Commercialisation process

The Commercialisation team provides professional support in commercialising IP for all University academics, and will assist in choosing and undertaking the most appropriate route to commercialising their research. This expertise is complemented by legal support from the Research and Knowledge Exchange Contracts team.

Where the activity relates to the provision of professional training, support will be provided by the Corporate Training team.

The Research Excellence Training team provide a range of enterprise training activities available to research staff and research students.

The timescale of the commercialisation process will be different for each opportunity but is likely to take months, or even years. The amount of time depends on how well developed the piece of technology is, the market for the technology and the amount of work needed to bring a new concept to the marketplace. The commercialisation process at York has been designed to ensure the most efficient assessment and development of commercial opportunities with these factors in mind.

University technologies are often at too early a stage, ie not sufficiently ready to sell as a product or service, to attract immediate external investment from a licensee, or an investor in the case of a spin-out company, and therefore timescales are often lengthened compared with commercial settings. 

As an approximation, the shortest time taken to develop a licensing opportunity is around six months, and for spin-out companies around 18 months.

The specific time commitments required will be different for each opportunity, but academic time commitment is required and this is a key aspect of the process. Successful commercial outcomes will result from a strong collaborative approach between the academics and the Commercialisation team.

The academic member of this team would be expected to play a major role in:

• Communicating the technical details of the technology to external, sometimes non-expert, people or organisations
• Transferring the knowledge to the licensee or spin-out company
• Development funding bids
• Delivering development projects

There are two main University policies relating to commercialisation:

• Regulation 12
• Code of practice and principles for good ethical governance

The research process which produces novel and useful intellectual property (IP). IP may be a process, machine, method, software, treatment, device and/or know-how. More details about IP can be found on the government's intellectual property web page.

Responsibilities and timescales

Academic team

The Commercialisation team are not typically involved in this stage. Exceptions are:

• input into any non-standard commercially relevant IP terms of a research contract with an external party, and/or
• requests from external funder for letters of support from the Commercialisation team/Technology Transfer Office (Research and Enterprise).

Training

Training sessions are available to all academic staff covering intellectual property, commercialisation and the commercialisation process at York.

Funding

Typical research funding sources include UKRI, industry, alumni and more.

Any new opportunity arising from research that the academic team wish to be considered for commercialisation must be disclosed to the Commercialisation team. 

• Any departments in the Faculty of Sciences should complete the invention disclosure form
• Any departments in the Faculty of Arts and Humanities and the Faculty of Social Sciences should complete the opportunity disclosure form
• For software disclosures use the software disclosure form

and return to the Commercialisation team via commercialisation-team@york.ac.uk.

The Invention Disclosure Form (IDF) should provide as much information as possible and clearly describe; the invention and why it is novel and advantageous, the current stage of development, the details of the funding used to generated the invention, the involvement from any third party organisations (another HEI or industry partner/s) and the contractual relationship, details of any public disclosures and details of the individual inventors.

Output

A completed IDF submitted to the Commercialisation team.

Responsibilities and timescales

The academic team wishing to be considered for commercialisation are responsible for completing and submitting an IDF. The Commercialisation team can provide support and guidance, if required, to assist in completing an IDF.

Funding

Not applicable at this stage.

The submitted IDF will be reviewed to ensure all relevant information has been provided and that the details of the invention are clear. An initial due diligence exercise will be undertaken to ensure the University has the freedom to exploit the IP and to confirm there are no fundamental reasons why the opportunity cannot progress. Reasons for non-progression may include:

• the University does not own the IP
• the usage rights to the IP have already been given to a third party
• the invention has been publicly disclosed
• the invention is still at the idea stage

Output

The Commercialisation Manager will review and communicate with the academic team on whether it's been approved to move to a further stage.

Responsibilities and timescales

• Input and support from the academic team and any collaborators may be required for clarification or to provide any additional information as requested
• Support from the Research and Knowledge Exchange Contracts team may be required to review a complex IP ownership and usage situation
• An initial response will be sent to the academic team within two weeks
• Approval to move to a further stage is required following a discussion at a Commercialisation team meeting review

Funding

Not applicable at this stage.

