Where to start?
First, tell us about your idea, your invention or your contact with a company. Let us know briefly by email or phone. If you need help, each faculty is assigned a dedicated Commercial Development Manager (CDM), with sector-specific academic and industry expertise.
An invention can be any new and useful process, machine, method, software, treatment, device or other article, or any unique composition of a number of known articles. Sometimes the very idea itself will be unique. Often it is the way you deliver the idea that is novel. There may also be more than one inventor, particularly in research teams where several researchers may have contributed. We encourage you to contact us during the research process to ensure you are aware of the options that will best leverage the commercial potential. We can provide informal guidance on the disclosure, assessment and protection processes that follow.
2. Invention Disclosure
After informal discussions, the submission of an Invention Disclosure Form (IDF) starts the formal commercialisation process. An IDF is a confidential document and the information within it will be protected by the team. The IDF should fully articulate your invention and describe clearly the novel technical aspects. It should also clearly illustrate the problem it solves and the advantages it has over current technologies or solutions. The IDF will also record who contributed to the invention and ask the inventors to agree on their respective intellectual contributions. These percentage contributions are used to determine the amount of royalty income or equity shares that each inventor receives in the event that the technology is commercialised and generates revenue.
During the IP assessment phase, support and input from the inventor is essential to help drive the project forward. At the discovery stage you will have discussed a brief overview of your invention, and your CDM will have given you some initial guidance. However, now that the formal IDF has been submitted, a more detailed assessment of the invention can begin. This will include:
- A detailed review of the IDF including the IPR that may exist within the invention;
- An initial market search for competitive technologies;
- An initial patent search to identify competitive or complementary patents;
- A search for companies operating in the identified business sector;
- An assessment of the inventor team and their goals;
- A roadmap to identify translational and development funding.
This initial assessment will help us determine your commercialisation strategy. Typically any further commercialisation activity will lead us towards one of two paths - either a focus on licensing to an existing company or a push toward creating a new start-up company (referred to as a university spin-out).
Keep in mind the fact that many of these assessment steps may also happen in tandem with the other stages of the process or some may not happen at all. For example, if a clearly superior alternative technology is identified at step 2 then the assessment will not proceed any further. We will try to give you an evidence-based assessment, and note this might not always fit in with your expectations.
After the initial assessment is complete, and assuming the invention shows commercial potential, we will move towards a more detailed phase of assessment. This would typically mean:
- Identifying evidence of external validation from entrepreneurs, investors or other assessment via proof concept or competitive schemes
- Some early testing of revenue and business model to see if it is commercially viable. (We typically use the Business Model Canvas at this stage, particularly for spin-out opportunities).
- A professional patent search, if applicable, to see if there are competitive blocks in commercialising the innovation
- A review into the market and explore potential business development options
There are various types of IPR that enable us to protect your invention.Patenting is the most usual form used in the University, but it is not the only form of IPR. A patent is essentially a legal quasi-monopoly that the State grants in return for disclosure of a new discovery. It is also an asset because patent protection typically lasts for 20 years. The Commercial Development team will help form a patenting strategy for your invention. The crucial elements are - what, where, and how to apply for patent protection. Once a patent application has been filed it can take several years and tens of thousands of pounds to obtain a granted patent in one or more countries, but a patent application must be applied for before the invention becomes publically available. While a patent can be a valuable asset, it must be remembered that it simply serves to help protect a market for a particular invention, it does not mean that a market exists in the first place. Nor does it trump others overlapping patents - which may prevent you from effectively using your own freely.
Another common form of protection is confidential ‘know-how’ – i.e. keeping the invention secret. This means that the commercial strategy is simply to retain key aspects of the operation of the innovation secret. Unlike a patent, know-how is not an asset. Inventions such as unique biological materials and software can often be commercialised simply as secret know-how. Know-how is only valuable as long as it remains secret but this can often be at odds with the academic goal of publication. The Commercial Development team understand this and will not force any inventor to not publish their research. However, we may work with you to hold back specific data or information that may be useful as secret know-how, or may encourage you to refrain from publication until other forms of protection are in place.
Other commonly used forms of protection include copyright and trademark. Copyright protects new creative works, including software. It is an automatic right which does not require an application or examination. Managed correctly, it can form some of the longest lasting IPR.
The Commercial Development team will help assess your invention in relation to the IP strategy, including protection and filing timelines and provide a recommendation within 60 days of receiving a fully signed IDF.
