Innovation & Intellectual Property

Welcome!  This section of our Research and Innovation site is intended to make it easier and simpler for Penn Engineering faculty to engage with industry and successfully commercialize their discoveries and technologies.   Please don’t hesitate to let us know if you have any questions or suggestions.

 

Take the first step: identify and protect your innovation!

Use the online inventor portal to submit an invention disclosure: a simple but very important first step in documenting and protecting your intellectual property – often critical for successful commercialization. The inventor portal is a secure website that also allows you to confirm, and generate reports, on the status of your innovations and any associated patent filings.

Not just for patentable inventions!  Submitting an invention disclosure is worthwhile for any of your innovative technologies that may enable solutions to important problems, whether or not patentable.  For example, consider submitting an invention disclosure for assets including innovative software, datasets, machine-learned models, processes, and research tools.

Submitting an invention disclosure highlights your work to PCI, who will work with you to develop a commercial value proposition (see below), conduct outreach to industry contacts and/or investors, and match your work to inbound requests received from industry.

PCI’s team will also advise and help you obtain a patent or other intellectual property protection for your work when that makes sense and adds value.

Penn Engineering values IP  and currently offers a $500 incentive to our researchers, payable to the PI lab’s discretionary fund, when a first patent application is filed for your invention or if your non-patented asset is licensed or optioned commercially!  For disclosures filed with multiple Penn Engineering PIs, the incentive is shared evenly among PI research groups.  Penn Engineering and PCI work in partnership to ensure timely action on your disclosures.

 

 

 

For questions and help with submitting an invention disclosure, you can contact a PCI Licensing Officer directly, or use our Concierge Service (see below).

Develop your value proposition!

Whether you are thinking about creating a new start-up, finding a corporate research partner/sponsor, or licensing your IP to an existing company, your success ultimately depends on having a strong industry value proposition.

A concise way to convey your value proposition is by developing convincing answers to these three questions:

  1. Need: What important commercial need will your innovation satisfy?
  2. Approach:  How will your innovation satisfy this need?  What are the unique features and key insights that make it work?
  3. Competition:  Will your innovative approach better address the need than existing alternatives?  How and why?

Answering the famous Heilmeier questions can take your value proposition even further.

Feedback and iteration are an effective way to develop compelling value propositions.

Your preliminary ideas are very welcome!  These resources can help you brainstorm high-value applications, markets, and partners, and identify relevant competitive alternatives, so that you can strengthen and refine your value proposition:

Faculty are warmly welcome to contact any or all of these resources.  If you have worked before with someone on this list, you may wish to reach out to them directly.  Otherwise, contact Steven Weiner, who can provide an overview of available support, and will either work with you or connect you appropriately.

Starting up a new venture

Are you interested in – or just curious about – launching a start-up company to bring your innovation to market?  Get feedback and insight from experienced Penn staff on whether that path makes sense for you and your innovation, what is involved, support available at PCI and Penn, and practical tips on how you can strengthen your value proposition to maximize your chances for success:

Finding industry sponsors

Conducting research in partnership with an industry sponsor offers valuable benefits, including opportunities to address industry-driven, real-world challenges; greater odds of translational success and impact; access for your students to career-relevant experience and contacts; and new funding sources.

If you want to explore opportunities for industry-sponsored research, and would like assistance finding potential sponsors, SEAS Corporate Outreach (Steven Weiner) can work with you to:

  • Create slide decks and flyers to promote your capabilities, expertise, and value proposition in an industry-attractive way
  • Brainstorm and identify potential targets
  • Assist with proactive outreach, and match to in-bound industry requests

Industry consulting

Penn’s policies and procedures for faculty consulting and outside activities can be found through the following website.  Some key guidelines are as follows:

  • Faculty enter into consulting engagements as individuals, and it is their responsibility to make sure that the arrangement and associated agreement comply with Penn’s Patent Policy.
  • PCI can help faculty by reviewing consulting agreements to ensure compliance with Penn policy and protection of researcher’s interests.  Faculty are encouraged to take advantage of this service by contacting Steven Weiner, and copy adro@seas.upenn.edu.
  • A faculty member’s commitment to all consulting work cannot collectively exceed one day a week.
  • Faculty must make known to their department chair and the Associate Dean for Research (ADRO) any potential consulting engagement to ensure consistency with faculty members’ professional obligations to the Penn, responsibilities with respect to the avoidance of conflicts of interest, and to their commitments for teaching and research.
  • Since the default of Penn is to claim ownership of all intellectual property (IP) generated by its faculty, any consulting engagement that provides for an assignment of such IP to the company must be approved in advance by the ADRO. PCI can help with providing language for consulting agreements that allows for ownership of IP by the company in situations where the IP would not otherwise be owned by Penn (see above for engaging this service).
  • Any proposed consulting agreement with a company that currently or plans to sponsor research in the faculty’s laboratory should be disclosed to the ARDO to advise on management of any conflict and/or for referral of the matter to the Conflict of Interest Committee, as appropriate.

Concierge service and commercial agreements

The terms for industry engagements are formalized in agreement between Penn and the commercial party. PCI is responsible for the review, negotiation, and finalization of the applicable agreement. You can read more about the various types of commercial agreements, guidelines and policies, and the corresponding process at https://pci.upenn.edu/inventors/how-it-works-commercializing-innovation/agreements/

Penn Engineering offers “concierge service” to help usher your agreements through Penn’s internal processes, and to answer any questions you may have along the way. Faculty are encouraged to take advantage of this service by contacting Steven Weiner, and copy adro@seas.upenn.edu.

Open source software

Publicly releasing source code you have developed, under open-source terms, can be an effective way to disseminate your work for broader impact.  But it may also entail important tradeoffs related to its impact on future commercial opportunities and may raise legal or contractual questions.   Before releasing code as open-source, faculty are encouraged to contact their PCI Licensing Officer and/or Corporate Outreach (Steven Weiner) for consultation on issues including:

  • Applicable requirements under any grants which funded the code
  • Implications of releasing software that contains third-party licensed code, such as copy-left (GPL etc.) code or libraries
  • Patent- and copyright-related considerations
  • Determining an optimal licensing strategy