The path from ‘eureka’ to patent

University researchers chasing breakthroughs that could one day change the world face a long journey from the “eureka” moment to their invention arriving on the market. And before industry partners are ready to take the risk of developing and commercialising those discoveries, they need the peace of mind that patent protection provides.

A good technology transfer office (TTO) and a good patent lawyer are worth their weight in gold, says Randy Blakely. The executive director of the Florida Atlantic Stiles-Nicholson Brain Institute has a dozen patents to his name, and he knows how complicated the patent process can be.

My job, as senior associate director of technology development, is to make the process as painless as possible. I am a patent attorney and the first point of contact for researchers with an invention that would benefit from intellectual property protection. I communicate the technology transfer process in a way that academic researchers who might have no experience in this area can understand. And vice versa: I need their assistance to understand exactly what they’ve developed. I am a liaison between the researchers and the consultants, lawyers and industry partners who all play a role in patenting and commercialising a new discovery.

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It’s important to get an early start in the process. An invention’s patentability can be impacted if it has been publicised, especially through academic papers or presentations. Public disclosure bars patent protection in most of the world, while the US allows a one-year grace period between disclosure and filing a patent application.

The first step in the university’s technology transfer process is filing an invention disclosure. This confidential document is completed and submitted to the TTO by the researcher to describe the details of their invention and its development, and to differentiate between their work and what’s already in place, including how it might improve on existing solutions. They’ll also report the sources used to fund their research, some of which may have terms that impact intellectual property rights.

After meeting with the inventors to finalise the disclosure, I work with a consulting firm to assess the innovation’s commercial potential. The firm uses its international expertise of the market to advise whether the university should invest the tens of thousands of dollars required to obtain a patent.

That’s the objective resource that my office uses to make a judgement call as to whether we move forward with an innovation or whether we return it to the inventors with a recommendation that they do additional research and development.

If the market assessment is promising, the next step is to file a provisional patent application. This work goes to outside law firms that specialise in working with university TTOs and can match the invention with a patent attorney with the requisite expertise.

The provisional patent application is like a placeholder – a stake in the ground that establishes a filing date that grants priority over any others who might try to file a patent application for the same invention.

The patent attorney drafts the application with feedback from the researchers. I strive to make this as collaborative and transparent as possible, ensuring that communication between lawyers and researchers is clear and thorough, so they’re aware of where things stand throughout the application.

In the meantime, the inventors continue to improve their invention and generate more data, taking into consideration recommendations from the market assessment. I prepare marketing materials, including a non-confidential summary that features a high-level description of the invention and its benefits and applications. I, along with the consulting firm, provide this summary to companies that may be interested in partnering with the university to develop the invention.

If a patent is awarded and the invention attracts interest from industry, one possible outcome is a license agreement between the university and a company. This gives the business permission to use the underlying intellectual property rights to commercialise the invention. The university maintains ownership of the patent, requiring the company to meet certain milestones and comply with other terms as it brings the invention to market.

A successful technology transfer process doesn’t all come down to patents and license agreements. A company that doesn’t yet see a viable commercialisation opportunity could still seek another partnership that may be just as fruitful, such as sponsoring research in a faculty member’s lab or providing internship and job opportunities for students.

I strive to make this a positive experience for everyone from start to finish, whether they are receiving a patent that might lead to professional accolades or building a partnership with a company that helps bring their idea to the people who might benefit from it. 

Dana Vouglitois is senior associate director of technology development at Florida Atlantic University.

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