Below is a high-level overview of the process we follow to assist you in getting your Pitt innovations from the lab to the market. The process will give you a basic understanding of where to begin, how to protect your ideas, how to position your innovation for commercial markets, and what to expect for your efforts. Success will depend substantially on your active participation in the process. The Innovation Institute will assist you along the way, making the technology commercialization endeavor a team effort from beginning to end.
Pitt research creates an innovation that has value outside the lab.
Pitt people beat polio, pioneered TV and heavier-than-air flight, and turned Pittsburgh into the world’s organ-transplantation capital, among other breakthroughs. Today’s Pitt researchers carry on that tradition in areas ranging from literary criticism to the quest for quantum computers. (Learn more about how Pitt researchers have made a difference: http://www.pitt.edu/research/making-a-difference.)
The researcher submits an idea or discovery to the University of Pittsburgh Innovation Institute.
You’ve conducted your research and found that, along the way, you may have developed an invention, or innovation, with commercial potential. Now what? That’s where the Innovation Institute comes in. Before you publish your data, present it at a conference, or otherwise share your ideas with outside parties, you should submit an invention disclosure to the Innovation Institute for consideration.
You may obtain an invention disclosure form and submit it online via the Innovation Institute website.
Licensing staff review the disclosure and make a recommendation for intellectual property protection.
Invention Disclosure Review
When you submit your invention disclosure to the Innovation Institute, it will be reviewed to determine the commercial merits of the submitted invention disclosures and the University’s ability to protect the intellectual property. If the innovation is determined to be protectable and deemed to have commercial potential, the Innovation Institute will work with you to protect the intellectual property, using patents, copyrights, or research tool designations, as appropriate based on the technology. In general, the University historically has approved for commercialization an estimated 55 percent of all invention disclosures submitted to the Innovation Institute in a given year.
Patents – Why file for patent protection on your innovation when you simply could publish your academic findings or present them to an industry conference audience?
Many companies will not license an innovation or manufacture a product that does not offer them some kind of exclusivity—a monopoly, if you will. That means they sometimes won’t adopt your ideas without such protection, and your ideas, therefore, won’t ultimately reach the marketplace and help others.
Patents and copyrights offer protected exclusivity, at least for a limited time. A patent is a contract between the government and the innovator that provides the right to exclude others from making, using, selling, offering for sale the designated invention (or intellectual property) in the United States, or importing the invention into the United States.
The contract extends for 20 years from the date on which the application for the patent was filed in the U.S., or, if the application contains a specific reference to an earlier filed application under certain sections of the patent law, from the date on which the earliest of such application was filed.
To achieve patent protection, you will have to convince USPTO that your invention is new, useful, and nonobvious.
Copyrights – Not all Pitt innovations that make their way successfully into the marketplace are patentable inventions. In fact, some of the University’s most successful commercialization efforts in recent years have revolved around specialized editorial content developed by Pitt faculty and staff and formatted into books, papers, CDs, DVDs, databases, etc. While not patentable, such works still are protected via copyrights.
Licensing staff oversees the IP protection process.
Working with outside legal counsel, patent application(s) may be filed with the US Patent and Trademark Office and/or foreign patent offices. Copyrights may be registered with the US Copyright Office. Patents and copyrights offer protected exclusivity for the IP for a limited term.
What is the best path to market? The Innovation Institute provides education programs, funding, and mentoring to decrease the opportunity risk and move the discovery closer to market.
Getting a patent for your innovation is a major accomplishment, but it is only the beginning of the process. Finding a potential licensee for your innovation and getting it to market often requires a whole new set of activities with which you may have little prior experience. By engaging with the Innovation Institute’s commercialization programs you will have the opportunity to gain that experience.
In short, these programs will provide you with exposure to business planning and strategy; market research; targeted innovation marketing; start-up development; industry/investor relationship development; and financial resources to facilitate proof-of-concept and prototype development, data collection, and other early-stage business development.
Educational and experiential courses/workshops will train you and your colleagues in technology commercialization and, in particular, business opportunity development. Past experience in technology commercialization strongly suggests that a large majority of licensing successes begin with the active participation of the innovators—and their industry contacts. We are here to help, but we need your active engagement as well.
a. Start a Company
Platform technologies and innovations with broad applications may be suited to the formation of a startup, although leadership, competition, and barriers to market entry also influence the decision. Entrepreneurs in residence at the Innovation Institute vet potential startups and identify resources to get them off the ground.
Whether you are a new academic entrepreneur or have a successful startup, the Innovation Institute can help you navigate the startup process. Reach out to us, speak with an entrepreneur in residence and we will help you with the process and in the meantime, you can view our startup formation resources.
b. Find a Partner
An innovation that improves upon an existing product or solution most likely would be pursued as a licensing partnership with an existing company. The Innovation Institute, in collaboration with the Office of Industry and Economic Partnerships will develop marketing materials and coordinate with the researcher to attract potential licensees.
The ultimate goal of the University’s technology commercialization endeavor is to find an industry partner or start-up company willing to license your innovations and take them to market. Keep in mind that the University does not sell its intellectual property. Rather, it negotiates a licensing agreement that gives the industry partner, or licensee, the right to use and/or sell your innovation in the marketplace.
The Innovation Institute, led by its licensing managers and supported by the University’s Office of the General Counsel and Office of Research, will work closely with you to identify potential licensees and to negotiate all financial, business, and legal terms on your behalf.
Based on the objectives of the licensee, the Innovation Institute will negotiate either an option or license.
OPTION – If the potential partner wants to explore applications and opportunities for a given innovation, the Innovation Institute will negotiate an option agreement. This gives the partner an opportunity to “kick the tires” and take some time to determine whether it should consider taking a license to the innovation.
LICENSE – These may take several forms. An innovation, for instance, might offer numerous possible applications, and a licensee might choose to pay for the exclusive right to all of those applications. Alternatively, the licensee may only have interest in one specific application and, therefore, license that one only. In some cases, licensees will sign non-exclusive agreements for innovation applications.
Our licensing staff assists the researcher and the licensee in agreeing to terms and executing the license.
Regardless of the licensee being an existing company or a startup, the process of licensing the technology proceeds. A Licensing Manager at the Innovation Institute will facilitate the process between the University, licensee and innovator(s) (in some cases the licensee and innovator(s) may be the one in the same). The Licensing Manager will share the contractual agreement and terms with the licensee and manage the negotiation discussions until an agreement is met. Through this process, the Office of Research, Office of General Counsel and the licensee’s legal counsel may all be involved, however, the Licensing Manager remains a consistent contact for the Pitt innovators. After the contractual license agreement is signed by all parties, the licensee takes responsibility for the technology and the Innovation Institute and Pitt innovators provide support and guidance to transition the technology out of the University.
The Innovation Institute manages the license agreement and connects the licensee to the resources needed to succeed.
The Innovation Institute and innovators remain a resource for the licensee. The Innovation Institute facilitates the oversight and management of the agreement to ensure all agreed-upon milestones are met. The Innovation Institute remains a resource for the licensee or startup to assist them in identifying resources that improve the likelihood of market success. Pitt startup companies may be referred to The Institute for Entrepreneurial Excellence, the economic development division of the Innovation Institute that assists local companies in developing growth strategies.
You can also watch our pre-recorded Introduction to Commercialization Webinar that explores the initial paths to commercialization.