Assessment of an Invention Disclosure
One of the main functions of the IDEA Center is to process new invention disclosures to determine their scientific uniqueness and market potential. When a new disclosure is received into the office, it is first checked to ensure all sections are filled out accurately. After the details and funding source are verified and the assignment section is completed, all University inventors must sign off on the disclosure. If any of these components are not completed, the IDEA Center cannot begin to process the disclosure.
After a completed disclosure is entered into the IDEA Center database, the invention is assigned a “U Number” as well as an internal Licensing Manager. The Licensing Managers work with the inventors to review the novelty of the invention, search the depth of competing technologies, conduct an IP review to determine the likelihood of protection, and determine the market potential of a future product or service. The market potential component also includes an estimate of the amount of time and money required for further development.
To discern the market potential, the IDEA Center team performs a market analysis centered on information gathering. The information gathering stage seeks to assess the overall value of the technology by drawing on sources such as the Internet, published literature, and general knowledge of companies participating in the given field of the invention. If the technology fits into a field with a large number of successful companies, it may be inferred that a sizable market opportunity exists for application. Businesses in competitive fields tend to prefer technology that will provide them with a clear and significant advantage over competitors, so if the field is already satiated with successful companies, the technology will likely need to offer more than a moderate improvement to the status quo.
On the other hand, if a discovery opens up an entirely new market, it can be very advantageous to establish control of the IP necessary for competitors to enter the field. Being able to control a commercial field creates a strong market advantage and could entice companies to invest more heavily in a given technology. Larger company investments can result in greater financial returns to the inventors and the University. However, there is a downside to nascent technology; work that is new to a given field can also be viewed as a commercial risk due to the lack of comparable products.
The valuation of a new idea hinges on many factors. This valuation process may be empirical in nature—examining similar deals on similar technologies, for example—or it can be more intuitive, estimating a sense of where a technology is headed in the future. In either case, input from the inventors is always important, particularly since they are the most knowledgeable stakeholders in their given fields. Additionally, the IDEA Center may solicit advice from other researchers on campus. Together, the combined efforts of the IDEA Center, the inventors, and other researchers on campus should provide an outline of how the technology might be used and what it may be worth.
If the IDEA Center decides an invention is not protectable or a market does not exist for the invention, then the University may, upon the request of the inventors, reassign ownership to the inventors. Reassignment of inventions funded from U.S. government sources requires the government’s prior approval. Among the key factors in the University’s decision-making process is whether additional University resources or private resources could best improve marketability, and whether all inventors agree with the reassignment. Upon reassignment, the inventors are responsible for payment of prior patent costs and all further development, patenting, and marketing expenses. If additional University resources are used to further develop the invention, the University may reassert ownership interest in the invention.