A three month process based on a protocol proven effective at other Technology Transfer offices is used. The process involves the following elements:
- researcher(s) complete Confidential Report of Invention form (available through our office or on the web site)
- Technology Transfer Specialist assigned to review file and work with the inventor(s) to evaluate the invention
- patent prior art search and assessment of commercial potential completed in consultation with inventor(s)
- Technology Transfer Specialist completes the evaluation protocol and makes recommendations to the Intellectual Property (IP) review committee
If the Intellectual Property (IP) review committee accepts a recommendation for investment by ILO, a number of activities will be initiated by Technology Transfer Specialist including the following:
- development of marketing and commercialization strategy (inventor included in process)
- initiation of plan for obtaining statutory protection for IP (i.e. patent or copyright registration)
- non-confidential summary of the technology licensing opportunity prepared
- summaries posted to ILO’s web site and other web sites and databases designed for marketing university technologies
- network of industrial contacts, conferences, tradeshows, brochures, lectures, and mailing lists used to attract licensees
- inventor is consulted on all of these steps
In some cases the disclosures received by the ILO are very early stage and lack the proof of principle or prototype necessary to attract industry. In these circumstances ILO will assist in a number of ways:
- assist researchers in applying for proof of principle funds from granting agencies – CIHR or NSERC
- direct investment in the prototype development from ILO’s – “Forge Ahead Fund”.
- lengthy and expensive process
- carried out concurrently with marketing activities
- external patent agents with expertise in appropriate technical field are used
- consultative process for filing used with inventor playing a key role
- costs of patenting borne by ILO not inventor
- ILO negotiates option and license agreements with interested companies
- focus on local commercialization partners where appropriate but work with other partners when appropriate, always keeping in mind benefit to Canada
- ILO manages the licensor/licensee relationship to ensure licensee compliance.
The University of Saskatchewan Industry Liaison Office has established a Start-up Company Program to assist faculty, staff and student inventors to evaluate the feasibility of forming a start-up company and licensing their technology to that company in order to capture optimal value from the technology for the inventors, the university and the local and global economy.
- To facilitate their research program and assist research colleagues at other institutions or companies U of S faculty sometimes want to receive or provide confidential information or certain materials.
- University policy and practice require such transfers to be done with legally binding agreements in place to ensure such confidential information or materials are used only for specific purposes and are not passed on to third parties. Such agreements also ensure both parties rights regarding the use of resulting discoveries or inventions.
- The Industry Liaison Office has the responsibility and authority to negotiate and sign such agreements on behalf of the University.
- Whenever possible ILO tries to use the standard template Confidential Disclosure Agreement and Material Transfer Agreement that we have established but often this not possible as customization is needed for specific situations. It is common that whoever is supplying the information or material will want to use their standard agreement so when information or material is coming into U of S ILO will work with the other party to negotiate changes we think are necessary to their standard.
- Contact the ILO representative for your college for advice and assistance regarding CDAs and MTAs. Please remember that these arrangements are not trivial and if not done right can impact your future ability to do research. Also they are not something that can be turned around in a day or two. They often take several weeks.
The Industry Liaison Office has considerable expertise and knowledge in many fields related to technology protection and commercialization and we have access to experts in specific fields. As part of our program ILO offers various seminars to faculty, staff and students regarding such topics as:
- An overview of the ILO program of technology commercialization
- Intellectual Property Primer
- Patent Prior Art and Searching the Patent Databases
- U of S IP policy
- Going Corporate
- ILO’s start-up Company Program
- Scientific Research and Experimental Development (SRED) tax credits
- Structuring and incorporating a company
- Responsibilities of Board members
- Writing Business Plans
- The Need For and Use of Confidential Disclosure and Material Transfer Agreements
- IP Rights in Contract Research Agreements
Each of these topics can be expanded or contracted to suit your needs and time available. Topics other than those above can also be addressed. These can be delivered on a departmental, center or college level. If you wish to have a seminar delivered over the lunch hour ILO can supply a sandwich lunch for up to 25. Please contact your ILO college representative for arrangements or call 966-1465.