I think I've invented something

News & Views
Volume 2, Issue 2

I Think I've Invented Something of Commercial Value...What Now?" (Part I)

By Tresa Landis, Financial and Information Specialist, Kansas State University Research Foundation, and Gary Rabold, Vice President, Mid-America Commercialization Corporation

    University research results not only in the generation of important new discoveries and information, but also in the creation of new intellectual property. (In this article, the term “intellectual property” presumes there is a potential commercial use and value associated with an invention.) As noted in an Association of University Technology Managers’ report for 1998, “U.S. and Canadian universities and nonprofit institutions applied for 4,808 patents, were issued 3,224 U.S. patents, consummated 3,668 new licenses and options, and facilitated the creation of 364 new start-up companies. Industry partners as institutions’ licensees are developing and bringing to the market products, processes, and services based on 17,088 active licenses.”
    It is clear that many inventions are being made in the university environment, and are being brought to the market through a variety of commercialization paths. In this two-part article, we look at the process at the local level. First, we briefly lay out a few key points from policies that govern how intellectual property is managed at K-State. Second, we discuss on a working level the series of steps that are taken from the time the first light bulb “turns on” to the time that a licensee is working on bringing a product or service to market.
    The Kansas Board of Regents Intellectual Property Policy adopted November 19, 1998, is the University’s first authority on administering intellectual property issues. The Faculty Senate Handbook provides applied guidelines and states that “rights to patentable inventions resulting from University-sponsored research shall be assigned to the Kansas State University Research Foundation” (KSURF), and that “if research carried out under University auspices results in an invention, the inventor shall present a Disclosure of Invention to the Patent Advisory Committee, which will recommend whether or not the Kansas State University Research Foundation should prosecute a patent application on the subject invention.”

From the website of KSURF, “The business of a university is the creation and dissemination of knowledge. Inventing or creating something and putting it to use in service of the public is one mode of accomplishing this objective. Accordingly, the University encourages the inventive/creative process, and within the limits of financial practicality, advice and assistance are provided in bringing inventions and other creative works to the point of commercial use.”
With this as background, let’s look at some of the ways an inventor can proceed if he or she has a patentable invention. For uncomplicated situations, all that is necessary is for the inventor to take the following steps.

· Carefully document the invention by written, witnessed records.
· Manage the invention and public disclosure processes in a way that minimizes negative outcomes from a patentability perspective.
· Submit an invention disclosure to KSURF.
· Present the disclosure to the KSU Patent Advisory Committee for a recommended action.
· Assign the intellectual property to KSURF.
· Assist KSURF and the designated patent attorney on preparing the patent case for filing.
· Assist MACC in identifying and securing a licensee.
· Continue to assist KSURF and its attorney in prosecution of the patent case.
· Assist the licensee in its development of the technology as a product or service that is recognized as meeting customer needs.

    Details aside, it is apparent from the above list that the invention process requires a time commitment from the inventor, the PAC, KSURF, and MACC. This means that at the outset, the decision to move forward should not be a casual one.
    Frequently, this “go/no-go” issue is very satisfactorily addressed by having a preliminary meeting between the inventors and representatives from KSURF and MACC prior to formally disclosing the invention. Some selected items that are addressed are i) advantages of the subject invention over current methodology, ii) additional research that may be necessary, iii) potential market size, iv) ability to capture value, and v) factors that could block commercialization.
    This type of discussion is helpful in preparing the disclosure form, not only with a description of the invention, but also of the environment in which it will have to operate. It greatly assists the PAC in arriving at a meaningful decision on the most appropriate disposition of the rights to the invention.
    We hope this brief article provides some insight into the initial part of the patenting and licensing process; not simply that of establishing ownership rights, but also of starting the collaboration between the inventors, KSURF, and MACC to build a strong intellectual property position, and work toward capturing value.

Part II will discuss the events that follow once the PAC accepts the invention on behalf of the University.