Intellectual Property Review

A second question central to our assessment is this: “How likely are we to obtain enforceable intellectual property rights on the aspects of the invention enabling its successful commercialization?” In short, “Can we even get it to sell?”

OTD must answer a multitude of questions with respect to intellectual property rights. Three particularly crucial questions are:

• Is it even the University’s to begin with? At times, research sponsorship-related or material transfer-related issues give the University only joint rights – or possibly no rights – to the intellectual property created during research. Similarly, the University, through an inter-institutional agreement, may have only partial rights to intellectual property. OTD must understand what rights it actually is able to commercialize.
• Can effective intellectual property rights be obtained? At times a particular technology field may be heavily patented, making it possible, for example, that very few, if any, claims would be allowed; in addition, allowable claims would have to be so narrow as to diminish their commercial value, as others could easily invent around them.
• How enforceable would any intellectual property rights be? In some cases it might be highly probable that good, broad protection for the invention could be obtained, but given the nature of the invention, it might be unlikely the University or a licensee could ever effectively enforce those rights. Without this ability to enforce, a licensee would have little advantage over its competitors, decreasing the relative value of holding those rights.

The key question “Is this patentable?” can only really be answered by the examiners at the U.S. Patent and Trademark Office or other patent agencies. However, OTD aims to answer these questions as clearly as possible in a reasonable amount of time and as is prudently cost effective by: closely reviewing all related sponsorship, inter-institutional, material transfer, confidentiality, and other agreements; by utilizing publicly available and paid proprietary intellectual property research tools; by working with you (the inventor); and, at times, by engaging an experienced patent agent or attorney.