Invention Disclosure Acceptance Criteria
- Does the disclosure include all information necessary to properly record the disclosure and reasonably document the date of discovery?
- Does the disclosure provide sufficient information for appropriate communications to all relevant stakeholders (inventors, research sponsors, material suppliers, collaborators, others)?
If criteria is NOT met, then:
IIE Personnel communicate a list and associated description of specific missing required elements to all inventors required for initiation of preliminary assessment.
If criteria IS met, then:
Disclosure form is processed and recorded with notifications and necessary processes followed for sponsor acknowledgement/rights and other institutional obligations.
Commercialization Assessment and Implementation Process Entry Criteria
- Does the disclosure include sufficient information and is it sufficiently understandable to identify potentially claimable elements of the invention?
- Does the disclosure provide information supporting identification of specific commercial applications and individual or categorical customer/end-user groups who can be contacted to assess market opportunity and need?
If entry criteria are NOT met, then:
IIE personnel work with inventor(s) to:
- Obtain better understanding of what potentially claimable elements are believed to exist within the technology and the supporting logic for belief of novelty and non-obviousness or alternate strategies for proprietary protection and
- Identify prospective end-users and customers (individuals, companies, and/or sectors)
If entry criteria ARE met, then:
Case File is updated to include:
- Claimable elements within the disclosed technology (or alternate means of proprietary protection).
- Market participants, including target end-users, licensees and/strategic partners and high-level value proposition
Technology Commercialization and Implementation Process
Stage 1: Preliminary Assessment
Key Activities Within Stage 1
Preliminary assessment of the following:
- Current state of field where solution is intended to be applied
- Desirable and required attributes (cost, size, effectiveness, etc) for new solutions to replace current alternatives
- Overall addressable market potential including number of prospective end-users who’s needs are satisfied considering likely attributes of the new technology
Requirements for Exiting Stage 1
Validation of some identifiable and specific economic and/or technical advantages over known competing alternatives and an actionable market opportunity with reasonable probability for capture of commercial value within the scope and during the lifetime of prospectively available proprietary protection.
Stage 1 Outcomes
|If Case Does Not Exit Stage 1||If Case Does Exit Stage 1|
|Written summary provided to inventor describing limitations and technology is referred for continued development which may result in new discoveries which constitute claimable or otherwise proprietary protectable subject matter and which represent a reasonably substantial market opportunity to warrant further assessment.||Written summary of the competitive advantages of claimable elements over alternatives and the nature of the market opportunity that leverages claimable elements. Market opportunity summary to include names and estimated numbers of potential end-users, overall market opportunity, and estimated potential license income.|
Stage 2: Patentability Assessment
Key Activities Within Stage 2
- Availability of statutory subject matter within the scope of the invention which can be incorporated into an enforceable patent application.
- Prior art in the field and defensible arguments for statutory requirements for Novelty and Non-obviousness of commercially relevant claimable elements of the invention.
- Level of available information related to statutory requirements for Utility, Written Description, and Enablement of commercially relevant claimable elements of the invention.
Requirements for Exiting Stage 2
Claimable elements which are defensively novel and non-obvious over known prior art and for which sufficient detail is available to satisfy utility, written description, and enablement requirements. A general strategy for patent prosecution which has a reasonable probability of issuing claims of commercially relevant breadth.
Stage 2 Outcomes
|If Case Does Not Exit Stage 2||If Case Does Exit Stage 2|
|Written summary provided to inventor describing limitations and technology is referred for continued development which may result in new discoveries which present patentable subject matter with allowable claims that are broad enough to support commercial viability.||A brief written summary of the support for satisfaction of statutory patent requirements for novelty, non-obviousness, utility, written description, and enablement for commercially relevant target claimable elements.|
Stage 3: Market Opportunity Assessment
Key Activities Within Stage 3
Analysis of scale and nature of specifically actionable market opportunities presented by the technology. Review will include assessment of competing alternatives as well as sector dynamics such as distribution channels, barriers to platform conversion, regulatory issues etc.
Requirements for Exiting Stage 3
Actionable and validated market opportunity that is of sufficient scale to justify investment of further effort and financial resources for proprietary protection.
