Getting Things Ready for Commercialization
Once a completed invention disclosure form has been submitted to the UIRF, the technology undergoes an initial screening prior to patenting or copyrighting. If a technology moves through this phase and into the IP protection stage, we’ll engage an outside patent attorney with relevant technology expertise. The UIRF works closely with the patent attorney and the inventor(s) to draft and file a patent application.
There are four main facets to the screening process, which include:
1. Technology Summary
Based on the invention disclosure and conversations with the researcher, the initial proposed uses and applications of the invention are determined, along with the strengths and potential benefits of the invention as related to those applications.
2. IP Analysis
The strength of any potential intellectual property is examined. Several factors are considered such as differences between the current technology and other patented or available technologies, the type and strength of patent claims that will likely be available (i.e. composition claims are generally stronger claims than purely method claims, broader claims are generally more desirable than narrow claims), how crowded the IP landscape is, and the ability to seek IP protection outside the U.S.
3. Market Analysis and Business Risk
A comprehensive review of the relevant market for potential products and/or services that could come out of the intellectual property is conducted. This analysis estimates the size of the market, the market impact of the product and/or service, the market growth rate, and the current market state. Other associated potential market factors, such as market margins and current market segmentation also play key determination roles in this process. The market analysis also considers whether the market is ready for entry of this particular type of technology, i.e. whether there is existing infrastructure. The intention of the analysis is to determine the market strength of an invention and whether IP protection would likely result in a licensed, commercial product. If a market is small and prospects for licensing are low, patent protection may not be pursued. During this process, other uses and markets may be identified that are more attractive than the initial set, and these applications and gaps in the invention that must be filled to address these markets will be discussed with the researcher. This analysis is also intended to initially identify new UI spinout company opportunities, which – if considered promising – are then screened against additional criteria for viability.
4. Commercialization Analysis
The technology screening also considers various commercialization issues affecting the value of the technology from the perspective of potential licensees. These issues include:
- Development Needs: The stage of development of the technology. Many technologies originating from within a university setting are in the earliest stages of development and require significant time and expense to mature the underlying technology into a commercial product.
- Development Costs: The cost required for a licensee to develop the technology to a point where it can become a commercial good. Costs are dependent upon both the development stage of the technology and the type of technology.
- Ease of Utilization: The amount of work that a potential licensee would need to undertake in order to advance the technology and make a commercial product/service. This includes the amount of work needed for a licensee to understand the invention, for example, is knowledge of the technology easily transferable? Similarly, ease of utilization is dependent upon the stage of development of the technology, as well as the type of technology.
All of these factors play a major role in the evaluation of a technology’s patentability and commercial potential.