Below is an outline of the steps involved in the Acadia commercialization process. Please feel free to contact ICE for further details.
The first step in the commercialization process usually involves an initial meeting between the Director of ICE and the faculty member. During this informal meeting the faculty member will be encouraged to talk about their research and their intentions regarding commercialization. The Director may offer advice on IP protection in the case of patentable inventions, and general information about the potential commercial viability of the IP. If the faculty member would like to continue to the next step, the Director will forward an Invention Disclosure Form to the Faculty member.
Obtaining a written disclosure via Acadia’s Invention Disclosure Form is an important step in the commercialization process. This form gathers a variety of information about the invention, including detailed information about the inventors (ownership), dates, potential applications for the technology, names of potential licensees, etc. Information obtained via this disclosure does not constitute a public disclosure and will not affect patentability (if applicable).
Based on the information obtained from the Invention Disclosure Form, an initial market and technical evaluation will take place to determine whether a market exists (or will exist) for this technology. Information gathered includes: initial patent and literature searches, information on market trends, competitive products, potential licensees, etc. Various sources of information will be utilized, including: the faculty member(s) who will assist in the process; industry contacts; databases; technology transfer professionals; and the Internet. Based on this information, a preliminary decision will be made on the commercial potential of the technology, and whether or not ICE would like to be involved in the commercialization efforts.
Faculty members, who would like to work with the university (through ICE) as their commercialization partner, will then execute an Assignment Agreement to transfer their IP ownership to Acadia University. This will allow Acadia to act on their behalf when pursing potential licensees. This Agreement will outline the rights and responsibilities of the faculty member(s) and Acadia, revenue shares, warranty provisions, etc.
Intellectual Property Protection (if Appropriate)
Following assignment, a decision will be made on the need for legal protection of the IP and the most appropriate method (i.e. patent, copyright, trademark, etc.) In the case of a patentable invention, a Provisional Patent Application may be filed to reduce costs. This allows for a one year period in which to file a full patent application and/or find a licensee who will agree to bear the costs of full patent application.
Following assignment, a commercialization strategy will be developed that outlines the planned approach to commercialization. This will usually be in the form of licensing the technology to established commercial partners. The strategy will be developed with the input of the researcher, and will include details on the following: R&D requirements, estimated market potential, IP protection strategy, technology valuation, marketing plan, etc.
Marketing the technology to industry involves a number of activities - all targeted toward finding a licensee. How and to whom we market an IP opportunity will depend on the wishes of the researcher(s). During this phase a non-confidential IP profile will be developed with the help of the faculty member. This document will highlight non-confidential information about the technology, the stage of development, the researcher(s) involved, and the market opportunity. This profile will be used for first-level information when targeting potential licenses. It will also be published on the ICE web site and other on-line technology listing services as appropriate.
The most common method of commercializing university IP is through licensing the technology to a successful commercial partner. ICE will contact appropriate companies to assess their interest in obtaining a license for the intellectual property or patent rights (in the case of patentable inventions). Names of potential licensees come from many different sources - the most common being inventor contacts. Other sources of potential licensees include meetings or trade shows, trade publications and networking contacts. A number of these companies will be approached to discuss non-confidential aspects of the technology and the market opportunity.
If certain companies show an interest in the technology, they will be asked to sign a confidentiality agreement before detailed discussions or product demonstrations take place. Licensees are evaluated and ultimately chosen based on a number of factors, including their ability to manufacturer, market and sell the technology. Whenever possible, companies from Nova Scotia and Atlantic Canada will be approached as potential licensees.
If an approached company needs time to evaluate the technology, an option agreement may be signed to give them the first right to license the technology after a defined period of time, or after certain conditions are met (i.e. further product development, prototyping, etc.). The terms and conditions of license agreements vary dramatically, and are negotiated on a case-by-case basis. The license will outline exactly what rights the licensee will obtain via the license. It will be exclusive or non-exclusive and it may be restricted by field of use (by market or by application) or by geographic territory. Financial consideration for the license may include up front payments, royalties, equity, etc. Other items that the Agreement covers include: term of the agreement, warranties, product improvements, etc.
It should be noted that a license does not give up ownership of the IP. Rather, it gives the commercial partner the right to use, manufacture and/or sell the technology subject to agreed upon terms and conditions. If these terms and conditions are not fulfilled the license may be terminated or adjusted to meet the changing needs of the licensee.
Ongoing License Management
After the Licensing Agreement is signed, ICE will continue to monitor the license to ensure that all parties to the agreement are fulfilling their obligations. These obligations can include meeting of deadlines, keeping proper records, accurate and timely payment and royalties, appropriate marketing and sales efforts and prompt delivery by the researcher of any updates and improvements.
Royalty rates depend on a variety of factors such as the value of the invention, the stage of development, the cost of commercializing the invention, market size, profit margins and whether the license is exclusive or nonexclusive. Proceeds from licensing income are shared between the inventor and Acadia University pursuant to Article 33.21 of the Faculty Collective Agreement. When two or more inventors are identified, each shares equally in the income unless the inventors agree on an alternative distribution scheme.
While licensing is Acadia’s preferred approach to commercializing intellectual property, there may be some cases where it is appropriate to create a start-up or spin-off company to commercialize the technology. Typically, if the IP is a platform technology with broad market applications it may be a good candidate for a start-up company. In this case, ICE can assist with general advice, business plans, market research and access to capital. Please contact ICE for further details.
Standard License Terms:
Field of Use/Exlusivity
Ideminification and Warranties