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.

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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
• Conduct internal outreach to source top commercial opportunities
• Obtain invention disclosures from innovators and begin conversation about value generation and legal protection

INNOVATOR(S) RESPONSIBILITIES

• 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
IP&C RESPONSIBILITIES

• 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?

INNOVATOR(S) RESPONSIBILITIES

• 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
IP&C RESPONSIBILITIES

• 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

INNOVATOR(S) RESPONSIBILITIES

• 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
IP&C RESPONSIBILITIES

• 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

INNOVATOR(S) RESPONSIBILITIES

• 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
IP&C RESPONSIBILITIES

• 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

INNOVATOR(S) RESPONSIBILITIES

• 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
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
• Inform of any changes to inventorship or revenue share
• Disclose relationship through CMaRS system to Compliance Office