Commercialization Process

Starting a Company

What is the Commercialization Process?


Advice and Consultation with TTi

Our staff is always available to discuss the intellectual property implications of your work and to provide guidance and answer questions with respect to the KAUST Intellectual Property Policy, as well as the ins and outs of disclosure, evaluation, patenting and licensing. A meeting to discuss patent law may be especially important when gathering materials for publication in journals or theses or presentation at conferences and seminars. Click here for a note on confidentiality.

Invention Disclosure

A completed and signed Invention Disclosure Form must be submitted to TTi to begin the technology commercialization process. An invention disclosure is a confidential document in which you fully explain your invention and the state of the current art in your field. This is perhaps the most important step in the process, especially for patentable inventions. Any premature public disclosure of an invention, as by publication or presentation, will cause a loss of patent rights in almost all countries except the US and will negatively affect any commercial opportunities.

Because KAUST faculty collaborate extensively with colleagues at other universities and companies, TTi works with its counterparts at other institutions throughout the world to manage intellectual property you create in collaboration with others. All contributors to the ideas leading to a discovery should be mentioned in the disclosure, including students and others who are not KAUST employees. TTi will determine the rights of such persons and institutions. Not only faculty, but all students and staff members enjoy full rights and responsibilities under the KAUST Intellectual Property Policy.

If your work is being sponsored by an outside organization, invention disclosure may be required by the terms of your grant or contract. Industry partners typically require both disclosure of inventions and pre-publication review of papers, talks and abstracts. The KAUST Invention Disclosure Form is available for all disclosure purposes.

Invention Evaluation and Assessment

The assigned Portfolio Manager reviews the disclosure with the inventor and conducts an initial assessment. If an invention demonstrates commercial potential and is not already disclosed in the literature, a technology evaluation may be conducted to determine patentability, market competition and commercial potential. This process is designed to ensure that only the highest potential technologies are advanced to patent protection. At this stage, the Portfolio Manager makes a recommendation whether to move forward or close the file.

Legal Protection of Intellectual Property Rights

With the assistance and approval of the Office of General Counsel, TTi is responsible for selecting outside patent counsel demonstrates commercial el and has the full discretion to decide when or if to file a patent application on a disclosed invention. Patent protection begins by directing outside counsel to file a patent application in the inventor’s name with a country’s patent office. The US is KAUST’s first choice for patent filing because of its “provisional” patent process, which allows KAUST to preserve worldwide patent rights for 12 months before regular filing, thereby permitting researchers to publish new discoveries early without losing patent rights.

Provisional applications expire unless converted into regular patent application within 12 months. The patent process can take years and cost tens of thousands of dollars for a US patent alone; obtaining patent rights in other countries may raise the cost to one hundred thousand dollars or more, depending upon the extent of coverage. Legal protection for computer software and artistic works are obtained through copyright registration

The Patent Cooperation Treaty (PCT) is administered by the World Intellectual Property Organization (WIPO). The PCT is an agreement among countries that simplifies the process of filing patents in multiple countries. Prior to the PCT, if an inventor wanted to obtain patent protection in foreign countries, the only choice was to file separately in each country. With the PCT, for example, a US inventor can initially file a PCT Application in the PCT section of the USPTO, while preserving rights to file later in any PCT country. Note that Saudi Arabia is not yet a signatory to the PCT, and so KAUST can only file PCT applications in countries where the inventors are citizens. Thus, in some situations, PCT applications may not be available.

Technology Marketing

TTi writes non-confidential descriptions of inventions and uses them to identify and engage companies that may be well situated to bring technologies to market. Marketing can include on-line broadcasts, database listings, trade shows and of other tools. Inventors are consulted and their involvement is essential to success.

License Strategy and Agreement

Commercially useful technologies fit into business models, or drive creation of new business models, and how they fit in a business model determines whether they can be licensed and the type of license agreement required. The licensee may be an existing company or start-up. If a new business start-up is contemplated to commercialize the technology, TTi and Economic Development specialists will assist entrepreneurs by helping with business planning and connecting them to resources in the Kingdom and the region. See the KAUST innovation Cluster web page and other Economic Development web pages for more detailed information.

When a qualified company (or companies) is found, TTi works with the potential licensee to document and meet the financial and due diligence terms required by KAUST to license the intellectual property rights.

With regard to commercializing software, KAUST supports a range of approaches to licensing, from closed-proprietary and source-available to true open-source models, depending upon the nature of the product and the goals of the authors. However, KAUST reserves the right to avoid any open-source mechanism that may impinge upon the rights of others. Inventors may request that TTi use an open-source license so long as: (1) KAUST retains the right to freely use and distribute the code, (2) That the potential economic development impact of licensing on Saudi Arabia has been taken into account, and (3) The developers have no financial interest in providing services connected to distribution.

For more information about other license terms and inventor rights, please see the KAUST Intellectual Property Policy

Licensee Commercialization

The licensee is required under the License Agreement to develop the technology and incorporate it into products or services. Technology development may entail a variety of efforts and financial investments by the company, KAUST and its inventors, or both, including conducting further research, securing government approvals, launching sales and marketing programs or providing training and technical assistance. The failure of a licensee to successfully commercialize the technology is grounds for termination of the license.

License Revenue

In exchange for license rights, KAUST may receive payment by a variety of contract mechanisms, including upfront fees, royalties or milestone payments. Payment terms are reached by negotiation, can vary widely within technology fields and are based on the facts of the transaction and the technology’s potential commercial impact in Saudi Arabia. Any revenue received by KAUST from a licensee is distributed as set out in the KAUST Intellectual Property Policy, which may be changed from time to time by the KAUST Board of Trustees.