Basic and applied research at UNB may result in intellectual property (IP) that can be transferred or commercialized to industry or other external parties. This applies particularly to discoveries that result from applied research projects. Should researchers be interested in obtaining UNB's assistance in commercializing a particular technology, submitting an invention disclosure to ORS is the first step in UNB's technology transfer process.
Submit your invention to ORS for consideration
Based on the invention disclosure, preliminary technical, intellectual property (including patent and/or literature searches as required), and market assessments are performed to gather information relevant to the prospects for commercialization of the IP/invention. This information is then reviewed and assessed by ORS, and used to make a decision on whether to:
If the results of the initial preliminary assessments are positive and ORS and the researchers agree to undertake a technology transfer project, the first step is for researchers to sign an assignment agreement, transferring ownership of their IP rights for that invention to UNB. The assignment outlines the responsibilities of both the researchers and UNB going forward, including how the parties will share proceeds should the technology be successfully commercialized. Where there is more than one researcher, they decide amongst themselves how the researchers' portion of any proceeds will be divided. Under the agreement, researchers retain rights to use the assigned IP for research and educational purposes.
A technology transfer plan is developed by ORS with input from the researcher(s) and describes all of the elements of the commercialization strategy. The plan can include sections on the objectives, markets, IP protection, valuation, communication, partners/resources, grant applications/proposals, and model agreements to be used. This plan may also include preparing applications for commercialization funding that is available through programs such as Springboard, NSERC Idea to Innovation, and others.
UNB works with a number of patent agents and attorneys who have expertise in various disciplines. Trademarks, patents, and various kinds of contractual arrangements all serve to protect IP. Where a decision has been made to proceed with patent protection, UNB often files a provisional patent application in the United States first. This provides for an option to file in Canada, the US, or other countries within a year of the initial filing date.
Communicating commercialization opportunities is done using both general and targeted methods. UNB prepares a technology profile for use in both methods. This profile presents non-confidential information about the technology, its stage of development, the researcher(s) and the opportunity. The general method involves publication of these profiles.
Targeted methods may include directly contacting potential licensees identified in the market assessment, or contacting local entrepreneurs who may have an interest in forming a start-up company to commercialize the technology.
The negotiation process begins with initial meetings and/or correspondence by the parties about the licensing opportunity. The first step is the execution of a non-disclosure agreement between UNB and the other parties to allow for confidential and more detailed discussions. An option agreement may be signed, providing the other party with a right to negotiate a license agreement during a defined option period.
Upon completion of the due diligence, or nearing the end of the option period, the other party will normally deliver a preliminary business plan either as part of an initial license proposal or as part of a proposal for seed financing. Based on this document, the major terms of the licensing transaction are determined. Presuming agreement on these terms, the parties will prepare, negotiate, and sign a license agreement. Where a start-up company is being formed, this stage may also involve the drafting of a shareholders agreement, articles of incorporation, certificates of registration, board resolutions, or other documentation.
The license agreement formalizes the transfer of IP rights from UNB to the licensee. The technology/IP described in the license sometimes falls under one or more patents. It may also include know-how, trademarks, and copyrighted material. The license agreement may be exclusive, sole, or non-exclusive, and it may be granted for one or more fields of use and for one or more territories. Consideration under the license may include fees, royalties, research project funding, equity, etc.
License revenue may include fees, royalties, equity or other financial consideration provided to UNB under the license agreement(s). As the party responsible for administration of the license agreement(s), UNB processes any proceeds and distributes applicable portions to researcher(s). Options can also be discussed whereby proceeds are directed into further research funding.