Stage 3 Outcomes
|If Case Does Not Exit Stage 3||If Case Does Exit Stage 3|
|Written summary provided to inventor describing limitations and technology is referred for continued development which may result in new discoveries which have potential to serve broader market opportunities due to reducing numbers of competitive alternatives or increasing numbers of targetable end-users.||Written summary of available market opportunity and identification of issues to be addressed during commercial implementation. Issues include further technical validation, recruitment of strategic development or other channel partners, understanding of regulatory landscape etc. Preparation of marketing document/paragraph for incorporation into technology marketing materials and on TechFinder.|
Stage 4: Commercialization Strategy and Plan Development
Key Activities Within Stage 4
Development of actionable development plan including critical technical and business de-risking activities and prospective funding sources related to such activities.
Requirements for Exiting Stage 4
Identification of key milestones toward commercial development including technical and business de-risking activities as well as direct customer and strategic partner cultivation targets
Stage 4 Outcomes
|If Case Does Not Exit Stage 4||If Case Does Exit Stage 4|
|Written summary provided to inventor describing limitations and development of commercialization strategy and plan continue until milestones can be developed and plans can be established to accomplish them. Case may be referred for further technical development to pivot the commercial opportunity in a way that more actionable plans with milestones can be implemented.||Written development plan with specific strategies to address and overcome issues identified in Stage 5. Plan will include technical and business milestones and activities to be conducted and funding to be sought to accomplish milestones. Plan should generally forecast the full path to customer/market but specifically identify the next 2-3 issues and paths to resolve each of those issues.|
Stage 5: Proprietary Protection Planning and Implementation
Key Activities Within Stage 5
- Collection of experimental data and clear summary of all known prior art.
- Development of proprietary protection plan including a patent filing strategy.
- Patent application preparation and filing through external counsel.
Requirements for Exiting Stage 5
Viable commercialization plan from Stage 4 and clear written description covering all commercially relevant aspects of the invention with sufficient experimental and other support to satisfy all statutory requirements for patentability.
Stage 5 Outcomes
|If Case Does Not Exit Stage 5||If Case Does Exit Stage 5|
|Written summary provided to inventor describing limitations and case deferred until sufficient technical information is available to support a viable patent application considering current state of patent case law for all statutory requirements.||Patent application filed and prosecuted in selected jurisdictions.|
Stage 6: Commercialization Plan Implementation
Key Activities Within Stage 6
- Execution of commercialization as developed in Stage 4 and as revised based on experience in follow-on technical and business development.
- Preparation of applications for funding technical and business de-risking activities including UCF, M-TRAC, REF-TC, SBIR/STTR, NSF I-Corps, BAF, and others.
- Engagement with prospective customers, licensees, and strategic partners.
- Continued laboratory work to validate technology and produce data necessary for promotion of technology.
Requirements for Exiting Stage 6
Recruitment of sufficient developmental resources to result in formal establishment and commercial momentum of Start-up Company or recruitment of strategic development partner to move technology formally into the marketplace.
Stage 6 Outcomes
|If Case Does Not Exit Stage 6||If Case Does Exit Stage 6|
|Written summary provided to inventor describing limitations and continued implementation of commercialization plan as originally specified and modified through ongoing development. Prosecution and maintenance of patent applications filed in Stage 5 evaluated based on progress in plan implementation and prospect for commercial outcomes.||Written term sheet defining of structure of private business arrangement with startup company, strategic partner, or prospective licensee.|
Stage 7: License
Key Activities Within Stage 7
Negotiation of license terms and development of follow-on business relationship in continued research and development or technology improvements etc.
Requirements for Exiting Stage 7
Executed license agreement with commercial milestones.
Stage 7 Outcomes
|If Case Does Not Exit Stage 7||If Case Does Exit Stage 7|
|Continued negotiation of appropriate and mutually beneficial business relationship. Prosecution and maintenance of patent applications filed in Stage 5 evaluated based on progress in plan implementation and prospect for commercial outcomes.||Commercial license in place with financial and technical milestones. Development of follow on business relationship toward technology improvements or expanded market opportunities.|
For any questions related to technology commercialization and implementation process contact Mike Morley at firstname.lastname@example.org or 906-487-2228.