Working with IDC Guide
Introduction
This “Getting Started Guide” is an outline of the basic steps involved in technology transfer and commercialization. It is intended as an educational document to familiarize you with some of the procedures and issues regarding technology transfer, such as the legal and proprietary issues. It is also a tool for you to understand how IDC will assess your invention, and for you to self-evaluate at which stage your invention is along the development process. This guide also includes the Intellectual Property (IP) policy specific to your institution. If you have any questions that are not answered in this guide, please contact IDC and we will be happy to answer your queries.
When to Contact IDC
The first thing you should know is that it is never too early to contact IDC. We are here to assist you at every stage in the technology transfer process. Obviously the more information and material you can provide us, the more we can do to help. There are some cases, however, when it is important to begin the IP protection and technology transfer process before moving ahead with the development of your creation. If you have, or are, developing something that you believe to be useful, novel and has commercial potential, you should contact IDC. If you are planning to publish a study or give a presentation on your IP, there are consequences of these actions that will limit or prohibit your ability to protect and benefit from your IP. In these cases it is wise to contact IDC well in advance of the date of publication or presentation, as these actions are considered “public disclosure.” An explanation of Public Disclosure and what it means for your IP is provided in the next section. If you are planning new research or software development that may have future commercial potential, it is a good idea to contact IDC ahead of time. In these cases IDC will be able to provide guidelines that will simplify commercialization efforts when the project has evolved to the commercialization stage. This will help you avoid the need to go back and repeat research and development activities in ways that satisfy certain commercialization requirements. Often these are simple procedures to incorporate if identified in the early stages of research and development.
- For Faculty
There are certain federal grants programs available, such as NSERC Idea to Innovation, CRD, IPS or CIHR Proof of Principal grants, that require the participation of your Institution’s university-industry liaison office (UILO). The UILO for the University of Victoria is IDC. You should contact IDC in the opening stages of your grant application process. If you have been contacted by Industry to work on a collaborative research and development project, you must contact IDC to ensure certain legal and proprietary details are appropriately prepared.
Public Disclosure
Prior to public disclosure you have the ability at anytime to file for protection of your IP, as long as it meets the other requirements for protection such as novelty of invention and non-obviousness. After public disclosure you have one year grace period in Canada and the United States to file for patent protection. After that point your IP is considered public information and anyone can act upon it in any way. If there has already been public disclosure of your IP you CAN NOT file for protection in the European Union. If you have filed for protection in Europe through a Patent Cooperation Treaty (PCT), you may publicly disclose your IP without losing the option to patent in Europe. Public disclosure can take many forms. In a nutshell, public disclosure is any form of disseminating information about your IP to a non-intimate member or members of the public. Publishing information about your IP is considered public disclosure, as is giving a spoken or visual presentation. Discussing your IP with someone who is not a privileged colleague (such as a contributor, business advisor, or family member) is considered public disclosure. Use of your IP in a public location is public disclosure. Discussing your IP with any member of the public not under a confidentiality agreement is considered public disclosure. If your IP has been visible to the public at anytime, intentionally or otherwise, for instance in the passenger seat of a parked car, it is considered disclosed to the public. If you leave information about your IP in a public location by accident it is considered public disclosure. As you no doubt understand by now, the threshold for public disclosure is very low. One does not have to prove anybody saw your IP while it was visible to the public; they only need know that at some point it was, and your options for IP protection become severely limited. If you are unsure whether or not you have publicly disclosed your IP, find out by contacting IDC as soon as possible and learn what options you have for protecting your work.
