Commercialisation FAQs

Technology transfer activities do require some time commitment, but can also be incredibly rewarding as you watch your research being translated into real-world change. We support you throughout the process to make it easier for you. 

Some of the activities that will require some of your time include:

• supporting the patent application process
• identifying potential markets
• communicating to potential licensees the technical aspects of your technology
• applying for and using translational funding

All of these activities are supported by the Commercialisation team who will work alongside you. It is also important to note these activities are not all done at once, so it will be an investment of small time pockets over a long period of time.

We appreciate your academic workloads and research priorities, and will accommodate these and assist in any way we can.

Get in touch with the Commercialisation team as soon as possible.

It's better to contact us early rather than leave it too late, as you may miss an opportunity to protect your idea/technology. This is especially important for ideas that could potentially be patentable. A member of our team will happily assess and evaluate the opportunity and discuss the best timings.

Not if you get in touch with us as early as you can. Patent applications can be prepared and filed fairly quickly (weeks time frame), subject to evaluation and approval, so should be complementary to the manuscript drafting. It is also important to note that we will never stop you from publishing your work.

We need to perform due diligence when preparing a patent application so we will need to work with you to file the patent. The more you engage with this process, the shorter the timescale will be.

Once the patent application has been filed there is no restriction on publishing related work. However, any new information, tweaks or changes to the invention, should not be published without first contacting our team.

Maybe.

We would always recommend discussing it with our team first, to determine whether there is a risk of accidentally disclosing your idea that would prevent you from filing a patent on the work.

If you are discussing non-patented results internally, make it clear that they need to be treated in confidence. Where you need to be especially careful is the potential presence of external visitors at the meeting or event, as this would count as a public disclosure. If in doubt, please ask our team for advice.

Yes. Any written or oral disclosure, even to just one person, counts as a ‘public disclosure’.

Internal discussions within your group and department are generally not considered to constitute a disclosure if all staff are employees of the University.

The issue is departmental poster sessions often can include external visitors (eg research sponsors or collaborators) and their presence is enough to count your poster as a public disclosure. Even if no one outside the department turns up, if a meeting is open to the public, it is a public disclosure.

Making a thesis available counts as a publication. Any publication or public disclosure prior to patent filing will prevent a patent from being granted.

We will never ask you to delay completing your degree, but it is possible to submit your thesis under embargo for a limited period of time in order to protect commercial interests, or allow time for patenting.

Yes.

The University of York will always include a ‘licence back’ to the University, and its researchers, in any licence agreement that allows for the IP to be used for the University’s non-commercial academic research and teaching purposes.

Whenever the University negotiates a licence, we make it one of our top priorities to ensure that the York academics, who generated the IP, remain able to use such IP for the purposes of non-commercial research and maintain the ability to publish the arising results.

In some situations, a licensee may request that any related publications that are linked to the invention, be reviewed by them prior to publication in order to protect its confidential information and check for new IP. However, we always aim to avoid any restrictions on publications. If this was ever asked it would be a decision made jointly with you.

Yes. We will happily work with you to assess the value of transferring to the University of York any IP generated before your move.

If all parties agree, we can make the arrangements with your previous employers to assign the IP to the University allowing us to support your commercial opportunities.

This is often very project dependent. 

In some cases the University of York will continue to exploit the patent, and if successful you will still receive a share of the proceeds in accordance with Regulation 12, where you would be treated as an employee of the University.

Alternatively, it may make sense for your new university to take the patent on and support your commercialisation opportunity. In this scenario, our team would begin discussions with that university to discuss assigning the patents to the new university under a formal agreement.

The short answer is that everyone benefits when a research project is successfully translated into a tangible output that positively impacts society. 

The key benefits for you as a researcher are:

1. Evidence of impact has reputational benefits that can enhance your career, especially if they become a REF or KEF case study
2. Opens up additional funding opportunities
3. Creates opportunities for new collaborations, especially with industrial partners
4. Career opportunities and development, especially if you spin-out a company which generates new job opportunities
5. Revenue generation, as the University rewards you for any money made from the commercial exploitation of your IP

Financial returns are distributed to researchers and the University according to Regulation 12. The third parties that provided the research funding for the project may also require a revenue share, depending on the terms of their funding awards.

