You Have a Bright Idea which you believe has commercial potential – Where do you start?

To assess the best route to exploit potential opportunities effectively, a commercialisation process consisting of five stages has been set-up as follows: (Please also see Process Map below):

1. Identifying research output of potential commercial value through invention disclosure
2. Evaluation of the technical and commercial potential
3. Protection of research output with intellectual property rights
4. Marketing inventions
5. Licensing of invention

1. Identifying research output of potential commercial value-Invention Disclosure to Invent DCU

This phase provides a formal procedure for the timely disclosure of new inventions with potential commercial applicability by the inventor(s) to Invent DCU. The Invention Disclosure Form (IDF) is used to capture the necessary information to begin the initial assessment of the invention both technically and commercially. The guideline for submitting an Invention Disclosure Form is available here.

The IDF will be logged in the Invent DCU database and sent to one of Invent DCU’s Case Managers for review. A meeting will then be scheduled with you to discuss the invention and to complete any gaps in the information provided. Central to this discussion will be an assessment of the commercial potential and patentability of the invention. While understanding it may be very difficult to assess the commercial potential of inventions arising from academic research which very often are at very early stage of development, your input will be sought on plans for funding opportunities to further develop the technology and on identifying potential licensees.

2. Invention Evaluation

Decisions on whether to secure intellectual property right by formal registration (whether by patenting, design rights etc.) are based on the principle that technology transfer is a commercial activity. The investment in patenting inventions is one on which a financial return is expected. While accepting the early and complex nature of university research and that the return on investment is likely to be long term and difficult to define, nevertheless, it is essential to establish clearly that a market (current or potential) exists, before incurring the considerable expenses of patenting.

3. Protection of research output with intellectual property rights

Should the Case Manager decide the IDF represents a patentable invention, Invent DCU will engage a patent attorney to give an opinion on patentability and then to draft a patent application as appropriate. The IDF should be sufficiently detailed to form the basis of a first draft patent specification. However, the drafting of a patent specification should be viewed as an iterative process and in most instances the patent attorney will request further assistance from the inventors before the patent specification and claims are finalised.

Once the patent specification is agreed by all parties concerned, a priority founding patent application will be filed, usually in a jurisdiction/country where a Search Report will be available within 12 months of first filing date.

The costs associated with the patent application shall be borne by Invent DCU, invariably with additional support from the Enterprise Ireland IP Fund for the Higher Education Sector. It should be recognised that Invent DCU files less than half of all inventions disclosed. Reasons for not filing range from the invention not being patentable to situations where the invention is at too early a stage of development and further research is required. The rationale for any decision made will be provided to you.

4. Marketing of invention

If a decision is made to commercialise the invention (whether it is patentable or not), the Case Manager will prepare a non-confidential summary of the invention in conjunction with you the inventor. The summary will outline the key feature of the invention and advantages over existing technologies. This will then be sent to potential licensees and published on the Invent DCU website and other suitable technology transfer websites. Sometimes you will know from your own network which companies may be interested in the invention and these will be included as part of the shortlist of targeted companies; spin-out and/or start up companies will also be considered as a route to market.

We actively encourage networking between potential licensees and researchers (provided due caution is exercised with respect to confidential information) and welcome commercial leads from researchers.

Generally, initial contact with a potential licensee is accompanied by a follow up telephone call to the business development director of the company. If a company expresses interest, the next step would be for the parties to conclude a Non-Disclosure Agreement (NDA) so that Invent DCU can share further confidential detail on the invention to enable the company to more fully evaluate the opportunity.

5. Licensing of invention

If the marketing efforts are successful, the ultimate goal is to license your invention either on a non-exclusive or exclusive basis to a company. There is no standard time for concluding a licensing agreement. Sometimes negotiations can take several weeks but they can often extend to several months depending on the complexities and due diligence required. In additional to the financial terms, e.g. upfront payments and royalty rates, issues such the duration of the term, the territories in which the technology can be commercialised, indemnities etc all have to be agreed. On occasion, your input may also be required if associated know-how is also to be licensed. You will be kept informed of the progress of the negotiations. Finally, any revenues received by Invent DCU arising from the licence agreement will be shared with you in accordance with DCU Intellectual Property Policy.

While the above process is primarily focused on the licensing of your invention to an external party, on occasion and particularly with platform technologies, Invent DCU in consultation and in co-operation with you may decide that invention may be more readily exploited through the establishment of a DCU campus or spin-out company.

The technology transfer process at Invent DCU can be represented by the following process flow diagram.