University's Commercialization Procedures

Technology Transfer Lifecycle

The Road to Tech Transfer: “It’s not fast…or simple.”

This detailed map describes the journey from invention to the marketplace. Learn about invention disclosure, licensing, patent strategy and market-based assessment.

How are inventions assessed by the Partnerships and Innovation office?

While we encourage researchers to contact our office as early as possible in their exploration of a potential commercialization or technology mobilization opportunity, filing an invention disclosure form (IDF) with the Partnerships and Innovation office is the first step in our undertaking a substantive assessment of the opportunity. The IDF asks for a brief description of the invention, the funding sources used, any and all inventors, as well as the potential commercial applications of the technology.
 

Part 1: Invention Assessment Process

When University Inventor(s) disclose a new Invention via submission of a formal Invention Disclosure Form (IDF) to PKMI, the following steps are undertaken to evaluate its potential:

Initial Review and Disclosure Evaluation 

A Technology Transfer Manager (TTM) will review the IDF and then conduct an initial meeting with the University Inventor(s). This meeting is to:

  • Gain an understanding of the Invention’s key attributes, potential applications and current/competing solutions in the market.
  • Determine the stage of the development and any additional R&D required to move the Invention along the TRL (Technology Readiness Level) development pathway.
  • Verify Inventorship – If there are any non-UM Inventor(s) (either academic collaborators or Industry Partners), a subsequent meeting will be scheduled with the non-UM Inventor(s) and their organizations. 
  • Confirm any prior or upcoming Public Disclosures (ex. publications, conference posters, student theses), as the existence of these disclosures will affect the timeline of any IP Protection sought by the University. 
  • Existence of External IP Rights – The TTM will verify that there are no 3rd party IP ownership rights under a Collaborative or Sponsored Research Agreement, or potential Revenue Rights owned to Funding Agencies. 

At this stage, University Inventor(s) can choose to independently commercialize their Invention and request that UM not be involved in any further commercialization efforts.  Should this request be made, an agreement that outlines the terms of Independent Commercialization is put in place between UM and the University Inventor(s), and PKMI ceases work on the file.

  • Note on Independent Commercialization – All University Inventor(s) must agree on Independent Commercialization before IP rights can be transferred under an agreement (i.e. assignment of IP rights). UM is unable to assign rights to only a subset of University Inventors. 

Novelty, Prior Art, and Freedom-to-Operate Search 

  • If it is mutually decided that the UM become further involved in commercialization efforts, TTMs perform a formal assessment (i.e. Tech Assessment) to determine whether the Invention is novel and non-obvious compared to existing technologies.
  • Prior art analysis includes searches of patent databases (e.g., USPTO, EPO, WIPO), scientific literature (published papers, conference abstracts, etc.) and University publications to assess the potential for the Invention to be protected under Patent or Copyright.  
  • At this stage, preliminary Market Research is conducted to examine the competitive landscape, potential applications, industry trends, and commercial feasibility.
  • TTMs assess for the existence of any underlying (background) or 3rd party IP which may impact the ability of UM to protect or commercialize the Invention.
  • Following preparation of the Tech Assessment, the report is shared with the University Inventor(s) and a decision made to either; (a) Proceed with a formal IP Protection Plan, or (b) Abandon commercialization efforts on the Invention. Should UM decide to abandon commercialization efforts at this stage, the University Inventors have the right to continue via the Independent Commercialization process.   

IP Protection Strategy

  • If the Tech Assessment identifies that the Invention, a) has commercial potential and, b) can be protected under IP law, a Provisional Patent Application (PPA) may be filed to secure initial patent protection, often in advance of a public disclosure (i.e. publication, conference proceeding, thesis) by the University Inventor(s). 
  • A PPA protects the ownership rights to the Invention and provides UM with the ability to market the Invention to investors, founders, and industry, for a period of 1 year from filing, without the need for Non-Disclosure Agreements (NDAs).  
  • Before a patent filing, UM and University Inventor(s) are required to complete an IP Assignment Agreement. This agreement provides UM the ability to legally manage the patent process and outlines the rights and responsibilities of the parties around the commercialization and patenting of the Invention and restates the revenue-sharing policy between UM and all identified University Inventor(s). When UM leads the commercialization efforts, it will pay 100% of the initial commercialization (including patenting) expenses.  
  • At the end of the 12-month PPA period, UM may pursue further patent fillings. This decision is based on feedback from Industry during the initial marketing phase, the commercial potential of the IP, and (should the technology be licensed during this time) Licensee requirements. 
  • Should UM decide to abandon commercialization efforts at this stage, the University Inventors have the right to continue via the Independent Commercialization process.   

Common Questions

What if the invention was created with an inventor external to the UM?

If the technology was created with an inventor external to the UM, our office will establish an Inter-Institutional Agreement with the other institution(s). The terms of this agreement may include (and are not limited to) confidentiality, leadership of IP protection and commercialization efforts, and shared costs and revenues related to the technology.

What if my invention is software? Can it be patented?

Software can possibly be patented, but it is challenging as it difficult to prove as novel and non-obvious. In general algorithms and formula are not patentable subject matter, so a careful review of software and its functionality must be completed. Additionally, given the time to market for software products, the technology may be obsolete before the patent is issued. Our office has been highly successful in licensing and commercializing software without formal IP protection.

Can my invention be commercialized even though it’s not patentable?

In many cases, yes, but it depends on the nature of the work, the competitive landscape and many other factors.

Part 2: Invention Marketing and Commercialization Plan

Creation of a Marketing Package

The existence of one or more, published, peer-reviewed manuscripts is often critical for an Invention to be marketed, as they, a) provide peer-reviewed evidence of the strength of the research results, and b) allows potential Licensee to fully review the details of the technology and supporting research without the requirement to enter into an NDA. In partnership with the University Inventor(s), PKMI will use published papers and the filed patent applications to create a Technology Opportunity (TechOp) Marketing package that can be freely shared with external 3rd parties.   

Marketing Strategies

A combination of passive (i.e. websites) and active Marketing Strategies are employed. Active Marketing Strategies typically include, (a) providing the TechOp package directly to companies, industry experts, investors, and entrepreneurs, both in Canada and internationally, who may have an interest in commercializing the Invention, (b) conference pitch decks (i.e. BIO, AUTM, Hannover Messe), (c) local networking events, and (d) presentations to MBA students in Asper School of Business.  Feedback from Industry on the commercial potential of the Invention is critical to the PKMI and to University Inventor(s) to mutually identify strategies for de-risking the technology (e.g., prototype development, industry partnerships), identify and engage potential Licensees and create an accurate valuation of the technology (based on market size, competitive advantage, and required development efforts).  

University Start-up Companies

In addition to marketing to Investors and established companies, UM will support University Inventor(s) interested in creating a University Start-up who demonstrate a keen enthusiasm for entrepreneurship and can commit to actively engaging with the Entrepreneurial Ecosystem, both on campus and in the community.  University Start-up support includes access to preferential licensing terms and access to programming and support through UM’s IDEA Start, Lab2Market, Stu Clark Centre for Entrepreneurship, Futurpreneur, and North Forge Technology Exchange.