 |
Volume 2, Issue 3 |
"I
think I've invented something of commercial value ... What now?
(Part II)
By Tresa Landis, Financial and Information
Specialist, Kansas State University Research Foundation and Gary Rabold,
Vice President, Mid-America Commercialization Corporation
In Part I of this two-part series, we discussed the
policies under which intellectual property issues are administered at Kansas
State University and the process of taking an invention from conception
to the marketplace. In this article, we will look at the latter in more
depth, expanding on steps taken once K-State's Patent Advisory Committee
(PAC) has accepted the invention on behalf of the University and it has
been assigned to the KSU Research Foundation (KSURF).
Once the invention is accepted, it starts down two
parallel but distinct pathways: one path in the route of protection, the
other to the marketplace. As expected, the same people are involved in
both activities on the University's behalf. They are the inventor, KSURF
and MACC.
The Protection
Route
There are several ways to begin protection. The
starting point is usually indicated by how much is known about the technology
and its prior art. It is very useful for the process, and sometimes informative
for the inventor and his or her students, to search for related patents
using either the U.S. Patent and Trademark Office's (USPTO)
Web site or the Delphion site.
The patent application is then reviewed by the inventor,
KSURF and MACC primarily to ensure the essence of the invention is captured
and that commercialization issues are factored in. Several drafts, and
in some instances additional research, might be necessary before a final
application is filed.
The prosecution of an application entails correspondences
with the USPTO, wherein rejections are presented that must be disproved
to the degree possible. Generally, claims are modified along the way according
to how successfully rejections are argued.
Inventor input is crucial during prosecution. In
responding to rejections, the inventor needs to be in a "bilingual" frame
of mind; maintaining and awareness of the scientific language as well as
the legal language of the patent application. Of course, the desired outcome
is to receive a patent that has sufficient coverage to be of commercial
value to the industry.
The Commercialization
Route
As with protection, there are a variety of ways
to take an invention ot the market place. We'll look at the two most common
ones.
In the first scenario, the invention is a product
of industry sponsored research. In this case, the sponsor generally has
a first option to negotiate for rights to the invention, with few if any
license terms actually specified. Nevertheless, with industrially sponsored
research. the licensing process gets a "jump start."
In the second scenario, the invention is a product
of either unsponsored research or government-sponsored research. In these
cases, there are many ways to identify potential licensees but the most
successful contacts frequently come from the inventor. His or her assistance
is again crucial in identifying companies with potential interest
in the technology and the ability to successfully commercialize it.
Some common methods of identification at the inventor's
disposal are conferences where the inventor has presented the invention
(hopefully after filing a patent case), knowledge of companies working
in the field, and scientific colleagues who can champion the invention
within their companies. Through a variety of paths, MACC pursues additional
licensees in collaboration with the inventor.
From the company standpoint, licensing any new technology
is a very risky undertaking. For the most part, university technology is
in the embryonic stage and requires considerable investment of additional
resources before it ultimately gets to market where it can begin to recoup
the company's investment to make a profit (and pay royalties).
The reputations of the inventor and the institution
play significant roles in successfully transferring the technology. If
the inventor or the institution has strength in the field, the company
is much more willing to accept the risks.
License negotiations consist of several areas of
discussion including the grant of exclusive or non-exclusive rights in
a field of use, commercialization milestones, royalty rates, patent protection
and legal reimbursement. The most successful licensing ventures end in
establishing relationships with the licensee that can lead to other collaborative
or licensing possibilities.
Although the inventor is not a direct party to the
license negotiations, his or her participation in the process often continues
until the licensee is able to develop the technology into a product or
service that meets its customer's needs.
As you can see, the processes of patent protection
and commercialization have to work together successfully to yield the desired
result of commercially viable invention the justifies the time and expense
invested by all parties.
Do you have invention that merits patenting?
Give us a call. We would be pleased to talk with you about it. Please contact
us at 785-532-5720 or tech.transfer@ksu.edu.