Disclosing to IDC
The first thing to understand about disclosing to IDC is that all IDC staff are under strict non-disclosure agreements and cannot discuss anything you disclose to us with an outside party. Anything you tell us is confidential. A preferred first step is for you, the inventor(s), to arrange an informal pre-disclosure discussion with IDC staff. The purpose of this meeting is to discuss the basics of your invention, the commercialization process, your vision for how you would like to proceed, how you would like to be involved, and what developments need to take place to bring your invention to a stage where it will be commercially viable. It gives us an opportunity to give you advice on the homework you need to do, and it gives you, the inventor(s), an opportunity to find out about IDC, ask questions, and identify what services IDC can provide for you. Some questions we will ask about your technology are: What problem does your technology solve? How is the problem met now, and why is your solution superior? Who (companies) do you imagine would be interested in your technology, and why? What stage of development has been achieved so far? (ie: concept, written business plan, early research, completed research, working prototype, etc.) How has development been funded thus far? Who are the contributors to the technology? Has there been public disclosure? What is the condition of the prior art? What is your vision for the commercialization of this technology? (ie: license to private sector, start spin-off company, not-for-profit organization, etc?)
If, after initial consultation you, the inventor(s), wish to continue working with IDC, we will ask you to read and sign an Invention Disclosure Form. This form is a legal document that names and describes your invention and initiates a history for your invention. A documented history can be very important in certain cases where more than one party claim proprietorship of a technology. For digital media IP, there is a Digital Media Invention Disclosure Form. When your technology has reached the stage that it is ready to be patented and/or licensed, IDC will ask you to read and sign an Intellectual Property Assignment Agreement. This is a document that assigns your technology to IDC, and gives us permission to act upon it for the purposes of commercialization.
Evaluating Technology
After initial discussions, IDC and you, the inventor(s), should be able to determine if: the IP in its present form will be accepted by the private sector and have commercialization value both IDC and the inventor(s) are interested in partnering to pursue protection and commercialization of the IP.
If these things are agreed upon, then IDC will undertake a more thorough evaluation of the potential markets, public demand, competing technology, prior-art conflicts, and commercial potential. Many factors are at play when considering the commercial viability of a technology, and most have nothing to do with the quality of the research or concept. Such factors can include macro-economic environments, the level of market saturation for technologies serving certain functions, the viability of a particular business model obliged by the technology, government regulatory regimes, and the state of other technologies upon which the invention is dependant. Some disclosures may be identified as viable in the near future, and IDC may advise a protracted commercialization strategy for these cases. At no point in the initial stages is the inventor(s) or the IP under obligation to IDC, so there is no risk in disclosing to IDC early.
Commercialization
There are numerous paths to commercialization. Depending on the market structure for the invention’s natural sector, IDC and you, the inventor(s) may choose to sell the technology outright, pursue an exclusive license deal, a number of non-exclusive license deals, or form a new start-up company to market, manufacture and distribute a product. Or you may undertake one or more of these as steps towards achieving a final strategy. Commercialization negotiations require flexibility and creativity from all parties to arrive at a successful and satisfactory arrangement. Factors to consider when deciding upon a commercialization strategy include: the developmental stage of the IP the qualitative and quantitative nature of the industry the size and number of applicable markets (ie: consumer, industrial, government, commercial, etc.) the position of the invention within the larger product stream the status of IP protection
Forming a commercialization partnership is often the beginning of a long-term relationship, and different commercialization strategies entail varying degrees of time and commitment from the inventor(s). This is important to keep in mind when considering your own vision for your IP.
University of Victoria Intellectual Property Policy
The Intellectual Property Policy for the University of Victoria applies to all researchers working at UVic including faculty, instructors, librarians, post-doctoral fellows, graduate students, undergraduate students and persons providing services under contract such as sessional professors. With a few exceptions proprietary rights to IP are owned by the inventor, though inventors have responsibilities to the University where IP is created through University research and/or resources. Inventors cannot be forced to commercialize their IP, however all persons covered by the IP policy intending to commercialize are required to disclose it to IDC. This is known as first-right-of-refusal, and in the event that IDC does not wish to pursue commercialization the inventor is free to pursue the matter on their own. The full IP policy of the University of Victoria is available here.