Technology transfer – your questions
There are lots of ways for UCL staff to use their research and expertise to make an impact on real world challenges through knowledge exchange. These include industry partnerships, consultancies, and the transfer of new technologies to market, by creating a spinout company or licensing intellectual property (IP).
At UCL, these knowledge exchange activities, including UCLB, are grouped under Innovation & Enterprise. To find out more about the different ways you can take your knowledge and ideas out into the world, visit the UCL Innovation & Enterprise web pages.
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.
Universities, hospitals and research centres generate inventions that can save lives and help to improve how we live, work, and play on a daily basis. Technology transfer plays an important role in getting these technologies and innovations from the laboratory to the market, where they can make a real and positive difference to people’s lives.
Technology transfer offices protect the inventions and discoveries generated by their organisations and work with companies so that these discoveries can become new products and services. Sometimes technologies will be licensed to existing companies, and sometimes they will be used to form a new ‘spinout’ company.
These pages provide background information about the technology transfer process and how commercialisation is managed in a university setting.
If you have a technology that you think is new, exciting and has potential as a commercial product or application you should talk to UCLB. We’re happy to help from the earliest stage, and if your technology is patentable it’s important to contact your business manager before any form of public domain disclosure.
The World Intellectual Property Organisation refers to intellectual property (IP) 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.
Understanding what IP you own and how to protect it is vital for commercialising your research. As a general rule, UCL owns the IP created by its staff during their employment. UCLB can help you to identify and protect your IP.
There are several forms of intellectual property (IP) protection, as detailed in the table below:
|IP protection||To be used for||Further information|
|Patents||Inventions||You can apply for a patent to protect your invention. It gives you the right to take legal action against anyone who makes, uses, sells or imports it without your permission.|
|Copyright||Software, books and reports, websites etc.||Copyright protects your written work and stops others from using it without your permission. The right to copyright protection is automatic – you don’t have to apply or pay a fee, but you are advised to assert if you are claiming copyright in your published work.|
|Design rights||Engineering sketches and equipment designs||Design rights only apply to the shape and configuration (how different parts of a design are arranged together) of objects. You can also register your design for better protection provided it meets the eligibility criteria.|
|Trade marks||Brands and names||You can register your trade mark to protect your brand, for example the name of your product or service. When you register your trade mark, you’ll be able to take legal action against anyone who uses your brand without your permission and sell/ license your brand.
There’s no such thing as a worldwide trademark, so you will need to apply for protection in each individual territory.
|Trade secrets||Know-how, unpublished formulae etc.||Trade secrets are effective ways of protecting your IP as long as confidentiality is maintained. Non-disclosure clauses in employee contracts are examples of ways in which you can protect your company’s proprietary know-how.|
When we receive a technology disclosure, the next step is to work out whether it has development potential.
To work out whether your idea could be commercialised, we’ll look at:
- Unmet need: what’s the problem that your invention addresses and how well does it meet that need?
- Market assessment: what’s the potential market for the technology and what’s the total market value?
- Competition: who are the competitors, and what stage of development are they at?
- Technical hurdles: how long is the development process?
- Intellectual property rights: what type of intellectual property (IP) is it, and does it require protecting?
- Development costs: what’s the likely time, resource commitment and cost of development?
- Development path: what’s the best path to impact: licensing to an existing company, forming a new company, or development through not-for-profit routes?
A patent is a bargain between the applicant and the government under which, in return for disclosing an invention such that someone skilled in the art could recapitulate it, the applicant gets an enforceable right to prevent others from making, using or selling the invention for 20 years.
Businesses from the pharmaceutical industry to construction, IT, transport and aerospace will pay to exploit those in order to secure competitive advantage, especially if investment in technology development is required.
Patenting is an expensive and lengthy process. It typically takes around five years to get a patent granted and costs upwards of tens of thousands of pounds. Ongoing renewal fees can add significant costs.