Yes.

The University pays all fees and costs associated with protecting and commercialising your IP. These costs are eventually recovered from the successful commercialisation of the IP.

We have access to relatively small amounts of funding to help develop opportunities, but more typically we can help point you towards and support applications for translational funding from other sources, as many funders run translational award schemes. Contact us for more information.

No. We do not benefit personally from the proceeds of commercialisation.

It depends.

Regulation 12 sets out the position the University takes on IP ownership. If you have any queries the best thing to do is get in touch with our team and we can help identify who owns what.

Yes, please refer to Regulation 12 which sets out the University's intellectual property policy. 

Working with the support of our team has many advantages, including:

• IP protection expertise
• financial support (we pay all IP protection costs, and you share the benefits under the regulations)
• experience of commercialising IP from research projects
• track record securing deals
• skilled negotiators
• extensive networks and contacts which lead to deals, and in some cases research funding too
• reduction of risk (the University of York enters into commercial deals, not you personally – you are protected from product liability and other risks).

Please refer to Regulation 12 which sets out the University's intellectual property policy. 

Generally speaking the University owns all IP you produce that is related to your role of employment. If you have any queries, please get in touch with our team.

Yes, it is vital information. 

The disclosure forms provide essential information for our team to understand the background of the invention and perform due diligence on the opportunity. You only are required to fill out one of the three forms, and these forms are available on our support for new commercialisation opportunities web page. All data provided in the forms are treated under confidentiality.
 
The three types of form are:

1. Invention disclosure form for scientific projects
2. Opportunity disclosure form for non-scientific projects
3. Software disclosure form which is specifically for software opportunities

There is a lot of work to do in the background which includes: checking IP ownership; checking funding for the project; performing patent searches; market research; project specific wrinkles (every project has at least one).

Anyone who has made a significant contribution to the IP is likely to be an inventor. To help make this decision, see this document.

If you are still unsure, please contact our team and we can support you.

The only rules are:

• it is a legal requirement to identify correctly the inventors of a patented technology, or the authors of any copyright
• you must all be in agreement
• the percentages must add up to 100%

If you are stuck, it may help to think about the following points. Does it feel right to suggest an equal split between you all? If not, why not?

Agreement on sharing of any money does not have to reflect academic merit (though the University will follow your lead in negotiating a share with collaborating institutions).

It may help to keep money and academic kudos completely separate in your conversation. Bear in mind that most technologies will break even at best, and the ones that make a lot of money are pretty rare. We ask you to come to an agreement now, while it is still fresh in all your minds, but it is not worth falling out over.

If you’re still stuck, and need support, your Commercialisation Manager will be happy to help.

It depends.

In this circumstance please ask your academic colleague(s) to put our team in touch with the TTO(s) at the other institution(s) so we can begin discussions. 

The choice of which office leads on the technology will largely depend on who (you or your collaborator) is in the best position to lead on the commercialisation of the technology. 

We will take both your view and the view of the other academic(s) into consideration. 

Yes, you should still involve the Commercialisation team.

In these cases, the ownership of the intellectual property will depend on the research funding agreement or collaboration agreement (please send us a copy if you have one). In these circumstances, we can help establish:

• Who owns the intellectual property? (the University, the company or jointly owned)
• Who has the rights to file the patent?
• Who will pay for it or how will the patent costs be split between the parties?
• What, if any, are the financial benefits to both the researchers and the University for any successful commercialisation outcomes?

Attaining a granted patent takes approximately four to six years, however this is only an estimate. It can be quicker or slower than this, and some applications never get granted.

There are many factors including:

• what the type of technology is
• the territories you choose to apply in and the route you take for the application
• the patent examiner you get 
• how broad your claims and examples are

It is important to note that your technology is protected from the date of filing, meaning you can publish if required after the filing date. Once granted the patent becomes enforceable and the protection is backdated to the filing date. 

The best time is before you publish. 

If you are beginning to write a manuscript then it is likely a great time to consider filing a patent on the work.

