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Inventor plays larger role in tech transfer at institutions with smaller offices


A woman and a man sit at a table in an office. Between them on the table are parts of their invention -- two opaque white cups, an opaque grey cup with small holes on its surface, an opaque white screw-on lid, and a royal blue screw-on lid. File cabinets with various brightly colored toys are in the background.
Inventors like associate professor of speech pathology and audiology, Dr. Donna Scarborough (left), and associate professor of mechanical and manufacturing engineering, Dr. Michael Bailey-Van Kuren (right), play a critical role in the technology transfer process at Miami University.

A common misconception about the inventive process is the idea that great inventions with strong commercial value are almost always the result of a flash of brilliance, sparked by the combination of intuition and creativity. The invention, in this idealized scenario, is essentially complete and ready for a patent attorney simply to translate it into the stylized format of the patent application and submit to the U.S. Patent and Trademark Office (USPTO) for examination. The reality, of course, is that successful inventions owe as much to longer term planning and strategy — together with commensurate investment of resources — as to serendipity or chance. This is even more true in the academic research environment, where constrained resources and competing priorities make research programs and investments that are purely commercialization-oriented much more uncommon than in the business world.

In the university research environment, the first step in the inventive process — conception — often takes place quite some time before the development of a prototype or other constructive reduction to practice occurs. Generally, the process of invention development in academia is a more linear or serial process where funding and time are allocated according to the “next best step” rather than to a comprehensive development plan where many paths run in parallel toward a quicker commercialization outcome. In light of recent changes in U.S. patent law, this approach creates timing issues that bear on how early in the process the inventor should engage with their patent management office.  However, in most cases the right time to submit an invention disclosure form is between three and six months prior to making a public disclosure of information or results that would create a patent bar. Once the Office of Technology Transfer & Business Partnerships (TT&BP) receives this report of an invention, it is reviewed for completeness and assigned a case number. Following that, an initial meeting will be scheduled with the inventor(s) to discuss the technology. The most important role of the inventor in this step is to provide as much information as possible about the commercial potential for the invention and the elements of the technology that are novel.

Although copyright/software is an important component of many university innovation portfolios, patented technologies remain the primary revenue source for protectable innovations in academia. For that reason, the assessment process for new invention disclosures focuses on two equally weighted elements: commercial potential and patentability. The inventor can play a substantial role in helping to gauge these two aspects. First, in the area of patentability, many larger technology transfer offices have a broader range of subject matter expertise among the licensing staff, and in some cases have revenue volume that will support the use of external search consultants for prior art or formal patentability opinions. Smaller offices, like Miami’s, depend on the inventor to help provide subject matter expertise and to review and provide feedback on prior art found during literature and patent searches.

Statistics from the USPTO show that about half of all applications will eventually issue as patents, with the caveat that many go through substantial changes in the scope of patent claim coverage during examination. In this respect, the odds are favorable, but the expense associated with applications that do not result in patents represents a significant risk for the technology transfer office with a limited patent budget. The criteria for patentability require inventions to be novel, non-obvious, useful, and enabled. The inventor can provide much needed guidance on how likely the invention is to survive the examination process of evaluating these factors, and thus how risky the patent investment may be relative to other cases. Most offices make positive filing decisions on one-half to two-thirds of their disclosure volume. Differentiating among different technologies and their prospects is challenging in the best of circumstances. The ability of the inventor to provide candid, timely responses to prior art queries is a valuable contribution to the assessment process.

The commercial potential for an invention is not entirely distinct from the patentability aspect because statutory monopoly plays a role in the development of capital- and time-intensive innovations such as pharmaceuticals or medical devices. Other factors, though, are important as well, and the inventor is often in a position to provide valuable advice on the state of the product market that the new innovation would enter if successful. In some cases, new innovations truly create new markets, but many successful academic innovations find their way into more mature markets where existing products present substantial barriers to market penetration in the absence of distinct differentiators that are valued by the end user. An understanding of the advantages that the innovation might achieve are important, as are other factors such as:

  • state of maturity or stage of development of the invention,
  • need for access to background intellectual property,
  • market size, and
  • recent trends in the market that might lend attractiveness to the innovation’s potential.

Here the role of the inventor can be significant as well, but there is less of an expectation that their subject matter expertise extends deeply into the commercial realm. When it does, though, the input from the inventor can be crucial to affording TT&BP the best prospects for making high- quality investments in patents that can benefit society in the future.

Written by Reid Smith, Director of Technology Transfer & Business Partnerships, Office for the Advancement of Research & Scholarship, Miami University.

Featured image (left) by Veronica Aguilar via Flickr, used under Creative Commons license. Image above by Miami University Photo Services.

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