For an invention to be patentable it has to meet several requirements:
- Novel: the invention hasn’t been in the public domain, for example as part of a publication, poster, or presentation. If you think your idea might be patentable, discuss it with your business manager at UCLB before a public domain disclosure.
- Inventive: the invention isn’t obvious to someone in the relevant technical field. Often an academic’s threshold for what could be considered inventive is significantly higher than that required to file a patent application, so don’t be put off discussing your idea with UCLB if you think it may be inventive.
- Industrial applicability: the invention has a technical application.
- Not excluded: the invention is ‘patentable’ under law and not excluded on public policy grounds. In the UK, mathematical methods, discoveries, some computer programs or mobile apps, or ways of playing a game or thinking aren’t patentable.
- Sufficiently described: the invention must be described clearly and with complete instructions that would allow someone skilled in the technical field to carry out the invention.
- The first step is to file 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’s 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 a search report is issued 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 want to continue with the application, you need to select the individual countries where you want a patent. The application is then examined by the individual national patent offices – with individual payments incurred at each office.
- It’s normal 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’s an issue fee to be paid for each territory and also renewal fees. The entire process can take on average from three to five years.
If your technology has development potential, UCLB’s business managers will advise whether it should be licensed to a commercial partner already in the market, or whether you should start a company to commercialise your idea.
The business managers will consider:
- Is the intellectual property (IP) position narrow or broad?
- Are there multiple potential licensees?
- Is there a platform for generating new IP?
- 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 will be most appropriate, and most likely to generate revenues for the inventor. We’ll identify companies that have the capability and infrastructure to develop and market your technology.
If the IP position is broad and there are several products or the opportunity to generate a pipeline of new IP, then it may be best to form a new company. A spinout is also likely to be the best option if your idea involves non-patentable IP such as software, know-how or algorithmic methods. UCLB will work with you to create a business plan and structure for a sustainable spinout enterprise.
Licensing is best suited for technologies that:
- can easily be produced and sold by existing companies with experience in similar technologies and markets
- are extensions of, or can enhance existing products
- are likely to be seen as one-time purchases.
There are many benefits to licensing your technology:
- Revenue generation: the licensee of your technology pays a fee in exchange for a licence to the underlying intellectual property (IP); they then develop and sell the product independently.
- No upfront investment: you don’t need to invest significant amounts of time and money into building the ‘end’ product, securing investment and reaching the market.
- Larger market penetration: existing businesses have networks that allow them to sell products based on your IP in wider territories, increasing revenue and impact.
- Faster time-to-market: existing businesses already have production capacity and distribution chains in place, meaning that they can bring solutions to market more quickly.
- New relationships: industry connections can lead to new networks that complement teaching and research.
Spinning out is usually recommended in one of two cases:
- Disruptive innovation: this is the case for ideas that represent complete breaks with current technology and/or business models. They do not only change the face of technology, but they create a new market for it as well, modifying supply chains and user behaviour. Popular examples include the iPhone, Airbnb and Skype.
- Platform opportunities: these are cases where the idea has multiple applications in many industries, which would make its licensing financially inefficient. Machine learning or optimisation algorithms that could be integrated into many solutions and applied to different industrial contexts are prime examples. If your technology falls under this category, you should still consider focusing on a specific industry challenge, as a method without application stands little chance to secure funding.
Spinouts are successful if they have a clear target market and develop a product that responds to needs well enough to become sustainable. This can be a complicated and turbulent process, and many start-ups discover along the way that they need a team with a different skillset or have to change their business focus to find their place in the market.
Your product or service will need to tackle specific pain points in the market and outcompete existing technologies. You might be convinced that if your solution performs 5% better than competitors, it will be taken up by the market – but you also need to factor in the costs of implementing your solution and the added risks you present as a new market entrant. Customers may choose inferior technologies if they offer better value for money, reliability, or better target their audience.
Your target market isn’t always the one you initially envisage. Market researchers or experts from industry can guide your market scoping and advise you how to adapt your technology to an appropriate niche. You might start with informal (potential) customer or industry expert discussions – UCLB can provide non-disclosure agreements (NDAs) if these will reveal detailed information about your technology.
