What is an Invention Disclosure?
An Invention Disclosure is a confidential description of your invention or idea that starts the research commercialisation process. The disclosure should also list all funders of the research and should include any other information necessary to begin pursuing protection and commercialisation activities. It is critical that you note the date of any upcoming publications or other public disclosures describing the invention.
If you have made a discovery which you believe has the potential for significant economic impact, then please disclosure your innovation as follows:
- Arrange a meeting to discuss your idea with your nominated contact within the Commercial Development team (028 9097 2566 or email@example.com).
- Your nominated contact will meet with you to obtain further information and discuss options for Intellectual Property protection (e.g. patenting) and mechanisms available to support commercialisation.
- Complete an Invention Disclosure Form (IDF) as fully as possible. Your nominated contact will provide assistance if required.
- Print a hard copy and have each inventor sign Section 5. Return the signed hard copy to your nominated contact within the Commercial Development team. Alternatively, return directly to Dermot Tierney firstname.lastname@example.org .
The information will then be used to consider the opportunity for IP protection and commercialisation support. Please attach additional papers, including drawings, photographs or manuscripts which may be of assistance.
How do I know if my discovery is an invention?
Generally, if your research results in new knowledge which is useful it will be an invention. A good guiding test is to ask yourself this question - After an experiment, when assessing the results, were you surprised by them? If the answer is yes, and if the results are repeatable, you may have invented something. Regardless of whether you have been able to validate the novelty of the discovery, if you suspect that it may be novel, you are encouraged to disclosre your invention. If you are in doubt please contact your nominated Commercial Development Manager to discuss further.
When should I complete an Invention Disclosure Form?
You should complete an Invention Disclosure Form (IDF) whenever you feel you have discovered or developed something unique which has commercial potential. This should be done well before presenting the invention through publications, poster sessions, conferences, press releases, or other communications. Once it is disclosed publicly - i.e., published or presented in some form outside Queen's -an invention may have restricted or have minimal potential for patent protection.
Should I disclose research tools?
Research tools are materials such as antibodies, vectors, plasmids, cell lines, mice, and other materials used as tools in the research process. Research tools do not necessarily need to be protected by patents in order to be licensed to commercial third parties and generate revenue for your laboratory. Other research tools (such as new separation processes) may need to be patented in order that a company will invest in the engineering development necessary to make the process broadly useful. If you have research tools that you believe to be valuable, the Commercial Development team will work with you to develop the appropriate protection, licensing and distribution strategy.
How do I submit an Invention Disclosure?
Simply complete the Invention Disclosure Form and submit it to the team. If you don’t understand or cannot complete some of the questions do not worry. Contact your nominated Commercial Development Manager who will help you complete the form.
How does Queen's assess Invention Disclosures?
The Commercial Development team, often with the help of the inventors and/or external subject matter specialists, assess each disclosure under confidentiality to review the novelty of the invention, competing technologies, protectability, relationship to related intellectual property, size and growth potential of the relevant market, amount of time and money required for further development, pre-existing rights associated with IP and potential competition from other existing products.
The evaluation process will guide our strategy on whether to focus on licensing to an existing company or create a new spin-out business.
After the initial assessment, your nominated Commercial Development Manager will coordinate a more detailed phase of assessment. This would typically include:
- Evidence of external validation and mapping of a Business Model Canvas, particularly for spin-out opportunities
- A professional patent search, if applicable
- A review of the market and explore potential business development options
The Business Model Canvas is a useful tool that helps you describe, design, challenge, invent, and pivot your business model.
If I think all IP should be licensed non-exclusively to all potential users for the public good, will Queen’s honour this?
The Commercial Development team will work with you to develop the appropriate strategy for your invention. Some technologies lend themselves to non-exclusive licensing (to multiple third parties), while others will reach the marketplace, and therefore the public, only if they are licensed on an exclusive basis. We will try to accommodate inventors’ commercialisation wishes consistent with the objectives of co-inventors and consistent with obligations to funders or other third parties.
How do we decide to commercialise software with a traditional or open source licence?
Generally, the Commercial Development team will supports those researchers who choose to distribute their source code through appropriate open source mechanisms, provided Queen's retains the right to distribute the code under an appropriate open source license and that open sourcing is consistent with obligations to third parties, such as funders. However, since there are many different varieties of open sourcing, it is recommended that you contact the Commercial Development team to obtain guidance.
Is an invention ever re-assigned to an inventor?
If the Commercial Development team decides not to pursue patent protection and/or chooses not to actively market the invention, Queen's may, upon request by the inventor, re-assign (transfer ownership) to the inventor. A reasonable amount of time will be needed before a decision on re-assignment can be made – for example it may take a number of months, up to one year to establish the commercial opportunity for the invention. Among the key factors in deciding to re-assign are whether additional Queen's resources or private resources could best improve marketability and whether all inventors agree with the re-assignment plan. Upon re-assignment, the inventor is responsible for payment of prior patent costs and all further development, patenting and marketing expenses. Queen's may require the inventors to share some of the revenue derived from the commercialisation of the invention. If an invention is assigned out of Queen's, additional Queen's resources should not be further used to support future development of the invention.