Module 6 - Key IP questions when taking your results and know-how to the market through commercialization
The third overall strategy for creating impact that we'll talk about is when you take the results to the market in the form of products, services, solutions, etc. The typical ways of doing this are:
- Knowledge transfer projects
- Licensing/selling IP to another (existing) party that takes it to the market
- Starting up a new company to take the product/service to the market
Here we will focus on the two latter types of impact creation that relate to commercialisation. Knowledge transfer projects can be part of IP deals but can also be separate, non-commercial projects, but many of the IP management issues that we bring up here are applicable in non-commercial knowledge transfer projects as well.
But first, let's look at two fundamental questions that are important to begin with.
1. The reason why IP protection can create commercial value
The first thing we want to clarify here is why protecting your IP with some type of Intellectual Property Right can create value when you want to commercialise your results and take them to the market through products, services, or solutions. The reason is that the Intellectual Property Rights give you the right to stop others from using your IP commercially!
In practice this means that you, or any other party that you license or sell your IPR to, can get a competitive advantage and get higher higher profit margins, higher revenue, larger market share, etc.
2. The commercial potential depends on how you have managed the IP through the whole research process
A recurring theme in this course is that IP management really is all about the practical decisions and actions that you take related to IP through the whole research process, from idea to impact. This will strongly influence your possibilities to create impact from your research results.
This is true regardless of which way you want to create impact, but the biggest influence is on commercialisation, as Gustav Notander from KTH Innovation explains in this video.
3. Commercialising your results
The two main ways to commercialise research results are either:
- licensing or selling the IP/IPR to another party that integrates it in their processes, products, or services
or
- creating a product or service that you take to the market yourself through a startup company
Which way you choose depends on the type of idea, the market and industry structure, the preferences of the idea owners, etc.
In any case, there are some IP related topics to keep a special eye on when you're commercialising your results, whether it is through an IP deal or a startup company:
- Publishing before protecting the IP
- Ownership and rights of use
- Identify commercially interesting IP while you are doing the research
- Key points in license/IP sales agreements
- IP agreements into the startup
Let's take a closer look at each one of them.
3.1 Publishing before protecting the IP
Protecting your IP with patents or other intellectual property rights is not in itself any guarantee for successful commercialisation, but it is often an important building block on the way. For that reason it can be problematic if you intend to commercialise your results, but you publish them before you file for IP protection.
Hear Gustav elaborate further on this in this video.
So remember the rule that we have mentioned several times before:
We want to highlight again, though, that the sensitive information here is the description in detail of what your invention (process, method, device, etc.) is and how it works. If you want to commercialise your technology, you will have to talk about it with other people even before you file a patent application or have confidentiality agreements in place, but that is OK as long as you just talk about the problem you are addressing, the benefits of your technology, high level descriptions of what you do, etc. without actually describing the specific technical solution.
3.2 Ownership and rights of use
One of the first things that KTH Innovation does when someone comes with an idea or a research result that they want to commercialise is to ask about who has been involved in creating the idea/result and if there are any agreements that regulate ownership or the rights to use it. The reason for this is to avoid a situation where you spend a lot of time and resources developing something that you later realise is not yours or that someone else will have extensive rights to use without giving you something in return.
Here's KTH's legal counsel, Therese Viksten, to explain this further.
3.3 Identify interesting results while you are doing the research
In the previous module on collaboration with industry we talked about the benefits of identifying the results and IP that could be of commercial value as early as possible in the research process to have time to evaluate their potential and protect the results worth protecting before you publish the results.
This is just as true when you want to commercialise the results yourself.
The typical problem here is that you realise that you have some interesting result too late, when you are just about to publish or when you already have published it, and then it may be too late to protect it, as we talked about above. It may also be too late to do further experiments that could strengthen a patent application or prove your concept in some particularly interesting use case which is much easier to do when you have everything set up for the project than when the project is finished and "dismanteled".
For this reason we want to reiterate the importance of thinking through what process or checkpoints you can have in your day-to-day research work to make sure that interesting results pop up on your radar.
Examples of things to do to keep this top of mind during your research work can for example be:
- Including questions in group meetings or seminars on the value and potential impact of the research
- Organising workshops at certain intervals where you focus on identifying commercially interesting results
- Setting some sort of reminder to yourself about checking this when you start planning a future publication
etc.
KTH Innovation can facilitate this kind of activities so don't hesitate to contact KTH Innovation if you some ideas or support with this.
3.4 Key points in license/IP sales agreements
A license or IP sale agreement can be complex and contain a number of terms that you have to negotiate, both related to the IP/IPR that is licensed and the economical terms for the license. When you negotiate a licensing or IP sales agreement we strongly advice you to get support from a legal counsel to make sure that you get a fair deal and that you don't restrict your further research work unreasonably. This is one of the core things that KTH Innovation can support with.
3.5 IP agreements into a startup
The final thing to mention here is that when you have decided to start up a company to commercialise your results, you have to transfer the IP and IPR from the individuals who have created it into the company. This is important to secure that the company controls the key assets that it will use in its business, and to make a clear distinction between the activities in the company and the research activities of the individual researchers.
In practice this is done through an agreement that specifies exactly what IP and IPR that is being transferred, how it can be used and further developed in both the company and the academic research, what happens to the IP/IPR if the company is closed down, and other important questions.
This is another area where KTH Innovation can be of support with both contract templates and advice.
Module 6 - Key take-aways
Transforming your research results and IP into products and services that you or someone else takes to the market is a powerful way to make sure that they are used and create value and impact in society. Doing this can also create economic value for you, your partners, and society at large.
We bring up a couple of IP management related issues here that are central to the possibilities of taking results and IP to the market. Following the recommendations and guidelines in these issues is not a guarantee that you will be successful in the commercialisation of your results, but it does give you the best starting point regardless of which route you take to market.
And don't hesitate to reach out to us at KTH Innovation if you have any questions related to this. We can guide you in all matters of IP management and commercialisation.
Finally, before we move on to the next module, here are some short questions to reinforce your learnings from this module!