A market study can be a great way to understand whether there’s a market for your product or service; whether it’s large enough; what its characteristics and key requirements are; and who your customers and competitors would be. UCLB can recommend funding sources and experts to help with this work.
The goal of the business plan is to spell out the market your spinout aims to enter, the competitors in needs to beat and the funding it needs to secure. If the case you make is compelling, it will help you convince investors to fund your business.
Before you start, you’ll need clear answers to the following questions:
- What unmet need in the market are you addressing through this company? How big is that unmet need?
- Whose unmet need is it? Who are your customers?
- What is your solution? How does it address the pain points your customers have?
- How big is your market? (And where is it?)
- How will you bring your solution into the market? Who can you rely on to help you access it? Are there other markets that could open up to you in the future?
- How much time and how many funds will you need to bring your solution to your customers? Where will the funds and extra skills required come from?
- Do you need access to specialist facilities/ special sites to develop your solution? If yes, how will you access them?
- Who are your competitors? What products/ services are they selling and how will yours be different? What is their current market share and how has it been evolving?
- Who will be involved in the company and in what capacity? How are their skills relevant for the roles? Any gaps in the skillset? If yes, how and when will they be filled?
You can create your business plan as a concise document or presentation. You’ll probably need to include most or all of the following sections:
- Executive summary: this is the only section of your plan that all investors will read, so keep it short (one page maximum) and clear. Include key points about your solution, the needs it addresses and the commercial opportunity.
- Market analysis: highlight the opportunities available in the market your solution would enter. Investors are just as likely to make a funding decision based on the size of the opportunity as on the merits of your technology. Issues with the technology can be addressed through further R&D, but the absence of a sizeable market will inhibit the uptake of even the most sophisticated technology. Explain the need that your solution addresses and how your product or service is better than its rivals. You should outline the number of competitors, their market share, the size of the market and its evolution. You may need an expert to run a market study.
- Market access: outline your pathway into the target market, including how the solution will fit with existing technology, and commercial factors. You should include details of distribution channels, existing relationships and sales pipelines, product pricing and placement.
- Technology plan: discuss the technical challenges of bringing the technology to market and how your spinout will address them. Your solution should focus on a (limited number of) niche market(s), but you can mention future expansion opportunities here.
- Business model: this section explains how your spinout will earn money, the cash flows need for your business to be sustainable, how you aim to scale and how you plan to exit.
- Corporate governance plan: identify the roles, authority, and timing in key business decisions of shareholders, directors and the CEO. The plan will enable you to set up a robust decision-making structure that will give investors clarity and confidence in your venture.
- Intellectual property (IP) strategy: IP is a key asset for spinouts, so you will need to show how it will be protected and managed. Your plan should cover protection of existing IP and future developments expected in the next three years.
- People plan: outline the skills and experience of your current team and identify gaps to be filled. Explain how you’ll fill gaps – e.g. through new hires, board members or mentors – and how you’ll secure their involvement. You may want to expand your search through your wider network, UCLB or collaborations with initial investors.
- Risk analysis: investors will want to see that you’ve considered scenarios where things don’t go to plan and what measures you’ll take to bring your company back on track. Always outline the financial and operational implications of each scenario.
- Financial and operating plan: after the executive summary, this is probably the most read section of the average business plan, as it contains key information on the investment needed to bring the solution to market, expected revenue and timeline, and the expected return at an ‘exit’. Include financial projections for at least three years (some investors will ask for five-year financial outlooks), including summary figures for the profit and loss account, balance sheet and expected cash flow. For the first year of your projection, break all your figures down into monthly positions; the following years could feature quarterly projections. Take into account the fact that most investors will only back you if they believe they can make substantial returns in a reasonable time scale (usually around 10x), so consider including return on investment (RoI) estimates.