Dependent upon the nature of the invention, the details provided in the IDF and the result of Stage 2, a commercial evaluation is likely to be required. This could involve one or more of the following activities:

• A prior art patent search to inform the novelty of the invention
• A market search/report to inform the potential size of the addressable market
• Identification of existing companies
• Discussion with existing companies, under confidentially, to inform interest and ‘industry pull’
• Review of the technical development required including likely timescales and funding requirements
• Review of the possible, most likely and most beneficial commercial route/s to market, for example licensing to an existing company, the formation of a spin-out company or the formation on a Joint Venture company (JV) with another organisation.
• Discussion and assessment of the academic team’s goals and ongoing involvement and commitment to progress the commercial opportunity

Output

A completed initial evaluation report detailing the opportunity, findings from stages 2 and 3, an IP protection strategy and an agreed commercialisation development plan for the next 12 months.

Responsibilities and timescales

• The initial evaluation report will be led by the Commercialisation Manager.
• Dependent upon the nature of the work required, it will be completed either within the Commercialisation team or partly through external experts such as patent attorneys or consultants.
• The Commercialisation team will support with Non-Disclosure Agreements (NDAs) if required.
• Commitment and support from the academic team and any collaborators is essential at this stage.

Each opportunity is unique and thus specific requirements and timescales to complete this stage will vary, typically form one to three months, or longer for particularly complex cases.

Approval to move to a further stage is required from the Commercialisation and IP Approval Panel via the submission of an initial evaluation report. The panel is held monthly and is comprised of the Head of Commercialisation, Director of Research and Enterprise, Associate Director of Research and Enterprise, Head of Enterprise Services and an external commercial expert.

Funding 

Commercialisation HEIF funding of up to £2.5k per opportunity for any external work as required.

Subject to approval at the previous stage, an initial IP strategy will have been developed and IP rights can be considered for protection, if appropriate.

There are different forms of IP protection available to protect the rights associated with the various different forms of IP. Protection of IP is an important factor in the ability to commercialise University IP, so it is important to form an initial IP strategy and seek protection at the correct time.

Patents

Patents are the most common form of IP rights used to protect University IP. More details about patents can be found on the government's patents web page. The patenting process is complex, time consuming and expensive. Once an initial patent application is filed, it starts a process which can take multiple years to obtain a granted patent and obtaining a granted patents is by no means guaranteed.

Once an initial patent application is filed this creates a ‘priority date’. It is possible to publish details of the technology at any time after the priority date in journal or elsewhere without producing the patent application. However there are some benefits to delaying any publications within the first 12 to 18 months after filing and this will be discussed as part of the IP strategy development on a case by case basis.

Design Rights

Design rights can be used to protect the form and shape of a unique design. Design rights can be formally registered and more details can be found on the government's design web page. 

Trade marks

Trade marks protect the brand identity of a product or service. Trade marks have to be applied for and registered, and more details can be found on the government's trade marks web page. 

Copyright

Copyright is an automation protection IP which covers literary and artistic works, music, films and some recordings and broadcasts. Novel software code is also protected by copyright.

Know-how

Know-how is expert knowledge which cannot be protected via a formal IP right but has the potential to be commercially valuable. The commercial value in know-how IP often comes from keeping the know-how secret, otherwise known as a trade secret. It is often difficult for the University to commercially exploit know-how on its own as usually some or all of the know-how will have been made publicly available through a journal publication or other public disclosure.

It is important to note that a technology/commercial opportunity may encompasses more than one type of IP or IP rights.

Output

Relevant IP rights record and applied for where applicable, for example the submission of an initial patent application.

Responsibilities and timescales

• The stage will be led by the Commercialisation Manager in collaboration with academic team
• IP/Patent filing process will be managed by the Commercialisation Manager and supported by the Commercialisation Administrator
• IP/Patent filing work will be led by external specialist IP/patent attorney
• Input from academic team at this stage is critical

Specifically for patents, once a patent attorney is engaged it will typically take one month to draft and file an application.

Funding 

The University's IP/patent budget

Dependent upon the nature of the Initial Evaluation Stage (Stage 3), further work will very likely be required to further develop and quantify the opportunity. This work will have been identified in the initial evaluation report (Stage 3) and is likely to include one or both of the two categories below:

• Proof of Market Study: completed by an independent, expert external consultant to validate the commercial opportunity.
• Proof of Principal Technical Development Work: a small piece of testing/validation work to proof a critical factor of commercial relevance.

