ASI seeks to promote the commercial development of Ariel University technologies. Below, you will find information on securing intellectual property protection and how ASI works with scientists and inventors to help protect and promote their discoveries and inventions.
Where do I start?
You should notify ASI as soon as possible after you come up with an invention or discovery that may have commercial potential. In order to avoid loss of certain patent rights, works with scientists must be filed on inventions before public disclosure (e.g., publishing or presenting to non-Ariel University individuals). ASI will work with you to accommodate your publication schedule while filing these patent applications and is available to advise on the consequences of specific public disclosures on patentability. To enable ASI to determine the invention’s patentability and commercial potential, certain information is needed. To help prepare this information, please fill an invention disclosure.
If you are unsure of whether an idea or discovery is appropriate for a patent application, we encourage you to contact us so that we can get together and discuss this.
ASI will acknowledge receipt of a confidential disclosure. Next, it will evaluate the invention for patentability and marketability in consultation with the inventors to determine whether or not to seek patent protection.
If the decision is to proceed with patent protection, ASI will cover all patenting costs, and coordinate the application process, relying on the inventors’ participation and engaging the services of an outside patent attorney. The inventors assign rights to the University, and receive 40% of any net income resulting from the commercialization of the invention.
It is important to know that the patenting process has certain timeframes and windows of opportunity for filing patent applications. The US government recently passed the America Invents Acts, which moves the US from a “first-to-invent” to a “first-file” system, making the timely filing of patent applications even more important. The initial application filed may be either a regular application, which will be examined by the US Patent & Trademark Office (USPTO) or a “provisional” patent application, which establishes a filing date for priority purposes and can be supplemented with additional data for one year.
A patent application in some ways looks like a manuscript, describing what you have done, and teaching others how to use your invention. It also contains “claims” at the end which describe the scope of your invention, which the patent attorney will draft with your input. Once a regular patent application has been submitted, it may take 2-4 years for the USPTO to review it. The USPTO may initially reject certain claims as too broad or as “obvious” in light of prior work. The patent attorney will work with you to respond to these rejections, in some cases amending the claims to gain allowance. Once a patent issues, it provides protection for 20 years from the date of filing.
Marketing Your Invention
Once a patent application is filed, ASI will begin to seek commercial partners, which could include existing companies or entrepreneurs and investors to help form a new start-up company. Existing companies can offer the necessary infrastructure such as channels to market, sector knowledge, facilities, commercial management, and an existing network in place, while start-ups may offer greater commitment to the technology and have the potential to contribute to local economic development. The start-up route also ensures that the entrepreneur’s commitment and energy drive the development of the technology and that changing corporate priorities do not affect the development of the technology. In some instances, a start-up may further develop the technology to demonstrate proof-of-concept, such as prototype development or early clinical trials, and then partner with or be acquired by a larger company, with greater resources to take the product to market. ASI will work in consultation with you to determine the best path forward.
Once there is agreement between ASI and a commercial partner on a desire to move forward, ASI will negotiate a license agreement, which grants the company rights to the Ariel University technology. ASI looks to be flexible in negotiating win-win agreements, which meet the needs of industry, while preserving core university values such as the right to publish and providing a fair return to both parties. Following the license, inventors often have close ongoing collaborations with the company in their efforts to develop the inventor’s technology, through relationships such as sponsored research, consulting, and serving on scientific advisory boards.