In part 1 of this series, we discussed some tips for entrepreneurs looking to improve their “hit” rate with potential strategic partners and investors. In part 2, we’ll explore the problems inherent in the following scenario:
You’ve been working on your research diligently. You’ve come up with a technology that has application in over a dozen fields of use. You’ve collaborated with colleagues at several other universities and have published multiple papers on your findings. You try to get the attention of large companies and substantial investors – but no one seems interested.
One problem you may notice from the above description is that there’s no mention the researcher has conducted any market research. What are the needs of the market? Who are the customers? Who are the influencers who can influence buying? Who actually makes the buying decision? Who pays for it and how do they decide whether or not to pay?
There’s also no indication that the researcher has addressed the other key factors:
What are the benefits over costs of each application?
Who is the competition?
Our mythical researcher collaborated with academics at other institutions. Collaborating with researchers at other institutions causes complications because any intellectual property (e.g. patents, trade secrets) might be jointly owned by all participating universities. The universities may have different and/or conflicting policies on how to handle intellectual property in which they have an ownership interest. All that raises the complexity of obtaining clear rights to the technology.
Publication is the essence of academic scholarship. But it can sound the death knell of patent protection. Anything published becomes a part of the public domain. The technology disclosed cannot be the subject of a subsequently filed patent application.
So, unless controls are in place to permit patent application filings before publications are cleared, the opportunity for exclusive commercialization may be lost.
These are all reasons that researchers at academic institutions should establish a good relationship with their university technology transfer offices. The tech transfer people understand the law governing patents as well as the policies of the institutions relating to that.
Similarly, entrepreneurs need to focus early on ensuring that intellectual property in which they are interested is properly protected. Finding an experienced legal practitioner to help with this work can be a key investment in the future success of the entrepreneurs’ efforts.