If a patent application was filed for the technology/opportunity at Stage 4, then all relevant work in this stage must be completed and summarised in a commercialisation plan before the international PCT application deadline, which is 12 months after the initial filing. This will inform the go/no-go decision to progress with a PCT application.

Output

A commercialisation plan detailing the opportunity and a business case which clearly states how the combined Commercialisation and academic team (and any external parties if relevant/required) will progress the opportunity through to Stage 6.

Responsibilities and timescales

• Collaboration between Commercialisation Manager and academic team as required to secure funding and manage project delivery.
• Research and KE Contracts team to support any contracts as required.

Approval to move to a further stage is required from the Commercialisation and IP Approval Panel via the submission of a commercialisation plan. The panel is held monthly and is comprised of the Head of Commercialisation, Director of Research and Enterprise, Associate Director of Research and Enterprise, Head of Enterprise Services and an external commercial expert.

Funding

Typically £5k-10k, which could be secured via a range of internal and external sources.

Internal sources:

• HEIF Commercialisation Budget
• EPSRC Impact Acceleration Account (IAA)
• ESRC IAA
• Grow MedTech
• Impact funding schemes within Faculties, Departments and/or Centres

External sources:

• IAA funds direct application, eg BBSRC, NERC
• Industry partner
• ICURe NxNW Lean Launch Programme

Subject to a positive outcome at Stage 5, it is likely that the technology will require further technical development to achieve commercially relevant technical milestones. This is often referred to as commercial proof of concept. The goal here is to demonstrate a level of technology development or readiness to give enough confidence for a potential licensee or investor to then invest in the continued development and commercialisation of the technology, as per stage 7 below. External licensees or investors would often refer to this as ‘de-risking’ the opportunity.

As every technology/opportunity is unique, the specific work required at this stage will be dependent upon the individual specific requirements in each case. The aims should be clearly understood as a result of the work undertaken in Stage 5. It may be that one project with a relatively short duration is all that is required, or it may be multiple and/or longer duration project in series or parallel from a range of funding sources are required. These projects should typically involve input and support from industry partner/s. This could range from industry informing the relevant technical objectives they would need to see to ‘de-risk’ the opportunity, through to co-development projects with significant funding from one or more industry partners.

Either in parallel with or immediately following the technical development work, further commercial development work must also be undertaken to refine the commercial opportunity and build the commercial case to move to Stage 7. As with the technical work, the specific work required here will be case dependant, but below are the common aspects that are required to put the case forward for either a licence or a spin-out opportunity.

Licence

• The best/most appropriate licensee has been identified/selected and evidence provided to demonstrate this
• The relationship with the licensee has been built
• Due diligence on the licensee has been completed
• A business/commercialisation plan has been provided by the licensee
• Clear statement of all resources deployed to date in support of the opportunity

Draft commercial ‘Heads of Terms’ have been discussed and the stage of discussion is clear, ie agreed, to be agreed etc. This should include:

• Clarity on the IP rights that will be licensed
• Indication of exclusivity v non-exclusivity, field of use/s and territories required
• An indication of the ongoing relationship with the licensee and if any University staff and/or other University resources will be required to continue the development of the opportunity
• An indication of the financial structure and value of the licence

Spin-out

• The founding team is clear and if/how any University academics/researchers will be involved in the spin-out is clearly defined
• The best/most appropriate investor/s have been identified/selected and evidence provided to demonstrate this
• The relationship with the investor/s has been built
• Due diligence on the investor/s has been completed
• Clear statement of all resources deployed to date in support of the opportunity
• How the University’s IP rights will be provided to the spin-out is clear
• Clear statement of the ongoing relationship with the spin-out and if University resources will be required to continue the development of the opportunity

A full business plan must be completed. This should include:

• Details of the products and services to be provided
• Market information and market research
• Technical development plan
• Competitor analysis
• Sales and marketing strategy
• Operations and logistics
• Business management and employee roles
• Financial plan including clear milestones defined for future investment, if required

If a patent application was filed for the technology/opportunity at Stage 4 and continued to a PCT application at Stage 5, if possible all relevant work in this stage should be completed before the national phase patents application/s deadline, which is 30 to 31 months after the initial filing ie 18 to 19 months after the PCT application filing. This will inform the go/no-go decision to progress with national phase entry and if a go decision, which territories to file application/s in.

It is recognised that it is not always be possible to complete all this activity within this national phase entry timescale, for example for a novel drug development program where timescales are typically much longer, and so this will be taken into account on a case by case basis when making the go/no-go decision for national phase entry.

