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Patenting and Commercialisation Diagram (Printable)
Patenting and Commercialisation Process
The typical route that we use for protecting IP involves an initial filing in the UK and then maximum worldwide coverage is obtained by filing through the Patent Cooperation Treaty (PCT) route.
Patenting is not a barrier to publication, and we will coordinate activities with the scientist in order to minimise any delays in publication and maximise protection of IP.
We market our technologies through a worldwide range of contacts, targeted to companies with the expertise to develop the technology. Our focus on plant and microbial science enables us to maximise value through our understanding of these markets.
Through our revenue sharing scheme we return money to the inventors and institutes after deducting external patenting costs. As well as generating upfront revenues we will also maximise long term revenue over the life of the patent with the potential to generate significant sums of money.
Do Not Publish
Before the initial patent application is filed it is important not to publish any of the information (or otherwise disclose) any information, for example in the form of a lecture, poster at a conference, abstract or early publication of a paper on the internet. It is also important to consider your earlier work, as information in a previous paper, or a section in the discussion section may make your new invention, and hence not patentable.
The initial patent filing will usually be through the UK patent office although each case will be examined individually in order to obtain the broadest coverage possible. The patent will be filed by a firm of external patent agents under the advice of our in-house. This in-house expertise allows us to minimise external costs, obtain broad coverage and simplifies the process for the inventor/scientist.
Care on Publication
For the next 12 months, prior to the PCT filing we strongly advise that you contact us prior to submitting any publication. We will then advise you on consequences of publication on patentability and hence marketability value. There may also be aspects of the publication that could be added to the PCT application or patentable in their own right.
After the initial filing PBL will carry out a preliminary marketing exercise with selected potential partners under confidentiality agreements. This will help to define the potential market and demand for the technology.
12 months after the initial filing in the UK, then a further filing designating most world-wide countries will be filed under the Patent Cooperation Treaty (PCT). At this stage it is also possible to add new data to the application, provided that this has not already been publicly disclosed.
The PCT application is published after a further 6 months, a total of 18 months after the initial filing. This is the first point at which the application becomes public, and is available for searching through the various.
Free to Publish
After the filing of the PCT application, 12 months from the initial filing you are free to publish with no effects on patentability. We would still be keen to see any papers before publication to comment on any aspects relating to IP, or IP that may be generated in the future.
The main marketing process will usually start after the PCT publication. Detailed descriptions of the technology will be sent to a selected network of company contacts for evaluation, and the technology will be advertised on the website, at international conferences and in one to one meetings with company contacts. To facilitate this process the inventor is usually involved in providing information and pictures, and checking the accuracy of the material sent out. When specific technical questions are asked by the company then these will either be answered by PBL, or the inventor as appropriate. PBL is keen to involve the inventor/scientist during the marketing process as they know the technology better than anyone.
Once a company has decided that it is interested in a technology, then PBL will negotiate a contract in order to maximise value obtained for the technology. The deal will usually involve licensing, but may involve other forms of venture, such as start-up companies, or equity stakes as appropriate. With its track record of successful deals PBL is in a unique position to determine the most appropriate route to market and the value of a technology. We are also in a position to package technologies together due to our strong technology portfolio. The deal will often involve supplying available materials to the licensing partner to speed up the commercialisation process, and this will be discussed with you to see what is available.
It is always our intention to generate some revenue early on in any agreement. However, some of this will be used to cover external patent costs which can be significant especially at the stage of national filing. Long term value is an important part of any deal as this is where the potential to generate significant revenue usually lies. As part of its policy of only taking on high quality science, PBL will expect to generate revenue from every technology that it adopts. This focuses on quality and revenue generation.
After 30 months the national filing strategy is decided, based on the potential value of the technology and the early success of the marketing strategy. Countries are chosen to maximise coverage in potential markets while minimising costs, which can be considerable at this stage. The patent application will then be translated and sent for examination in individual country patent offices.
Once sent to the national patent offices the application is examined as to itsand questions raised by the patent office will be answered. After consideration the patent office will grant a patent based on those claims in the application that are valid. This process can take some considerable time, and can be 5-7 years after the original application.
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