November 3, 2011

Five Steps for University Inventors

For researchers working in technical fields, inventions are to be expected.  Unfortunately, many university inventors receive little, if any, training on what to do once they have an invention on their hands. Our team has put together a handy FAQ to help orient inventors to the world of university-industry technology transfer.  We’ve also put together a quick overview of what we see as the key steps for inventors to transform their ideas into commercial solutions.

Step One: Understand the problem that you are solving

Few inventions are truly novel visions of the world. Usually, they are combinations of known ideas that, together, solve a new problem. Understanding the problem is often 90% of the invention battle. Understanding the problem also helps you to articulate market applications for your invention, and gives you a mechanism to compare your solution to alternatives. The latter is particularly important in the commercial context, where it really doesn’t matter *how* a problem is solved. I frequently read new project proposals that proudly promise to speed up a particular technique by 10x – only to overlook the fact that a different type of technique already solved the problem years ago. It doesn’t matter that you have the world’s fastest horse when people drive cars. If you are looking to have your idea commercialized, save yourself some time and make sure that what you are doing really is novel, and makes sense in the technology landscape.

Questions to ask: Has anyone been down this road before?  What challenges have they faced? How does your technology fit in with existing technologies and technology needs? Above all, what information or proofs do you need to be sure that this technology can actually work?

Step Two: Build a relationship with your Technology Transfer Office (TTO)

Like companies, most universities have some claim to intellectual property (IP) created by either faculty or students using their resources.  The mandate of a university TTO is to manage this IP and facilitate the technology transfer process for its inventors.  If you are unsure how to connect with your university’s TTO, the best place to start looking is the office responsible for research services (grants, contracts, etc.).

I encourage early engagement with your TTO to make sure that you understand your university’s IP policies, and can take full advantage of their services.  An important thing to ask about in the early stages is what your TTOs disclosure policies and processes are.  Typically, disclosure to your TTO should happen prior to public disclosure (publication), as public disclosure will affect your ability to patent an invention.

Questions to ask: What is my university’s IP Policy? Who, when, and how should I submit a research disclosure? What services does the TTO office offer?

Step Three: Have an IP strategy

The more fully developed your idea is, the easier it will be to sell (Which would you rather invest in, an idea that can theoretically work, or an idea with a working prototype behind it?).  As a university inventor you are typically looking to develop at least some patent protection before progressing to the commercialization stage for your technology. You don’t have to become a patent lawyer, but try to keep issues of IP ownership in the back of your mind, keep in touch with your TTO, and protect your ability to commercialize you resulting invention(s).  As a general rule any disclosure, even a quick story at a café, can severely limit your patenting options, so think through your engagements in advance (Read more about intellectual property and secrecy).

This isn’t a reason not to collaborate with other researchers. In fact, in my experience collaborations add tremendous value to most research initiatives and I would strongly encourage you to seek out partners. You just need to be clear about who will have a stake in the resulting IP and create some basic structure for your relationship to cover the IP aspects.   Similarly, there is no reason not to engage with potential investors and customers early.  They will give you valuable feedback, even if it hurts.  Discussing the problem you are solving without disclosing the specifics of your invention does not require a non-disclosure agreement.  Most investors never reach the depth where they need access to detailed information about your patentable invention (read more about confidentiality and investors, and customer engagement).

Questions to ask: Who are the key collaborators for the project? What legal relationships do they have with your university? Does everybody understand the difference between collaboration on publications (everybody is a co-author) and patents (only those who have made inventive contributions are inventors)?

Step Four: Protect your invention

Your research will become an invention when a definite idea has been conceived and translated into a practical application (a prototype is not required, but helpful).  Once you’ve arrived at the point of having an invention, your best bet is to contact your TTO (if you aren’t already in touch with them).

University technology transfer typically involves the sale or licensing of patent rights.  A patent protects your ability to control who can and cannot use or profit from your invention.  If you are not interested in personally profiting from your invention, it can still be important to patent. Open disclosure works for some technologies, but is more difficult for concepts that require significant development investment before they can become a useful product. Without a patent, companies are unlikely to make that development investment, because there will generally be no potential for financial return on their investment.  The choice between public disclosure and patented commercialisation is one that should be discussed with your TTO to find the best option for your technology.

Questions to ask: Is open publication or patent protection the best course for your technology?

Step Five: Connect the dots

The idea of sales and marketing may seem foreign to a lot of university inventors, but you’ve likely been doing this all along.  Instead of convincing funders that your research will result in valuable products or outcomes, you need to convince investors that some of the value you intended to create really exists.

Remember that research you did on the technology landscape? You can use it to identify companies or investors who may be interested in your technology. Ideally, you have even had preliminary discussions with some of them during the course of your project. You also need to evaluate your invention before approaching business partners, considering your prototype’s availability and stability, project documentation, and basic aspects of business and marketing (e.g. market assessments).  There are also a number of commercialization options to explore: seed funds, accelerator programs, Angel and Venture Capital investors.  TandemLaunch, for example, is a seed fund specializing in multi-media technologies that offers financing, industry connections, development staff and infrastructure on an equity basis.

At this point, you are ready to plunge in the next phase of commercialization. Gather a team, build a product (or licensable technology package) and hit the road. That’s a topic for another day.

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