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The first step in the commercialization process is to document and disclose the invention to IPP by submitting a New Technology Disclosure (NTD) form through the online Inventor Portal, thus creating a record of the invention, the inventor(s) involved, sponsorship of the work, and public disclosures. The NTD is a confidential document that provides both scientific and legal information of a technology.
New Technology Disclosures received by IPP are logged into our internal database, assigned a docket number (the “050” number), and assigned to a specific licensing staff member for review and management. The licensing staff member is responsible for the intellectual property management and licensing of the docketed case.
A licensing staff member will set up a meeting with the inventor(s) to understand the technology and its usefulness. During the initial meeting, the licensing staff member will learn from the inventor(s) the background and novelty of the invention. This information will help us make an assessment of patentability, potential applications and markets, and possible commercial partners.
Because each invention has its unique characteristics and features, different commercialization strategies apply to different inventions. For example, if an invention leads to product development (i.e. a new drug, a new medical device, or a new instrument), then the invention will likely be licensed on an exclusive basis. The exclusivity provides an incentive to the licensee to commit to high risk and high cost product development. However, if the invention is a useful research tool or software-based innovation, then it may be licensed on a non-exclusive basis.
Developing successful licensing strategies requires access to various sources of information. The licensing staff member will likely have several back and forth communications with the inventor(s) in order to draw out advantages of the invention that are appealing to potential licensees and/or investors. Very often, a licensing staff member will need to reach out to companies in order to obtain additional information necessary to evaluate the likelihood of commercialization. Under such circumstances, confidentiality agreements may be negotiated prior to discussions in order to protect any confidential information related to the invention.