- The capitalisation table (cap table): the cap table is a spreadsheet that sets out how equity is divided in your spinout. A basic version accounts for the founders and each founder’s portion of equity. It often also sets aside a percentage of company shares (usually 10-20%) in an option pool to incentivise initial team members. As investors come on board, they are added to the cap table and the initial shareholders’ equity stake dilutes. UCLB has cap table templates that you can use for equity modelling.
Most spinout stories begin with the entrepreneur investing their own money and time into the idea. The key benefit of being recognised as a university spinout is that your idea is usually taken more seriously at the outset. As you progress, more established and larger-scale funding solutions are often needed to develop a ‘minimum viable product’ (MVP), to understand your customers’ needs and adapt your product or service, to expand your customer base and grow your company.
Most spinouts will use one or more of the funding routes below:
- Bootstrapping: this is a very early-stage financing method where you use your income or savings to fund initial work on your ideas, which is why bootstrapping founders usually focus on minimising operational costs. It tends to be short-lived, as personal finance can usually only cover initial work; beyond this, founders generally resort to other funding methods. Similar and very early-stage financing includes friends and family.
- Debt: borrowing money entails having to repay the loan and the accumulated interest from the company’s profits within a fixed timeframe. While rates might be lower than the equity equivalent, the likelihood that your business will be in a position to have enough revenue to cover interest from the start is extremely low. At later stages in company evolution, debt might become a preferable option.
- Equity: this option exchanges shares in the company for cash. It is by far the most widely used funding route.
- Revenue: if you already have an MVP, you might be able to fund further development through your sales, without having to take on debt or give away equity. This funding method can only be relied upon once you have a stable product and established customers, with regular cash flowing into your business. If you co-develop your product/service funded by a customer contract, you need to consider the customer’s expectations about ownership of the resulting intellectual property (IP), and implications of restrictions on sales to their competitors. You should take legal advice if you’re considering this route.
- Grants: especially at the beginning of your journey, grants can be very helpful, as you won’t have to pay interest or equity charges. UCLB can recommend internal UCL grants, as well as relevant government and private grant sources. Once you’ve incorporated, you can no longer receive grants that cover 100% of your costs (as that infringes state aid regulations), so it’s worth taking this into account when deciding the right time to incorporate.
- Crowdfunding: this funding route works well for certain types of businesses (mostly creative B2Cs) and can take two forms: reward-based and equity-based. Reward-based is designed for pre-launch product-centred companies and allows them to raise funds from future customers for final product design and manufacture by effectively “pre-selling” a hotly anticipated product at a special early-bird rate. Equity-based is a mix between a typical equity round and the decentralised online format of a crowdfunding platform, allowing investors to invest small amounts in a start-up (as low as £20) in exchange for shares. Both forms take an all-or-nothing approach, which means that, unless the funding target is reached, the business doesn’t receive the funds.
A typical business will go through some of the funding stages below – though every start-up will have a different journey.
- Pre-seed/seed funding: this is used when you’re developing your product or service and trying to demonstrate that it can fulfil a market need. The funding in this round can come from sources as varied as business angels, accelerators, and early-stage venture capital.
- Series A funding: used when you have built your proof-of-concept product/service and understood how the business will operate. At this stage, you may have limited or no revenues and need to raise more funding to keep the business operational. Series A investors expect a 10x return on their investment, which means that you will need to demonstrate how the company can achieve that valuation over five to ten years.
- Series B funding: this is usually targeted at funding revenue growth activities, such as increasing market reach. Usually, businesses at this stage are comfortable with their product development and ready to invest more heavily in sales and advertising. Funding at this stage comes mainly from venture capital (VC) funds.
- Series C and beyond: these are ‘late’ investment rounds used to secure funding for scaling activities. Most late-stage investors (late-stage VCs, hedge funds, investment banks, private equity etc.) expect to double their capital.
UCLB has a track record of productive partnerships with industry. There are many ways to work with industry and the private sector, from exchanging materials, to becoming involved in joint scientific and clinical collaborations, and 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’s worth engaging with UCLB early in such discussions.
If you’re interested in providing consultancy services, UCL Consultants can help you find, develop and deliver external consultancy work.