Understanding each of the steps involved in establishing a partnership with WatCo and commercializing an innovation is an important beginning for University of Waterloo researchers (i.e., faculty, students, or staff).
In order for WatCo to determine whether the technology has commercial potential and satisfies the criteria for an invention of uniqueness, usefulness, and non-obviousness, a technology disclosure form (for a technology that is a tangible product or related method, apparatus, or service) or a software disclosure form (for a technology that is software based) should be completed and submitted to WatCo.
Once reviewed by a technology transfer officer with expertise in the specific field of research, you will be contacted to book a disclosure discussion meeting. Key discussion points at the meeting will include:
- a review of the ideas encompassing the technology including an understanding of the status of development (ie. early discovery, supporting data, prototype status)
- prior public disclosure of your technology, e.g., publications, conference papers, presentations, or verbal communications including dates and form
- collaboration with another party (e.g., professional associate, colleague, student, or industry partner)
- funding received from any source
- any search for prior art (i.e., existing patents).
Assess commercial potential
After the preliminary meeting there may be a need for an information gathering period in order to more fully consider the technology for commercialization support (eg. contract agreement arrangements sorted out with third parties, sufficiency of reduction to practice data available, etc). Once all the requisite background information has been collected and considered, a commercial assessment of the opportunity will be undertaken by a WatCo staff member which in most circumstances should be completed in approximately 4 weeks time. The commercial assessment considers to the following two categories of investigation:
Conducting a patent search to:
- establish that no prior art exists and the technology is unique
- determine any pre-existing blocking patents that restrict "freedom to operate" for the technology
Performing market research to:
- identify target market segment, competing technologies, and barriers to enter the market
- determine the problem the innovation solves in the market and how important it is
- understand the size of the market and annual growth rate
- quantify growth of market share as compound annual growth rate
Agree to commercialize with WatCo
Assuming the results of the commercial assessment have been positive, WatCo will invite you to partner with us to commercialize the opportunity.
To work together, a formal assignment of commercialization rights in the IP will be required by WatCo to give the university legal standing to invest in the commercialization of technology. Details of the commercialization partnership will be specified in a Researcher agreement for patents, Researcher agreement for copyright, or Researcher agreement for software.
When you agree to the terms and conditions of the researchers agreement, two important points are:
- you continue to own the IP but assign the right to WatCo to commercialize on your behalf
- you will receive 75% of profits and WatCo will receive 25% of profits, with half of WatCo’s share reverting to your faculty (from any revenue generated, WatCo will first recover its commercialization expenses, such as for patenting and marketing of your technology)
The first 12 months
Once the partnership formalities are established, the first 12 months of collaboration are very important. During this time, while the significant costs for patent protection can be delayed, WatCo undertakes a more detailed assessment and evaluation of the commercial potential of the opportunity to support a decision to either continue with or withdraw from the more significant investments required after the initial 12 month period.