once received by NovaUCD the process outlined below will commence.
A. Review and assessment of invention
The IDF will be reviewed by one of the Project Managers for Technology Transfer within 2-4 weeks of receipt by NovaUCD. A meeting will be scheduled with you to discuss the invention and to complete any gaps in the information provided. Central to the discussions will be an assessment of the commercial potential and patentability of the invention. The commercial potential may be difficult to assess due to the fact that many inventions arising from academic research are at a very early stage of development. Your input will be sought on funding opportunities to further develop the technology and in identifying potential licensees.
B. Protecting the invention
The Project Manager shall complete his/her evaluation and then in consultation with other NovaUCD team members, and sometimes with the assistance of external experts, shall decide if the invention can be protected. If your invention is potentially patentable then NovaUCD will engage a patent agent to give an opinion and draft a patent application as appropriate. If the IDF is sufficiently detailed, this can form the basis of a first draft. However, the patent agent may request your assistance if additional information is required.
The patent specification will be shared with you to ensure that the invention is properly described and when agreed by you, the patent agent and NovaUCD, a priority patent application will be filed. NovaUCD will cover the costs associated with the patent application whenever possible. It should be recognised that NovaUCD files less than half of all inventions disclosed. If the invention is not patentable then it may be best protected through other methods or it may be at too early a stage of development and further research may be required. The rationale for any decision will be provided to you in writing.
C. Commercialisation strategy
NovaUCD will work closely with you to identify the optimal route for the commercialisation of your invention. The two main routes for commercialisation are licensing the invention to an existing company or to a new company. Decisions regarding commercialisation will depend on a variety of factors including for instance, the maturity, breath and depth of the technology or intellectual property (e.g. discrete or platform) and whether it is part of a portfolio of inventions. Also, factors such as the size, maturity and geographical distribution of the market and your own commitment and plans for involvement in the commercialisation process will also be taken into consideration. Once a commercialisation route has been agreed, NovaUCD will work with you to develop a plan for commercialisation and to lead in its implementation.
D. Marketing and licensing of the invention
If the decision is made to commercialise the invention via licensing to an existing company, the Project Manager will prepare a non-confidential summary of the invention in consultation with you. This summary will outline the key features of the invention and advantages over existing technologies. This will then be sent to potential licensees. Sometimes you may be able to identify companies which would be interested in the technology.
If a company expresses interest, the next step is to conclude a Non-Disclosure Agreement (NDA) so that NovaUCD can share further confidential details relating to the invention to enable the company to more fully evaluate the opportunity. If the marketing efforts are successful, the ultimate goal is to license your invention either on a non-exclusive or exclusive basis to the company in its area of commercial interest. Negotiations can take several weeks to several months depending on the complexities and/or the due diligence required. In addition to the financial terms, e.g. upfront payments and royalty rates, other factors such as the duration of the agreement, the territories to be covered by the licence agreement have to be agreed. Your input may also be required if associated know-how is also to be licensed.
Any revenues received by NovaUCD arising from the licence agreement will be shared with you in accordance with UCD’s Intellectual Property Policy and Procedures.
While the above process is primarily focused on the licensing of your invention to an external party, on occasion NovaUCD in consultation and in co-operation with you may decide that your technology lends itself to the establishment of a UCD campus or spin-out company.
The technology transfer process described above is part of the overall NovaUCD innovation and technology transfer process which is described in full in the NovaUCD pocket guide, which includes a process flow diagram.
For further information contact:
Dr Ciaran O'Beirne
Manager, Technology Transfer
t: +353-1-716-3713
e: ciaran.obeirne@ucd.ie
NovaUCD Pocket Guide (2009) (635 kbs)