Technology Transfer & IP company Hebrew University Jerusalem

Relying on flexible marketing strategies, we work with inventors to arrive at the appropriate commercialization strategy.

During our overall assessment, we go beyond simply looking at the “inventive” concept. We consider -

the invention's theoretical basis and scope

the invention's potential commercial applications and technical value

the inventors (academic and industrial contacts, R&D experience, other patents, publications)

existing patents in the markets and the competition

the invention's technical limitations

costs and benefits compared to available or anticipated equivalents

Potential licensee identification

We identify potential licensees or strategic partners, giving top priority to any companies the inventor knows or believes may be interested in utilizing the invention. If neither the inventor nor Yissum can suggest potential partners, a market assessment may be undertaken. On occasion, we contract with outside consultants to research and learn about specific markets, applications, industries, or technologies.

In-depth discussions

We carry out in-depth discussions with the inventor.

The topics for discussion with Yissum focus on the market sector or niche the inventor believes the invention fits into, anticipated applications, and target companies.

Our IP department critically reviews and studies -

Patentability: If the results of the research have already been disclosed - orally or in writing - they may not longer be patentable and their commercial potential will have been compromised.

Involvement of research partners: From other institutions in Israel or abroad, whose employers may be entitled to co-ownership of the invention together with Yissum.

Sources of research funding: May have implications for the protection and exploitation of the invention.

Names of any potential licensees: Listed on the Declaration of Invention form.

We recommend reviewing the technology transfer process to understand the steps taken by Yissum’s IP departmet in evaluating and protecting HU inventions.

Negotiations

Yissum's negotiation strategies are tailored to the needs of each invention, but the basic tenets of its licensing policy are reflected in the Research & License Agreement. Note the following:

Research proposals are often a major topic for discussion with prospective licensees. The agreement between Yissum and the licensee often provides for funding by the licensee of further research undertaken by the researchers-inventors at HU.

The licensee is granted the right to develop, manufacture, utilize, market, and sell products, processes, or methods based on specific patents and patent applications, and related know-how. Yissum retains the legal ownership of the invention.

Inventors play an active role in discussions with the prospective licensee on professional issues; however, Yissum alone negotiates the terms of the agreement. This is a particularly important distinction in cases where when the researcher-inventor has been retained as a consultant to the company with which the discussions are taking place, or is connected to the company in some other way.

The agreed terms are incorporated by Yissum in a draft agreement, which usually undergoes several revisions until it satisfies the researcher, Yissum, and the licensee. The Research & License Agreement becomes “the contract” or “the license.”