EIRA Quick Guide: Enabling Commercialisation
For universities, commercialisation is the process of turning research findings into a product or service that can bring about economic and societal benefits. Commercialisation can not only generate income for further research, but can also help to accelerate impact. Academics may spend months or years on their research, and commercialisation is often the end goal. Developing a product, new technology or service often involves working with an industry partner. This partnership, often referred to as ‘Knowledge Exchange’ involves all parties working together on a collaborative research project for mutual benefit.
However, knowledge exchange, and the subsequent routes to commercialisation can sometimes face issues with intellectual property and rights. It’s important that academics and knowledge exchange professionals understand commercialisation terms, the general processes involved and where to go for more help and guidance. We’ll cover all this and more in the Enabling Commercialisation guide.
IPR and Patent review process
What is IPR?
IPR stands for Intellectual Property Rights and can refer to a number of intangible assets. All of the following can be bought, sold and licensed, just like other forms of property:
Application or Registered Rights
Why are patents important?
Patents are important because they give a competitive market position to prevent others from making or using your invention. A patent protects any product, design or process that meets certain specifications according to its originality, practicality and utility. In most cases, a patent can protect an invention for up to 20 years, with the time period starting as soon as the patent application is filed.
Patent Application Process
The following timeline is an example only, and the process duration can vary significantly.
Outline of key dates when applying for patent protection:
Basic Structure of Patent Applications
Important note – patent applications are examined, but not peer reviewed! Claims define the protection and the specification outlines the parameters of the invention. Drawings enable a visual representation.
Some important things to consider about the patent application process include:
- Once filed, each patent gets a priority date. This allows any subsequent applications of the patent family to use the file date of the first filing.
- This is known as ‘Claiming priority’ – a system that allows a subsequent application to use the filing date of the first filing or submission.
- This priority date is important as anything prior to it will count as prior art that can be taken into account during patent examination.
- After the patent is filed in one region, a PCT application can be filed 12 months later. This allows the applicant to file the same patent in other countries/regions simultaneously by saving time and costs.
- After PCT filing, applicants get 18 months to select which regions/countries they want to protect the technology in.
- You cannot change anything in the patent specification once the PCT deadline has passed.
Patents are “intangible assets” not because they are based upon ideas or inventions, but because they are not a physical substance. Patents can be commercialised or monetised in a number of different ways, for example by entering into a license agreement.
License agreements are not made equal but they usually provide the right for another party to use the IPR…. Different types of access to the IPR can be granted – exclusive license, sole license or non-exclusive license. Licenses can also have rights to sub-license. Alternatively, the rights to a patent can be sold for a fee to another organisation.
In this guide we have explored some of the key differences between routes to commercialisation, including patents and IPR.
Confidentiality is key for novelty. Make sure appropriate non-disclosure agreements are in place before any confidential information is exchanged with external organisations i.e. suppliers and collaborators.
It’s important to plan ahead: think about whether projects may produce commercially valuable IPR so that the necessary steps can be taken when the data / results are generated.
We’ve learnt about the patent application process and the basic structure of patent applications.
Most importantly, make contact with the person in your organisation who deals with knowledge transfer and IPR. It’s a tricky process and one you shouldn’t be working through alone! Grant applications often include a section about IP in the application form and KE teams can help help with those too.
Where to go next
Most institutions will have a person or team you can speak to who can help clarify your commercial rights and make sure they are protected.
We’ve listed a few contacts here to get you started on your commercialisation journey, but it’s always worth checking with your Knowledge Exchange or Business Development professionals first.
Enabling Commercialisation Quiz
- There are a number of podcasts that can guide you through how to start & build a business
- There are some recurring themes, and you may also find some information that is specific to the area you are exploring
Check with your institution’s communications team for branding toolkits, social media guidance, training opportunities and any faculty-specific contacts you should be connected with to ensure your research is promoted.
- Ensure that IPR permissions from the University have been cleared in advance
- Search patent literature, if patents are going to be important to your research
Espacenet – patent database: http://ep.espacenet.com/
UK Intellectual Property Office https://www.gov.uk/government/organisations/intellectual-property-office
(formerly the Patent Office)
United States Patent and Trademark Office uspto.gov
World Intellectual Property Organisation (WIPO)
The material in this Quick Guide is based on UK and European Legislation:
- The Patents Act 1977 As Amended
- The European Patent Convention (EPC), 15th Edition
- Paris Convention for the Protection of Industrial Property (dates from 1883, last amendment 1979)
- The Patent Cooperation Treaty (PCT) – 148 countries
IPO (2020). What are Design Rights? [online] IPO GUERNSEY REGISTRY. Accessed 25th November 2020.
US Legal (2020) Know-How [Intellectual Property Rights] Law and Legal Definition. [online]. Accessed 25th November 2020.
*Silverman, Ed (20 November 2014). “What Does It Cost to Develop a New Drug? Latest Study Says $2.6 Billion”.