Commercialization is transformation of knowledge and/or research into commercial products and services, and the process by which it is introduced into the general market. The public benefits when new products are developed – from putting innovative products on the market to creating economic value through jobs.
Who can help when the PI discovers/invents something to commercialize?
Commercialization can feel like a daunting task. Federally funded research permits a university, small business or non-profit institution to elect to pursue ownership of an invention in preference to the government, however it is not always clear all the steps needed to pursue this path. At Duke, the Office of Licensing and Ventures (OLV) serves as a resource to faculty throughout the process. As the licensing and new venture creation arm of Duke University and the Duke University Medical Center, OLV is responsible for patents, licenses and other intellectual property matters for Duke University.
What is the process to commercialize?
The below steps summarize the usual process for commercialization. Keep in mind that each invention or discovery can present its own unique circumstances which need to be addressed during the commercialization process. If at any point the PI is unsure how to proceed, contact the GCA or Duke’s OLV for assistance.
- Contact OLV: Whether considering a project with product potential, getting advice early in the research process is the key to successful commercialization.
- Submit Invention Disclosure Form: The PI should submit the idea using an Invention Disclosure Form (IDF) at least three months before disclosing the idea to the public. While the IDF starts the protection and commercialization process, it does not provide any legal protection of the invention. Do not disclose the invention publically until after talking to OLV. If the PI has already disclosed, submit an IDF anyway, as patent rights may still be preserved in the United States.
- Disclosure: Public disclosures can include: abstracts, publications, reports submitted to granting agencies, presentations, theses and thesis defense seminars. If a public disclosure has been made or is pending, make note in the IDF. Patent prosecution can always be abandoned, but it cannot be started after disclosure.
- Assessment: OLV will contact the PI within three weeks of receiving the IDF to assess the invention for patentability and marketability and advise the PI of options.
- Legal/Intellectual Property: If the outcome of the OLV assessment is positive, the process to protect the invention will begin. This process may take several years. Duke University will pay the costs incurred by this process, which may take several years, with the goal of recovering that investment from licensing revenue.
- Marketing: Using Duke’s industry contacts and expertise, OLV will work with the PI to assist in marketing an invention to both large and small companies.
- Transaction: Once a partner or commercialization plan is in place, OLV will work to align the plans with Federal rules and negotiate a license that meets those needs. Under a license agreement, Duke retains ownership of the technology and its associated patent rights. Any revenues generated by the license will be distributed according to the Duke University Patent Policy.
- Royalties/Payments: Duke’s OLV handles the receipt and distribution of royalties and related payments in accordance with the University Policy on Inventions, Patents and Technology Transfer. Academic and Federal labs share license and royalty payments with individual inventors, however there are payment caps or restrictions on the level of commercial involvement at most institutions.
When to consider commercialization?
Commercialization can bring about benefits to the PI, the University and to society by getting innovative products on the market for public benefit. Some of these benefits include:
- Creates commercial and public recognition of the research
- Attracts new research and development resources and partnerships because of the PIs success
- Patents and publications contribute to consideration for tenure
- Financial gain from royalties
- Economic value and impact, such as creating jobs
It should be noted, however, that the process of commercialization is time consuming and may present challenges.
- Further research and development of the product or technology, which may take time away from other research endeavors.
- Development usually requires patent protection, which can be a lengthy process, to enable companies to take the necessary financial risks.
For the most relevant advice on commercialization of research discoveries or inventions, contact Duke University’s Office of Licensing and Ventures (OLV).
- Keep accurate lab notebooks, preferably dated and signed.
- Abstracts, meetings and online publications all constitute disclosure. Do not publish on the internet until approval has been received from patent advisors. Once the PI discloses, patent rights may be at risk.
- Confidential Disclosure Agreements/Material Transfer Agreements are essential for the transfer of information and reagents. Contact Duke University’s Office of Licensing and Ventures before involving third-parties.
- The best commercial partner may not be an existing firm, but rather an entrepreneur who may have the initiative or willingness to take a risk on a complex or new idea.