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Commercialization Process

Welcome to our commercialization process outline. Follow these steps for an overview of the commercialization process from invention disclosure to marketing.

Part I: Assess

Each invention is unique and as such, may or may not have any commercial appeal, so it is imperative that we assess each disclosed invention with the assistance and support of the inventors to determine whether a commercial future exists for the invention and what strategy to implement to maximize value.

The University of Utah Technology & Venture Commercialization (TVC) focuses on two main areas during assessment:  the protectability of the invention through securing appropriate intellectual property rights (i.e., through patenting or formal copyright registration) and a marketability assessment.

  • Protectability
    • Specifically, is the invention already known to others?
    • Are there a substantial number of existing publications and patents (prior art) in the area which would preclude the chances of obtaining patent protection?
  • Marketability
    • Does a market already exist for the technology or is there a new market opportunity? 
    • Is the combination of the technology itself, market size, and societal benefit enough to justify value or potential return to the University?

Some of the criteria used to assess each technology are:

  • Is the Invention Disclosure Form complete?
  • How much time is there before public disclosure or has it already been disclosed?
  • Is the invention patentable?
  • Is the invention protectable in some other way?
  • Will a potential patent be enforceable?
  • Stage of Development?
  • Idea v. Proof of Concept v. Prototype v. Reduced to Practice

  • What lab data exists proving the concept?
  • Does the invention have an identifiable product, improvement or marketable aspect?
  • Does it solve a present need?
  • How does the valuation match the decision and tech strategy?
  • Depending upon the information garnered from the assessment, the invention is given a rank of 1, 2, or 3:

  • Tier 1: There is a high chance that the invention is protectable and marketable, with a likely value return to the University.
  • Tier 2: The invention requires additional work by the inventor(s) to be patentable, commercializable or of interest to the market.
  • Tier 3: The chances of obtaining patent protection and/or finding a market for the invention may be too low to warrant investment. The possibility of any value return to the University is significantly limited.
  • These ranks assist TVC in determining what commercial strategy to pursue.  It is also possible that the assessment may determine that the invention is not yet commercially ripe or protectable.  In such instances, the commercial strategy may not be as aggressive or direct. 

    For example:

  • an invention ranked 2 may lack appropriate data and therefore the focus for commercializing the technology may be in seeking grants and funding or commercial sponsored research to move it to the next stage of development.
  • a technology ranked 3 may have a fatal flaw in protectability and the invention may simply be indirectly marketed or transferred to other institutions through material transfer or confidentiality agreement.
  • An invention ranked 1 may already have a company seeking to commercialize the technology.  With a partner lined up, different TVC resources will be utilized.
  • TVC seeks to focus on commercializing those technologies that may return the most benefit back to the University and therefore greater efforts may be placed on technologies ranking as a tier 1.  But we also work in cooperation with the inventor and outside stakeholders to establish a path to improve protectability and marketability, and assist in moving other technologies towards a tier 1 ranking. 

    Commercialization Strategy

    After a preliminary assessment, we will meet with the inventor(s) to discuss our findings, determine whether additional factors need to be considered and outline the paths forward for the invention. 

    Multiple commercialization options exist including but not limited to licensing, commercial sponsored research, and startup companies.  The following diagram shows some possible paths to commercialization:

    commercialization

    TVC Technology Resources

    The following chart provides an example of what resources and services may be dedicated to inventions depending upon their rank.  Again, as each invention is unique, different services and resources may be allocated to commercialize technologies with the goal of creating value and financial return.

    chart assess

    Ongoing Assessment

    TVC continually reviews its portfolio of unlicensed technologies and funds protection of those that are most desirable from a marketability and protectability perspective.

    Part II: Protect

    Once the assessment process is completed, if IP protection is needed, TVC will go through a multi-step process to obtain the appropriate protection. As the funding of IP protection is a significant part of TVC's budget, and because IP protection is essential to the successful commercialization of a technology, it is important that these steps are followed.

    Step 1

    What kind of IP protection to obtain depends on the technology type. In general terms, for most new technologies, particularly devices, methods, engineering or biotechnological innovations, or similar types, a patent is the most appropriate. For software, literary or graphical works, a copyright may be more appropriate.