Please remember, a patent must be filed before the first public disclosure of the invention.

The earlier you come to talk with us the better. Although we will always try to work within your publication timescales, the patent will always be of better quality if it is not rushed.

A patent also needs to include a description of the technology, and some evidence of proof of concept. 

Each case will be evaluated on its merits (commercial prospects and strength of innovation) and our team will continue to support the patent while viable prospects for commercialisation can be balanced with the costs.

All projects are subject to regular reviews and we consult with the researchers on plans.

There are certain points in the patenting process that are particularly expensive:

• The choice to initially file a patent
• Entry to the international PCT phase = 12 months from initial filing
• National phase entry = 30/31 months from initial filing  
• Post-national phase review = maintaining patents

We use these points as key decision steps to evaluate the project. A key factor in the evaluation is the researchers' willingness to support our team with commercialisation efforts and the continued work and development on the technology.   

If we decide not to continue with proceeding with the patent, it will be offered to you and your co-researchers for you to take up at your own cost in accordance with University policy.

Every project is unique, as it depends on many variables. Being upfront, commercialising research takes time.

Depending on what the technology is and the route to commercialising that is chosen, it can take anything from a few months to a number of years to reach the point of being able to sign a licensing deal on a technology. It is more common to judge commercialisation timeframes in years.

We will work with you through what can often be an iterative process of seeking feedback from licensees or investors, doing some more work, and trying again before it is possible to reach a deal.

For a licensing opportunity: once a licence deal is signed, the licensee starts work to bring a product to market based on the technology, and this can also be a lengthy and difficult process.

For a spin-out opportunity: once initial investment is secured the company can be spun-out and this represents only the beginning of the commercialisation journey, as the company then attempts to take the technology to market which can be a lengthy process.

We are all well qualified and come from a diverse range of backgrounds.

Most of the team have postgraduate degrees and have been involved in commercial ventures in the past, and this combination of both scientific and commercial expertise works well to provide optimal technology transfer support.

We support you to identify, protect, and commercialise IP where appropriate. This includes helping you navigate legal and regulatory frameworks, supporting you with documentation that will need processing and negotiating with people outside of the university. 

We are here to actively support you through every step of the commercialisation process, from submitting an invention disclosure to the execution of a commercial deal.

Our team:

• provides you with commercial advice
• pays for all the IP protection costs, including legal fees
• negotiates licence and spin-out company agreements
• protects you from legal and financial risk

The University pays for all the costs, provides all the support, and you get a share of the money on any successful commercial outcomes. You pay none of the costs for the unsuccessful projects.

Any income received is treated according to the University’s Regulation 12.

Get in touch with our team by emailing commercialisation-team@york.ac.uk or via our general enquiry form and we can discuss the process with you.

Equity goes to the founding academics, the University of York, and any investors.

Some research funders also expect to share some equity if they funded the research underpinning the technology that will be exploited in the spin-out. We will look through the contracts and help clarify these details for you. 

Any investment will dilute the founder shareholding and there is always a negotiation with investors.

The University of York aims to foster innovation and entrepreneurship in order to maximise the global impact of its research and expertise, and therefore expects a low equity stake for the University, which enables the spin-out to incentivise founder researchers and attract experienced management teams and investors. This stake is in recognition of its role in:

• providing the environment for the development of the intellectual property and the spin-out opportunity
• providing permissions for academics to become and stay involved with the spin-out alongside their employment
• providing the commercialisation team help with the whole process
• allowing the spin-out to benefit from association with the University’s name and reputation

The University usually takes ordinary shares with no anti-dilution provisions, so the University will be diluted at the same rate as academic founders by any investment.

The University’s policy is explained in Regulation 12. It sets the founding equity share in spin-out companies at 75% for founder researchers and 25% for the University of York in nearly all cases.

Individual members of the commercialisation team do not take an equity stake in the spin-out company, but act to bring the spin-out together and to licence the technology.

Incoming managers of the new business may also want an equity stake, either at spin-out formation or through a share option scheme.

All individuals involved need to take professional tax advice on their shareholding.