Quick guide
Commercialization activities are key in translating research into patient-saving solutions. Bringing discoveries to market requires a significant investment of time and resources. SickKids’ goal is to maximize the opportunities for successfully developing and commercializing SickKids’ intellectual property. This obligation is the shared responsibility of IP&C and the innovators involved and is guided by the Intellectual Property Policy.
| IP&C RESPONSIBILITIES | INNOVATOR(S) RESPONSIBILITIES | ||
| 1 | IDENTIFY OPPORTUNITIES | • Inform Innovators on intellectual property protection and commercialization process • Conduct internal outreach to source top commercial opportunities • Obtain invention disclosures from innovators and begin conversation about value generation and legal protection | • Engage IP&C as early as possible • Complete an invention disclosure to IP&C before any public disclosures (including research papers and posters) • Give thought to who made inventive contributions to idea (external and internal) • Provide information on any grants used to fund invention |
| 2 | INNOVATION EVALUATION | • Provide context on market need and potential investor interest • Assess patentability of disclosure: • Is there any prior art (evidence against originality of disclosure) or public disclosures? • Is this sufficiently inventive? • Does this have credible and specific utility? | • Meet with IP&C to discuss invention and answer questions such as: • What is the unmet need and what is the market? • What are your technology’s advantages over current solutions? • Are other companies/academics working in this area? |
| 3 | IP STRATEGY DEVELOPMENT | • Develop overarching strategy and approach for legal protection of invention • Develop agreement (with Innovator) on data generation and progress expectations • Manage deadlines and complete IP filings with respective offices | • Meet with external patent agent to draft application and claims • Provide data generation updates to IP&C • Review prior art to differentiate invention and strengthen claims • Review office actions and provide responses prior to deadlines |
| 4 | DEVELOPMENT, STRATEGY, FUNDING & PARTNERSHIPS | • Identify opportunities for investment and capital – leveraging internal and external funding sources • Identify and engage the right development partners such as advisors, key opinion leaders, EiRs, and contract research organizations | • Prepare applications for internal and external funding • Help rationalize development plan, based on investor feedback and funding constraints • Engage in strategy development discussions |
| 5 | MARKETING & DEAL NEGOTIATION | • Solicit interest and manage engagements with external parties such as potential investors and licensing partners • With Innovator, identify best partner for successfully bringing invention to market • Negotiate terms for corporate license or for start-up creation | • Look for grant opportunities to engage companies • With IP&C guidance, develop a pitch that balances science and business, and present to external parties • Inform IP&C of any industry interest throughout process • Work towards planned technology development milestones |
| 6 | POST-TRANSACTION MANAGEMENT | • Ensure deal compliance from external and internal parties, accuracy of payments, and distribution of income | • Work with IP&C to ensure follow-up items are completed • Inform of any changes to inventorship or revenue share • Disclose relationship through CMaRS system to Compliance Office |
| IP&C RESPONSIBILITIES | INNOVATOR(S) RESPONSIBILITIES |
| 1 IDENTIFY OPPORTUNITIES | |
| • Inform Innovators on intellectual property protection and commercialization process • Conduct internal outreach to source top commercial opportunities • Obtain invention disclosures from innovators and begin conversation about value generation and legal protection | • Engage IP&C as early as possible • Complete an invention disclosure to IP&C before any public disclosures (including research papers and posters) • Give thought to who made inventive contributions to idea (external and internal) • Provide information on any grants used to fund invention |
| 2 INNOVATION EVALUATION | |
| • Provide context on market need and potential investor interest • Assess patentability of disclosure: • Is there any prior art (evidence against originality of disclosure) or public disclosures? • Is this sufficiently inventive? • Does this have credible and specific utility? | • Meet with IP&C to discuss invention and answer questions such as: • What is the unmet need and what is the market? • What are your technology’s advantages over current solutions? • Are other companies/academics working in this area? |
| 3 IP STRATEGY DEVELOPMENT | |
| • Develop overarching strategy and approach for legal protection of invention • Develop agreement (with Innovator) on data generation and progress expectations • Manage deadlines and complete IP filings with respective offices | • Meet with external patent agent to draft application and claims • Provide data generation updates to IP&C • Review prior art to differentiate invention and strengthen claims • Review office actions and provide responses prior to deadlines |
| 4 DEVELOPMENT, STRATEGY, FUNDING & PARTNERSHIPS | |
| • Identify opportunities for investment and capital – leveraging internal and external funding sources • Identify and engage the right development partners such as advisors, key opinion leaders, EiRs, and contract research organizations | • Prepare applications for internal and external funding • Help rationalize development plan, based on investor feedback and funding constraints • Engage in strategy development discussions |
| 5 MARKETING & DEAL NEGOTIATION | |
| • Solicit interest and manage engagements with external parties such as potential investors and licensing partners • With Innovator, identify best partner for successfully bringing invention to market • Negotiate terms for corporate license or for start-up creation | • Look for grant opportunities to engage companies • With IP&C guidance, develop a pitch that balances science and business, and present to external parties • Inform IP&C of any industry interest throughout process • Work towards planned technology development milestones |
| 6 POST-TRANSACTION MANAGEMENT | |
| • Ensure deal compliance from external and internal parties, accuracy of payments, and distribution of income | • Work with IP&C to ensure follow-up items are completed • Inform of any changes to inventorship or revenue share • Disclose relationship through CMaRS system to Compliance Office |
| 1 IDENTIFY OPPORTUNITIES |
| IP&C RESPONSIBILITIES • Inform Innovators on intellectual property protection and commercialization process |
| INNOVATOR(S) RESPONSIBILITIES • Engage IP&C as early as possible |
| 2 INNOVATION EVALUATION |
| IP&C RESPONSIBILITIES • Provide context on market need and potential investor interest |
| INNOVATOR(S) RESPONSIBILITIES • Meet with IP&C to discuss invention and answer questions such as: |
| 3 IP STRATEGY DEVELOPMENT |
| IP&C RESPONSIBILITIES • Develop overarching strategy and approach for legal protection of invention |
| INNOVATOR(S) RESPONSIBILITIES • Meet with external patent agent to draft application and claims |
| 4 DEVELOPMENT, STRATEGY, FUNDING & PARTNERSHIPS |
| IP&C RESPONSIBILITIES • Identify opportunities for investment and capital – leveraging internal and external funding sources |
| INNOVATOR(S) RESPONSIBILITIES • Prepare applications for internal and external funding |
| 5 MARKETING & DEAL NEGOTIATION |
| IP&C RESPONSIBILITIES • Solicit interest and manage engagements with external parties such as potential investors and licensing partners |
| INNOVATOR(S) RESPONSIBILITIES • Look for grant opportunities to engage companies |
| 6 POST-TRANSACTION MANAGEMENT |
| IP&C RESPONSIBILITIES • Ensure deal compliance from external and internal parties, accuracy of payments, and distribution of income |
| INNOVATOR(S) RESPONSIBILITIES • Work with IP&C to ensure follow-up items are completed |