TCS, often with the help of inventors and/or a literature or patent search specialist, examine each invention disclosure to review the novelty of the invention, competing technologies, protectability and marketability of potential products or services, relationship to related intellectual property, size and growth potential of the relevant market, amount of time and money required for further development, preexisting rights associated with the intellectual property (IP), and potential competition from other products/technologies. This assessment may also include consideration of whether the IP can be the basis for a new business startup. See Evaluating your Technology.
Will UConn honor a request that all IP be licensed non-exclusively to all potential users for the public good?
TCS will work with you to develop the appropriate commercialization strategy for your invention. Some technologies lend themselves to non-exclusive licensing (licensing to multiple third parties), while others will only reach the commercial marketplace if they are licensed on an exclusive basis. UConn will try to accommodate inventors’ commercialization wishes consistent with the objectives of co-inventors and with obligations to sponsors or third parties.
Market analysis involves gathering information in order to assess the overall value of the technology. Information is gathered from subscribed databases, the Internet, published literature and general knowledge of companies participating in the given field of the invention and individuals who are subject matter experts from industry. The preexistence of a large number of successful companies in the given field is a good indicator of the potential market opportunity.
Businesses would prefer to know that any technology they adopt would provide them with a clear and significant advantage over their competitors. Thus, if an invention only makes a moderate improvement to a preexisting technology, then that improvement may face a difficult challenge in establishing itself in an already crowded market. On the other hand, if a discovery opens up an entire new market, it can be very advantageous to establish control of the IP necessary for others to get into the same new field. Being able to control a commercial field creates a strong market advantage and may entice companies to invest more heavily in a given technology. Larger company investments can mean greater financial returns to the inventors and UConn. Unfortunately, work that is new to a given field can also be viewed as a commercial risk since there are no comparable products.
If TCS decides not to pursue patent protection and/or chooses not to actively market the invention, UConn may, upon the request of the inventor(s), license back its rights to the inventor. Among the key factors in UConn deciding to license back an invention are whether additional university resources or private resources could best improve marketability and whether all inventors agree with the terms of the license back agreement. Upon licensing back, the inventor(s) is responsible for payment of all further development, patenting and marketing expenses. If additional university resources are used to further develop the invention, UConn may terminate the inventor’s license back agreement.