5. Market Validation
With your involvement, we will endeavour to find the problem/solution fit for the invention. This means promoting your invention, under confidentiality agreements, to commercial partners, entrepreneurs and industry experts in the specific field. During this stage we will try to validate the commercial potential of the invention and any assumptions we have made with feedback from these partners. The Commercial Development team will manage this activity and work to identify these contacts. Successful commercial outcomes at this point can be dramatically increased with the involvement of the inventor. With first-hand knowledge of the sector, he or she will often be able to identify candidate companies and entrepreneurs with the expertise, resources and business networks to bring the technology to market. You may even have worked with these companies or entrepreneurs previously.
Often university innovations are so early stage or even ‘disruptive’ that it may be difficult to find a commercial partner immediately. In such cases, and where commercial potential has been validated, Queen's will consider further funding options to help prepare the technology for commercialisation. This is part of the reason for considering a spin-out route.
In all cases we are looking for real evidence of a potential customers to justify investing time, money and resources developing the technology.
6. Existing Business or Spin-Out?
Making the decision to either pursue the creation of a new spin-out company or a straight licence deal is a critical point in the commercialisation process. The licence route can often deliver successful outcomes much earlier and with much less effort - but is still not easy. A spin-out will take a great amount of effort and time, particularly if the inventor is involved as a founder of the company, and there are many more hurdles, some totally unrelated to the quality of the invention. However, the potential for returns is often lower on licences, and working on a spin-out can be an exciting once-in-a-lifetime adventure.
If the invention is best commercialised by one or more existing companies it is generally taken towards a licence. We will seek potential licensees and work to identify mutual interests, goals and plans to fully commercialise the technology. If there are several parties interested in a licence, we will endeavour to license non-exclusively or grant licences in multiple fields-of-use. If it is not possible to accommodate all interested parties, we will license to the company which is most committed and has the best resources to bring the technology to the marketplace.
If the formation of a spin-out company is the preferred route, we will assist you, as the founder, in planning and creating the spin-out, securing funding and identifying entrepreneurs or managers with the right experience to augment the founding management team.
The Commercial Development team has a wide range of expertise in technology commercialisation, university spin outs and start-up development and will help guide you towards a preferred route.
A licence is an agreement between Queen's and a company to which Queen’s IP rights to a technology are granted in return for financial and other benefits. A licence agreement does not affect ownership of the IP. It instead grants access to the IP under certain conditions. The licence agreement is an essential part of the commercialisation process. Without a licence, a company or spin-out does not have the legal right to use the IP. It is particularly important for inventors considering the spin-out route to be aware of this, as they will often have the technical expertise to use the technology without a licence, but they will not have the legal right to use the IP. Without clear legal rights to use the IP it may be difficult to find investors, many of which will check to ensure these rights exist.
An option agreement or evaluation licence is sometimes used to allow a company evaluate the technology for a limited time before a full commercial licence agreement is concluded. In very rare cases an assignment is used. An assignment is an agreement which is a transfer of ownership outright to the company in consideration of some return to the University. An assignment can be troublesome because it means the University giving over all control of the IP to the company.
Regardless of the agreement type, Queen's typically seeks to retain the right to use any technologies licensed or assigned for internal teaching and research purposes. The Research & Enterprise team will negotiate and execute the licence, assignment or option agreement directly with the company. Often the inventor will not be directly involved in negotiations but your nominated contact will keep you closely informed on progress.
8. Market Launch
Most university inventions are very early-stage and require significant further research and development before they will be adopted in the market place. Typically, the licensee or spin-out company continues the advancement of the technology and makes other business investments to develop the product or service, but we may still need to develop technology to a stage that a licensee can see the value of it. This step may entail regulatory approvals, strategic partnering, sales and marketing development, customer support, and other activities. The inventor's input and know-how is often sought at various stages and further development work is often contracted back to the inventor's laboratory. The timespan from invention disclosure to market launch will vary, depending on the business sector and the stage of development of the research. Discoveries in drug discovery may take as long as ten years to reach the market because of a complex process of commercial steps, regulatory approval and strategic partnering, whereas new software technologies may move from the lab to market in less than 12 months.
9. Revenue Distribution & Reinvestment
Revenues received by Queen's from licensees are distributed according to the University IPR Policy. These specify that income is distributed:
- 50% to inventors;
- 25% to the inventors’ faculty; and
- 25% to the University.
Queen's has one of the most favourable revenue distribution formulae amongst major UK universities. Itmaintains a standard 50% split to inventors, regardless of the level of income received.
Revenues from commercialisation, both cash received from licensees and realisations from equity positions from Queen's spin-outs, allow Queen's to reinvest in further research and education, thus nurturing the next generation of research, researchers and entrepreneurs.