Responsibilities and timescales

• Collaboration between Commercialisation Manager and academic team as required to scope out a commercially-focused development plan, secure relevant funding and manage project delivery.
• External consultants may be used in this stage, particularly for potential spin-out opportunities, to support any contracts as required.
• Approval for a commercial licence or spin-out formation is required by the Director of Research and Enterprise Services on an ad-hoc basis when the opportunity is ready to progress.

If a patent is associated with the opportunity, approval to move to the national phase application stage is required from the Commercialisation and IP Approval Panel via the submission of a commercialisation plan. The panel is held monthly and is comprised of the Head of Commercialisation, Director of Research and Enterprise, Associate Director of Research and Enterprise, Head of Enterprise Services and an external commercial expert.

Funding

Typically £20-£250k which could be secured via a range of internal and external sources.

Internal sources:

• HEIF
• EPSRC IAA
• ESRC IAA
• Grow MedTech
• Impact funding schemes within Faculties, Departments and/or Centres
• UoY Enterprise Fellowship Program

External sources:

• IAA funds direct application, eg BBSRC, NERC, MRC, NIHR
• Industry partner
• ICURe Programme
• Royal Academy of Engineering Fellowship Program

Subject to approval at Stage 6, progress to negotiate and finalise the commercial terms and prepare the relevant licence agreement/s ready for final approval and sign-off.

The University will retain a right to use the IP for internal teaching and research purposes.

Responsibilities and timescales

• Led by the Commercialisation Manager and/or Head of Commercialisation with support from the Research and KE Contracts team
• Input from the academic team is required to support
• Licence signed by Director of Research and Enterprise Services

Funding

Not applicable at this stage.

Subject to approval at Stage 6, progress to negotiate and finalise the commercial terms and prepare the relevant legal agreements ready for final approval, sign-off and company formation.

The University will retain a right to use the IP for internal teaching and research purposes.

Founding shares will be determined in-line with Regulation 12.7.3.

It is likely that as part of this stage a new company will need to be registered with Companies House, a bank account set up and legal representation for the new company will need to be put in place to facilitate the process.

Responsibilities and timescales

• Led by the Commercialisation Manager and/or Head of Commercialisation with support from the Research and KE Contracts team.
• Input from the academic team is required to support. Note that where academics will become individual shareholders of a spin-out company, they must take their own personal legal advice if they wish.
• Company formation documents signed by the Director of Research and Enterprise Services.

Funding

• The University for any initial costs associated with new company registration etc.
• Investor/s to cover their own costs, although they may claim them back from the new company once it is formed.

Licence

Monitoring of the licence agreement to ensure milestones are being met, payments are made and reports are provided.

If the licensee breaches the terms of the agreement then the University will potentially terminate the agreement which would enable the IP rights to be licensed to a different licensee if one can be found and appropriate terms can be agreed as per Stage 6.

Revenues received from the licensee will be shared with academic team in-line with Regulation 12.7.2.

Spin-out

Subject to the University’s shareholding position and agreed terms, the University may wish to appoint a non-executive Director and/or observer to the spin-out company’s board to support early stage development and monitor progress.

Typically University IP rights will be licensed to the spin-out on favourable commercial terms and this licence will be monitored. IP rights may subsequently be assigned to the spin-out on commercial terms once the company is well established and if this is deemed to be in the best interests of the spin-out and the University.

When the University’s shareholding value is realised through the sale of its shares, or an exit (if the spin-out is bought by another company or floated on a public stock exchange enabling shares to be sold) any revenue will be returned solely to the University. The academics will benefit directly through the sale of their personal shares.

It is important to state that not all spin-out companies are successful and grow into viable, self-sustaining, long-term businesses. Where spin-out companies fail and the University has not assigned the IP rights, the IP rights could potentially be either licensed or used to form the basis for new spin-out company subject to securing an appropriate route as per Stage 6.

Responsibilities and timescales

This stage will be led by the Commercialisation Manager and/or Head of Commercialisation with support from the Commercialisation Administrator, Finance and Research and KE Contracts teams as required.

Funding

• Licensee/s or Investor/s (Angels Investors, Venture Capital and/or Corporate Investors).
• Licensees and investors/spin-out company may also leverage grant funding resources where appropriate.