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.

 

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