Commercialization is a critical step in translating your research innovations "from bench to bedside", where they can make an impact on patient lives. This technology transfer process at UHN can be conceptualized as a continuous cycle in which licensed products in the marketplace help fund future research and innovation.
Observations and experiments during research activities often lead to discoveries and inventions. An invention is any useful process, machine, composition of matter (e.g., a chemical or biological compound), or any new or useful improvement of these. Often, multiple researchers, including trainees and research staff, contribute to an invention and may be considered inventors.
2. Intellectual Property (Invention) disclosure
This written notice of invention to TDC begins the formal technology transfer process and identifies the inventors to our office. The Invention Disclosure is a confidential document that fully describes the new aspects of the invention, including the critical solution it provides and its advantages and benefits over current technologies.
When should I complete an Invention Disclosure?
You should complete an Invention Disclosure whenever you feel you have discovered something unique with potential commercial value or when the terms of your Sponsored Research require disclosure of inventions.
Ideally, this should be done well before featuring the discovery in publications, conference presentations or posters, press releases, or other communications. Once the essence of an invention is publicly disclosed (i.e., published or presented in some written form to a non-UHN audience), potential patent rights may be limited. Be sure to inform TDC of any imminent (or prior) presentation, lecture, poster, abstract, website description, research proposal, dissertation/master's thesis, publication, or other public presentation of the invention.
Not sure if your innovation qualifies? Contact TDC to discuss your individual situation.
TDC will review the Invention Disclosure, conduct patent searches (if applicable), and analyze the market and competitive technologies to assess the invention's commercialization potential. This assessment process will guide our licensing strategy; for example, it will inform whether the discovery is licensed exclusively or non- exclusively, or whether it is licensed in different fields of use.
4. Intellectual Property Protection (If appropriate, necessary, or warranted)
Patent protection, a common legal protection method, begins with the filing of a patent application, often as a provisional patent application in the United States—a market that commonly serves as a "first market" for many technologies. Within a year, it will need to be decided whether to make a further filing to preserve U.S., Canada and other international patent rights under the Patent Cooperation Treaty (PCT). The process of obtaining an issued patent takes several years and costs tens of thousands of dollars with no guarantee of success. Other commonly used forms of Intellectual Property protection include copyright and trademark. Unique biological materials and software can often be successfully licensed without formal Intellectual Property protection.
What is Intellectual Property (IP)?
According to the World Intellectual Property Organization (WIPO), IP refers to creations of the mind, such as inventions, literary and artistic works, designs, and symbols, names and images used in commerce. IP may be protected under patent, trademark, trade secret, and/or copyright laws.
Although an invention does not necessarily need to be patented to find a licensee, inventions at UHN are often patented. A patent gives the holder the right to exclude others from making, using, selling, offering to sell, or importing the invention. Thus, a patent does not necessarily provide the holder any affirmative right to use a technology, since it may fall under a broader patent owned by others. Instead, it provides the right to exclude others from using it. Thus, patent claims are the legal definition of an inventor's protectable invention.
How does Patenting work at UHN?
TDC is responsible for the protection of UHN inventions via the management of IP, which includes the filing of patents. Inventors liaise with TDC’s in-house patent practitioners in drafting the patent applications and responses to patent office prosecution transactions.
Patent protection is often required by a potential commercialization partner (licensee), because it can protect the often sizable investment required to bring the technology to market. Due to their expense (which is covered by UHN), patent applications are not possible for all UHN IP. We carefully review the commercial potential of an invention before investing in the patent process. However, because the need for commencing a patent filing sometimes precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible.
TDC and the inventor(s) together discuss relevant factors in deciding whether to file a patent application. Ultimately, TDC makes the final decision as to whether to file a patent application or seek another form of protection.
What if I created the invention with someone from another institution or company?
Typically, the technology will be jointly owned and each inventor assigns the invention to his or her employer. Your TDC Licensing and Commercialization Professional will work with other organizations under "Inter-Institutional Agreements" (IIA's) that provide for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process, and allocating any licensing royalties.
TDC is committed to marketing UHN inventions to companies that may be interested in their commercialization. In collaboration with the inventor(s), TDC creates a marketing overview of the technology. TDC then identifies and contacts candidate companies (potential licensees) with the expertise, resources, and business partnerships required to bring the technology to market.
6. Selecting the best licensee(s)
Typically, there is only one interested party or none at all. However, if there are several parties interested in a license, we will endeavor to license non-exclusively or grant field-of-use licenses, if appropriate to the technology area. If it is not possible to accommodate all interested parties, we will license the invention to the company that is most committed and able to bring the technology to market.
Launching a Start-up
A start-up is a new business entity formed by entrepreneurs to commercialize one or more related IPs.
Before a license can be granted to a start-up, the invention is marketed to other potential licensees who may have an interest in commercializing it. From a technology transfer perspective, a start-up company led by an entrepreneur who is committed to developing a particular technology may be the best licensee; however, the start-up company must offer a viable plan to commercialize the invention in order to receive a license, and must demonstrate the ability to raise investment. If a new business start-up is the best choice for commercializing the technology, we will negotiate with a representative of the company to grant a license to the new company.
Start-up Key Considerations
Start-ups involve significant investment of time and resources. Key considerations to be taken prior to launching a start-up include:
Interesting in learning more about launching a start-up? Contact TDC to discuss your individual situation.
TDC negotiates and executes license agreements. These agreements provide a company with certain rights to UHN IP in return for financial and other benefits. An option agreement is sometimes used to allow a company to evaluate the technology for a limited time before a formal license agreement is concluded.
Most of UHN's research inventions are very early stage and require further research and development efforts before being brought to market. The licensee company typically makes significant investments of time and funding to commercialize the product or service. This step may entail regulatory approvals, sales and marketing, support, training, and other activities.
Royalties received by UHN from licensees are distributed according to UHN policy to inventors and to UHN to fund additional research and operations. Royalties include both cash and equity received from licensees in consideration for granting the license. See UHN's Intellectual Property Policy (link available on the UHN network) for more detail.
Royalties returned to UHN collectively foster the creation of the next generation of research and innovators.
Content adapted with permission from University of Michigan's "Inventor's Guide to Technology Transfer. " We are very grateful to Ken Nisbet, Executive Director, and the staff of UM Tech Transfer, for their permission to use their materials for these purposes.