University of Saskatchewan

September 19, 2014   

Does my invention have commercial potential?

The road from lab bench to market place is long and convoluted and requires effort and patience. The ILO exists to help you determine the potential commercial value of new inventions and if significant to help find partners to carry out commercialization.

The process starts with a researcher musing about the potential for his/her results to have potential use in industry. This should lead to some discussion with the ILO professionals assigned to your college. ILO has teams assigned to various colleges and often located in offices in your college or close by. These tech transfer professionals speak both the language of researchers and that of business and can offer you some initial ideas about how pertinent your research results might be to industry. They may even suggest further experiments to flesh out the invention. The next step is to complete an ILO Report of Invention which officially discloses the invention to the University. At this point the ILO will assign a Technology Transfer Manager or Technology Transfer Officer to work with you to examine the protectability and commercial potential of the invention. This due diligence process typically takes 3 months but can take longer.

Why do companies want to commercialize new technology? Companies value new technology as a means of creating competitive advantage in the market place. From promising new technology they can develop new or improved products or processes. However, in order to keep competitors from copying these innovative products and processes they want to have statutory protection such as patents or copyright to exclude competitors. This is why one of the first steps that we undertake with our inventors is to determine the protectability of the invention. To do this we do a thorough review of the patent and other prior art to determine novelty and the potential to get patent protection. We engage specially trained patent literature searchers who use search engines and databases specifically designed for this task. These searchers work with you the inventor and the ILO tech transfer professional to carry out the searches. Once the search is complete then the inventors and the ILO staff member review the results and get a reasonable idea of novelty and the chances of successfully applying for patent protection.

Patenting is an expensive and lengthy process and so one is advised to ensure as much as possible that the invention meets the three criteria for patentability, novelty, non-obvious to someone skilled in the art and useful. In most of the world novelty is destroyed by publishing an enabling description of the invention before filing for patent protection. Canada, the USA and Mexico are three exceptions where you have one year from the date of publication in which to file a patent application. In today’s globally competitive market many companies will want world wide protection and so North American protection is not good enough. This is particularly true for the pharmaceutical industry where the costs of product development and regulatory approval are enormous. Therefore it is wise to discuss your invention with the ILO long before you plan to publish your results or even submit an abstract for a presentation (some abstracts are enabling to someone skilled in the art). The ILO will work with you to discuss and determine the non-obviousness of your invention and its usefulness and we may hire a patent agent to advise on such matters including novelty. In any event if patents are to be filed we hire outside patent agents to write the patent application with your input, file it with the patent office and prosecute it once it is examined by the patent office.

While our patentability study is going on we also undertake a market study to determine commercial potential. The key questions are:

  • Can I imagine a product or process derived from this invention?
  • Does that product or process solve a problem that the market appreciates and wants to solve? Remember that the market may not be the retail consumer or end user but rather the industry that will produce the product or use the process.
  • How big is this market and is it growing or static or shrinking? We also need to have a sense as to what sort of margins or profit there might be for this product or process. If the market is small and there may be only 5000 units sold in a year with a margin for the seller of $50 a unit this is far too small an opportunity to justify spending money on patenting, marketing and licensing the technology.

ILO will work with you to determine what the product or process might be and who are the industrial players. We may get some clues from our patent prior art search about companies active in the field. Then we will undertake to discuss with our contacts in industry what the market characteristics might be. If the product is only a marginal improvement over the status quo (many industries are reluctant to make significant changes for anything less than a 25% improvement) then there will not be the market pull that is so important to attract industry partners.

Once this initial due diligence has been done regarding protectability and commercial potential the ILO professional will complete a technology evaluation protocol questionnaire which leads to a review by ILO’s Intellectual Property Review Committee and a decision whether to invest more resources in protecting and commercializing the invention. If the decision is made not to do so it is not a reflection on the quality of the research. Such a decision might be made because of patenting issues, market issues or perhaps simply that more research is needed in which case we will encourage more research and ask for a new report of invention once this has been done.

Because the cost of developing a product from an early stage invention is many times more than the cost of the initial research, companies contemplating licensing in a new invention take a close look at the risks they are facing. They will be concerned about whether the invention will work as claimed, will the patent issue, can it be scaled up, will it be cost effective, will other technologies be needed to make it work and if so what will they cost, will the market be there and will they penetrate the market to the extent needed, will there be problems with regulatory hurdles. The fewer the risks the more likely industry will be interested. The more performance we can demonstrate to the prospective licensee the lower the risk. Accordingly, we find if the researchers can show proof of principle and a working model that companies can test our chances of success are greater. To this end we have introduced the Forge Ahead Fund which is an ILO administered program more fully described elsewhere on this site. This fund is to provide researchers with up to $25,000 to carry out proof of principle work and/or prototype creation. ILO will also work closely with the researchers to access the NSERC Ideas to Innovation program and the CIHR Proof of Principle program which operate a little later in the innovation process than Forge Ahead. Such funding is only available for those inventions assigned to the University of Saskatchewan and which have been accepted by the ILO for commercialization. Through the successful use of these funds we anticipate being in a much better position to license the invention and to obtain more advantageous licensing terms.