A common way for University researchers to get their innovation to market is through the process of licensing to an existing company or industry partner. Licensing to an existing company typically gives the company the right to use the technology or develop, market and sell the technology in the marketplace. There are multiple ways to identify potential licensing opportunities at the Pitt. In some cases, the researcher themselves may have existing industry relationships or be approached by companies as a result of a publication or speaking engagements. The Innovation Institute also helps to market the innovations through personal relationships, business development and online marketing. The Innovation Institute continually adds to its available technologies and promotes them to industry through an online search platform.
When a potential licensee is identified, the process typically consists of a non-confidential discussion with the Innovation Institute licensing staff or innovator to gauge the interest of the potential licensee. Once the potential licensee confirms a high level of interest, a confidentiality agreement is executed and further, more detailed discussions ensue. Once a potential licensee has made a decision to pursue a licensing agreement, the Innovation Institute licensing team works closely with the researcher and the company to execute a fair agreement.
Regardless of how a potential licensee if identified, it is helpful to understand their expectations.
Potential industry partners typically ask some key questions about your innovation as they decide whether to enter into a licensing agreement with the University. These may include:
- How much time, effort, and money will it take to get your innovation to market?
- What are the risks and pitfalls of your innovation?
- Would your innovation complement the industry partner’s other product offerings or research and development (R&D) programs?
- How will they convince their superiors and R&D colleagues that your innovation is a great business opportunity?
- Can they get around your innovation without having to enter into a licensing agreement (i.e., there are ways to make a product that would compete with yours and not infringe your intellectual property)?
- Will you work with them to help develop your innovation?
Often, companies may provide more development than research in the R&D spectrum and must rely on academic innovators to undertake any additional research necessary for effective commercialization, as well as to troubleshoot when development problems arise. This may take the form of sponsored research or consulting time for you or other members of your team.
This section will take you, step by step, through the process so you will understand 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 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.)
- Invention Disclosure
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 at: https://www.innovation.pitt.edu/innovators/invention-disclosures/.
- TTC Evaluation
When you submit your invention disclosure to the Innovation Institute for commercial consideration, it goes before the University’s Technology Transfer Committee (TTC) for review. This peer-review committee, made up of University administrators and faculty members, meets monthly to determine the commercial merits of the submitted invention disclosures and decides in which innovations the University should invest its limited time, money, and other resources. In general, the committee historically has approved for commercialization an estimated 55 percent of all those submitted to the Innovation Institute in a given year.
- IP Protection
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.
- Business Development
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 (https://www.innovation.pitt.edu/our-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.
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.