Four schematics of a Lego figure of a man appear in white on a grey background. The figures are labeled Fig. 6 (back of the Lego figure, with arms and legs extended as though the figure were walking); Fig. 7 (front of the figure in the same walking-type pose as Fig. 6); Fig. 8 (back of figure in sitting position, with arms and legs extended straight out from the front of the figure); and Fig. 9 (front of figure in same pose as Fig. 8). Written at the top is "U.S. Patent Dec 18 1979 Sheet 2 of 2 Des. 253,711.

Inventors play critical role in patenting, licensing inventions

A yellow Lego figure "wearing" a blue uniform stands at the center of a green tile platform. The figure holds a black stick that touches a paper laid out on a drawing board in front of him. The paper has several schematics hand-drawn on it. The drafting table, which is made of white plastic tiles and grey plastic cubes and spirals, has a mini spotlight attached to it. Behind the inventor is some sort of machine -- it has a clear bubble on top of a grey wheeled cart with a corrugated pipe extending from it. On a shelf in the background, several plastic parts are stacked. Other plastic parts are on the floor surrounding the figure.

The innovation enterprise in academia is dependent on two complementary processes: the recognition of an innovation or discovery by the innovators, and the harvesting of those opportunities by the university. Because the pursuit of patents is costly and university budgets are constrained, the university must evaluate each case to assess its commercial potential and patent prospects prior to deciding whether to move forward into the patent process.

Patent preparation and prosecution are the most time-consuming elements of the commercialization process for most inventors. Because inventions tend to be very technical, the patent attorney assigned to the invention case usually needs substantial input and review from the inventor to best capture the key elements of the technology that will inform the scope of the patent claims. While patent attorneys will have technical expertise in subject matter areas they routinely handle, they also need the innovator’s input to structure the claim set and support those claims effectively.

Once the application enters the prosecution phase at the U.S. Patents and Trademark Office (USPTO), inventor input is critical to helping inform the USPTO about the prior art most closely related to the invention. The key here is to identify and report information that is material to the patentability of any claim in the application. This obligation extends to the inventors, the patent attorney, and any other individual (associated with the inventor or owner of the invention) who is substantively involved in the preparation of the application. In this case, the inventor does not have a duty to search for references or descriptions of closely related technology, but merely has to provide copies of the information about which they are aware through their work on the technology. This information is communicated to the patent office by way of an Information Disclosure Statement (IDS).

Section 2016 of the Manual of Patent Examination Procedures (MPEP) specifies that “a finding of ‘fraud’, ‘inequitable conduct’, or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.” Therefore, diligence must be applied when completing an IDS.

Responding to USPTO Office Actions also requires substantial input from the inventor. An Office Action is an official, time-sensitive notification indicating whether the patent is allowed or rejected (for reasons stated in the Office Action). If a claim is rejected for any reason, the patent attorney will seek analysis and input from the inventor to help overcome the examiner’s rejection(s). The inventor’s technical expertise and intimate knowledge of the invention are critical factors in convincing the examiner that the innovation should be allowed to issue as a patent.

In many cases, academic technology transfer offices have an inventory of applications and patents that need further development before they are marketable. This intellectual property must be marketed to potential licensees by the technology transfer office.

Often, the inventor’s role in marketing is simply to connect the technology transfer office with individuals who are already aware of the research program and have an interest in pursuing licensing opportunities. This is especially common when the inventor has partnered with a corporate research sponsor in the development of the innovation, and in many cases the corporate sponsor will have certain option or license rights through the funding agreement. In other cases, the inventor’s familiarity with the target market will provide potential leads.

The technology transfer office will also attempt to establish leads by examining ownership of related patents, reading market research reports from subscription services, conducting independent analysis of potential product markets, and leveraging business contacts and relationships. The inventor should be active in asking about marketing strategy and offering to review potential target lists. Later in the process, the inventor will likely be asked to assist with the review of marketing materials, or to meet with company representatives to provide insight on what makes the innovation commercially valuable.

Once a licensing negotiation has begun, the inventor can assist with the process of identifying opportunities for non-royalty components, such as appropriate milestone achievements for future development, future sponsored research to continue with development of the technology, or consulting opportunities.

Although some inventions from the academic realm may have found significant commercial success without substantial assistance from the inventor after issue of the patent, a hallmark of most successfully commercialized academic inventions is a motivated inventor or group of inventors who communicate a vision for achieving a successful outcome for an innovation that is measured in terms that extend beyond royalty rates or license fees. Public benefit from an invention or discovery is derived in a number of additional ways, such as transfer of knowledge and research resources. Each element of success relies on a partnership between the inventor and the technology transfer office.

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

Lego patent image via Flickr user Vera de Kok (U.S. patents published prior to 1989 are copyright-free).  Lego inventor image by crises_crs via Flickr, used under Creative Commons license.

 

A transparent lightbulb is pictured on a green background. A laser pointed at the bulb from behind makes it appear to be lit. Reflections from the bulb's glass bounce around the background.

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.