Technology Transfer Process
Technology transfer is the movement or flow of technical knowledge, data, designs, prototypes, materials, inventions, software, and/or trade secrets from one organisation to another organisation or from one purpose to another purpose. The technology transfer process is guided by the policies and values of each respective organisation.
If you have a technology that you think is new, exciting and has potential as a commercial product or application that could impact research or healthcare you should talk to UCLB. We are happy to help from the earliest stage, if you consider that your technology is patentable please contact your Business Manager here prior to any form of public domain disclosure.
The World Intellectual Property Organisation refers to intellectual property as creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. Intellectual property rights form a method of protecting intellectual property and may encourage investment in developing technologies. These forms include patents, know how, copyright, design rights and trademarks.
The development potential of any idea or discovery needs to be evaluated to understand if the promise aligns with a market need and justifies levaraging resources against the opportunity. This is classically an iterative process where, following initial discussions between a researcher and a member of UCLB, the opportunity is assessed in terms of the following criteria:
- Unmet need – What is the problem that your invention addresses and how well does it, or could it, meet that need?
- Market assessment – What is the potential market for the technology and what is the total market value?
- Competition – Who are the competitors? At what stage of development are they?
- Technical hurdles – How long is the development process?
- Intellectual Property Rights – What type of intellectual property is it, and does it require protecting?
- Development Costs – What is the likely time, resource commitment and cost of development?
- Development Path – licensing to an existing company, forming a new company or development through not-for-profit routes.
Following this first-pass review, often more questions are generated and further insight is sought from the researcher. If the opportunity appears to have development potential following this assessment then UCLB will start discussions with the researcher on what development path it believes is necessary to realise the opportunity.
A patent is a bargain between the inventor and the government under which, in return for disclosing an invention such that someone skilled in the art could recapitulate it, the inventor gets an enforceable right to commercialise the invention for 20 years. Commercial entities are willing to seek these rights through financial remuneration to secure competitive advantage, especially if investment in technology development is required. Patenting is an expensive and lengthy process, it typically takes ~5 years to get a patent granted and typically costs upwards of tens of thousands of pounds, with ongoing annual renewal fees also adding significant costs.
For an invention to be patentable it needs to be novel, inventive, have industrial applicability, not be in an excluded category and sufficiently described. Three requirements have to be met in every case and are tested by the patent office separately.
Novelty – means that the invention has not been published in the public domain i.e. publication, poster, oral presentation by the inventor themselves or by anyone else; any relevant pre-existing information is known as ‘prior art’. If an invention has already been disclosed publicly it is no longer possible to file a patent application. If you think your idea might be patentable, please discuss it with your Business Manager here at UCLB before a public domain disclosure.
Inventive – means that the invention is not obvious to anyone skilled in the art in the relevant technical field i.e. peers of the inventor are often a good reference point for individuals skilled in the art. A good test of this inventive step or non-obviousness is whether another scientist with comparable skills would not simply put two or more pieces of existing information together and come up with the invention. Often an academic’s threshold for what could be considered inventive is significantly higher than that required to file a patent application, so it is worth discussing your idea with UCLB if you think it may be inventive.
Industrial applicability – means that the invention needs to have a technical application.
Not excluded – The invention must be one which is ‘patentable’ under law and not excluded on public policy grounds. For example, in the UK mathematical methods, discoveries, some computer programs or mobile apps, or a way of playing a game or thinking are not patentable.
Sufficiently Described – The invention in the patent document must be described in a manner which is sufficiently clear and with complete instructions so that a skilled person in the technical field can carry out the invention.
The first step is the filing of a priority patent application, usually in the UK (occasionally in the US). This establishes the ‘priority date’ which is the first date that the invention is disclosed to the patent office. This date is important as it establishes the date at which your invention is considered as prior-art against any competitor inventions.
At 12 months it is usual to file a Patent Cooperation Treaty (PCT) application and extra data can be added in at this point. Filing of a PCT application allows the inventor to pursue a patent application in most countries worldwide.
At 18 months the European Patent Office (EPO) issues a search report listing any relevant prior art (publications, posters, presentations, etc.) that has been identified by the patent office, together with an initial opinion on the patentability of your invention.
At 30 months if you wish to continue to pursue the application then it is necessary to select the individual countries where you wish to pursue a patent application. The application is then examined by the individual national patent offices with individual payments incurred at each office.
It is normal to have to go through several rounds of examination reports and responses for each patent office and claims generally get amended and narrowed down. Each round of examination in each territory will cost several thousand pounds. Once the patent is in order for grant there is an issue fee to be paid for each territory and then annual renewal fees. The entire process could take on average three to five years from the priority application.
Licensing Technology vs Company Formation
The decision to start a company around a technology versus licensing it to a commercial partner already in the market requires significant review. Is the IP position narrow or broad? Are there multiple potential licensees? Is there a platform for generating new intellectual property? Is there an existing company ideally placed with the capability to develop your technology? In general, if the IP position is narrow and there is only a single product, licensing to an existing company/companies may be most appropriate and probably most likely to generate revenues for the inventor(s). UCLB will help identify possible companies that have the existing capability and infrastructure to develop and market your technology. Most technologies fit well as part of the portfolio of an existing company.
If the IP position is broad and there are several products or the opportunity to generate a pipeline of new IP then formation of a new company may be most appropriate. Generally several technologies or applications are needed for company formation as founding a company based on a single technology may be too risky. UCLB will work with you to formulate a business plan and will use our contacts to attract investment.
Engaging with Industry
UCLB has a culture of academic collaboration, but it also has a track record of productive partnerships with industry that have led to the dissemination of our capabilities into the private sector. There are many ways to work with industry, ranging from exchanging materials, becoming involved in joint scientific and clinical collaborations, to financial support of basic research. Often industry is an under-appreciated source of funding and expertise. But the right industrial relationship can complement scientific research programmes and offer an invested translational partner for the development of any discoveries. Commercial interactions can present challenges not obvious in academic collaborations around the same capability or technology, so it is worth engaging with UCLB early in such discussions.