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Visit: 60 Corporate Woods, Suite 380   |    Email: URVenturesInfo@urmc.rochester.edu    |   Phone: 585-276-6600

Evaluation

EVALUATION

URVentures evaluates all disclosed technologies, assessing feasibility, patentability, and likelihood of commercialization.

Evaluation is a critical component of the URVentures process. All technologies disclosed to our office are evaluated by a licensing manager with experience in the field and an IP attorney. While the evaluation is comprehensive, the defining focus is on commercial viability; it is important to note that these evaluations are not a judgement on the scientific merit of the technology.

The preliminary evaluation occurs following an invention disclosure. The licensing manager and inventor(s), often with an assigned IP attorney, work together to review the disclosure, and analyze the market and competitive landscape to determine commercial viability. Because our evaluation process emphasizes the potential for commercialization, we often seek external input from industry contacts, venture capital firms, and companies in the space. 

Following the initial evaluation, the licensing manager and IP attorney will make a recommendation to the Intellectual Property Review Committee (IPRC). The IPRC manages the University’s collective patent portfolio, and meets regularly to review each technology that is at a decision point.

Occasionally, following an initial review of a submitted invention disclosure, it is determined that the University IP policy does not apply to the given invention. In those cases, an agreement for non-application of IP policy may be requested by the researcher. Learn more about the specifics in the University’s IP policy (sections 1.3, 1.8, and 2.1.1.) and view a sample agreement.

Evaluation is a regular part of the commercialization process, with decisions made at steps having significant patenting costs. These decision points include:
  • Initial Filing (Provisional or Utility)
  • Provisional Conversion
  • PCT National Entry
  • First Office Action
  • Final Office Action
  • EPO Country Validation
  • Maintenance Fees
Factors in the evaluation include:
  • Prior art and claim scope
  • Market potential
  • Competitive landscape
  • Continued funding/research
  • Industry feedback and market reports
Based on the recommendation of the licensing manager and IP attorney, and with discussion and evaluation amongst the IPRC, a decision is made to either:
  • Continue prosecution
  • Close the invention disclosure or patent prosecution
  • Determine the patent path (provisional, utility, PCT, countries for nationalization)

Throughout the evaluation process we must balance our resources with the availability of information at the time of decision. In an ideal case, we would have perfect information about the expected cost of development, timeline, market growth, consumer preferences, likelihood of licensing, etc. In reality, we often have limited information and may be constrained by an impending disclosure. As more information becomes available we may choose to close the invention or discontinue patent prosecution.

If URVentures decides not to pursue a disclosed invention or not to continue supporting pending or issued patent applications, the inventors may request that the rights in those be transferred to them. To legally transfer ownership of these rights, an assignment must be executed by both parties. If the invention (and related applications or issued patents) was supported with government grants, URVentures works with the funding agency to transfer the rights.

It is important to note that if ownership of the rights are transferred to the inventor, the inventor becomes responsible for all reporting requirements, as well as all patenting and maintenance costs. Learn more about the process of requesting and potentially transferring ownership rights to the inventors. 

Below is a more detailed list of the criteria URVentures considers when evaluating each technology:

Business Potential
  • Potential licensees
  • Potential for a start-up
  • Potential to attract venture capital
  • Relation to other technology portfolios
  • Competitive landscape
  • Industry feedback
  • Time and Interest
Patenting Potential
  • Patentable subject matter
  • Prior art
  • Likelihood of patent issuance
  • Claims of sufficient scope for licensing
Additional Factors
  • Inventor Engagement
  • Continuation of Research
Waiver Process