  • Patent: A declaration issued by a government agency declaring someone the inventor of a new invention and having the privilege of stopping others from making, using or selling the claimed invention; a letter patent.
  • Copyright: A legal right of ownership attached to an original work which provides for protection for original works of authorship fixed in any tangible medium of expression which can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device (typically used for texts, software and visual and audio materials).
  • Step 2

    Additional factors which impact what IP protection may be available will be identified during the assessment phase. These include:

  • Publication or other Public Disclosure: Any communication to someone not obliged to keep the communication confidential. In patent law, public disclosure of an invention would include a published paper or an abstract, slides presented at a meeting, a poster presentation, private correspondence and advertisements, and meetings with people and/or companies who have not executed a Confidential Disclosure Agreement.
  • Prior Art: The total body of knowledge, which teaches or otherwise relates directly to an invention. This is the primary criterion in determining the patentability of a new invention. It establishes novelty and unobviousness of the art that relates to the invention in question. Prior art references include documentary sources such as patents and publications from anywhere in the world, and non-documentary sources such as things known or used publicly.

    How Public Disclosure Impacts IP Protection
    What Result
    Public Disclosure

  • submission of a paper
  • slides presented at a meeting
  • poster presentation, etc.
  • Potential loss of IP Rights

  • Loss of most foreign rights
  • 1 year clock starts for US patent filing
  • One year after date of public disclosure All patent rights lost

    Step 3

    Based on which kind of IP protection is appropriate and available, TVC will file or register for IP protection as follows:

  • Patent
  • The first patent application filed is typically a US provisional patent application. This type of application will be converted after 12 months into a US utility patent application or a PCT application. A PCT patent application will allow TVC to, within 30 months of the original filing date, select in which countries patent protection is needed. TVC will work with outside patent counsel to file the patent applications. The US utility patent application, and the patent applications filed in individual countries through the PCT application, will then be examined by the respective patent offices, and will generally result in a series of office actions and communications between TVC, our patent counsel, and the patent office until the patent application, and any supplemental patent applications based on the original application, are either issued or finally rejected. Once a patent application has been filed, the patent is considered pending, and marketing and commercialization of the technology covered by the patent can proceed. An issued patent has a lifetime of 20 years from the earliest filing date.
  • Copyright
  • Copyright exists in a work as soon as the idea is expressed in a tangible form. Registration of a work with the Library of Congress puts potential infringers on notice and affords the copyright holder certain additional rights. The term of copyright protection is much longer than that of a patent and can last over 100 years. A copyright application can be filed with the Library of Congress, and requires only the registration form, the registration fee, and deposit copies of the work for which registration is sought.

  • Part III: Market

    The marketability of a technology depends on the information identified during assessment.

    A special path for your unique invention will be identified, which will be dependent upon both the commercial and IP paths as well as publicly available information.

    Web posting and pushing to other audiences is the most fundamental way to publicize your invention. However, the amount of information that can be used in marketing a technology is limited by the stage of public disclosure and patent protection.


    Stage of Disclosure or IP Protection Info Available for Marketing*
    Disclosure to TVC General non-enabling info
    Patent Application Filed More Specific Info

    Publicly available information about the invention

    • Published Paper
    • Poster or Presentation
    • Issued Patent
    Enabling info and patent claims

    * If information is not publicly available, a Confidential Disclosure Agreement must be executed prior to the sharing of information.

    Initial Outreach

    Emails, calls, marketing materials

    Non-Confidential Discussions

    Teleconference or in-person meetings with additional public info (presentations, articles, etc.)

    Confidential Discussions

    Similar to non-confidential discussions, but with confidential materials

    Negotiations

    Propose terms and negotiate mutually agreeable license (Term Sheet)

    For some technologies, the Licensing Manager may decide that a targeted marketing campaign would be the best option. This approach will likely target either commercial partners or potential investors and entrepreneurs. TVC leverages internal and inventor resources for development of marketing materials and to conduct targeted marketing campaigns.

    Market Research >> Contact Identification & Partnering Rationale >> Marketing Material Development >> Targeted Campaign.

    Investment style pitches required for investor funding in a startup will require more inventor involvement for business planning. If a partner is not immediately found, information gleaned from targeted marketing campaigns can provide valuable direction and paths forward for additional development and other commercialization options.

    The U of U is uniquely positioned to understand market needs through a wide range of partner feedback. Your invention will capitalize on the depth and breadth of U of U IP, prior outreach and commercial experience.

    TVC works diligently to understand partner needs and strategies, maintaining “shopping lists” for each detailing their current interests.