Transcript Patent or Perish?

Patent or Perish?
Presented By: John F. Letchford
Archer & Greiner, P.C.
October 19, 2006
Academia historically has held
publication in a scholarly journal
the premier way
to establish
credibility and
gain prestige.
What is Intellectual Property?
 Patent
 Trademark
 Copyright
Inventorship


Conception of an idea
Formulation in the
mind of a definitive
way of realizing that
idea (ie – a concrete
and complete solution
to a problem)
Who Is Not An Inventor?

Individuals that merely act as research
technicians under the direction of the actual
inventors
Those researchers
who continue
with the mindset
of publish or perish
while not taking advantage of the
opportunities that patents provide
may be doing so at their own peril
(and that of their sponsors).
Public Disclosure – What
Determines Publication?




Length of time presented/exhibited
Expertise of the audience
Lack of notice or reasonable expectation that
the material displayed would not be copied
The simplicity with which
the material could have
been copied
The Easiest Way to Protect Your Invention
January 1, 2007 – Publish
January 2, 2007 – Patent
BAD
The Easiest Way to Protect Your Invention
January 1, 2007 – Patent
January 2, 2007 – Publish
GOOD
Provisional Patent Application
Advantages



Preserves
international filing
rights
Defers substantial
patent costs
Permits inventions to
be marked as “patent
pending”
Provisional Patent Application
Limitations

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Not examined by the U. S. Patent and
Trademark Office (“USPTO”)
Lapses in 12 months
Does not form the basis for enforceable
patent protection
Provisional Patent Application
Costs



$100 USPTO filing fee
Minimal fees for legal
services
What you can do to
keep those costs from
escalating
Provisional Patent Application
What We Need From You



More than a generalized description of the
invention and/or its performance
Legally sufficient disclosure (ie - what you
are doing, lab results, working papers)
We need your research
What Happens After the Provisional
Application is Filed?



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At the USPTO… nothing
Provisional applications are never
published by the USPTO
Patentability Search
Analysis
Evolving Research
When Additional Provisional
Applications May Be Necessary
Non-provisional/Utility Application


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Must be filed within 1 year of the
provisional application
Formally examined
Provides enforceable patent protection if
granted
Considerable cost and time
If you’ve followed the Patent then
Publish doctrine and a patent issues…
The Benefits are Numerous
The Dawning of
the Age of Aquarius –
The Bayh-Dole Act of 1980
In 2004, U.S. Universities filed 10, 517
patent applications –
3 times more than IBM, the corporate
leader in
worldwide patent
filings.
WHY?
The Value of Academic Technology
Transfer

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
For the University – gives the academic
community the opportunity to have a positive
impact on products and the marketplace
For the Industrial Community – gives the
private, for-profit sector the means to tap the
very significant work of new discovery found in
the academic lab
For the General Public – provide the
opportunity to benefit from extraordinary new
advances being made by the brightest minds
Other Advantages of
Patenting Before Publishing



Provides an additional quantitative indicator to
assess the quality and quantity of university
scientific work
Gives private investors convincing evidence that
the dollars they spend on academic research
and development are yielding results
Unlike publishing, can have a tangible valuation
applied to it that can be compared equally with
other patents on a global scale
Trends in University Patenting

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16,871 invention disclosures – 82% deemed
potentially patentable ¹
183 institutions reported filing 10,571 new
applications – 32.8% more than the previous
year ¹
Patenting and Publishing are not mutually
exclusive – 9 of the top 10 Universities filing
patents in 2005 in the United States were also in
the top 100 of an international ranking of
Universities based on publication output in 2000
¹ Based on results of a survey of 198 universities conducted by the Association of University
Technology Managers (“AUTM”) in Fiscal Year 2004
The Dollar Value of Patent Applications¹
Licensing – The Gift that Keeps on Giving

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11,414 licenses/options
yielding income - $1.385
billion
6,116 licenses/options
generated running royalties $1.122 billion
33% of respondents reported
having at least one licenses
that generated more than $1
million
¹ Based on results of a survey of 198 universities conducted by the
Association of University Technology Managers (“AUTM”) in Fiscal Year
2004
Trends in Licensing
Revenue
In 1991, University revenue from patenting was
only $200 million compared the $1.385 billion
in 2004. That’s nearly a 600% increase in 13
years.
More Specifically…
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In 2005, the University of California and San
Diego reported making $21 million on
patent royalties
MIT reports making
$45 million from
IP revenue annually
Additional Benefits from
Licensing Patents

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Collaborative partnerships help move new
discoveries from the laboratory to the
marketplace
Ongoing partnerships enable researchers
who make discoveries in the early stages
of a University’s tech transfer program to
participate in future developments with
industry
What Is Being Licensed? ¹

56% of Universities report making at least
one new product commercially available to
the public – total 567 new products
 More
than 3,100 new products
have entered the marketplace
from FY1998 through FY2004
¹ Based on results of a survey of 198 universities conducted by the Association
of University Technology Managers (“AUTM”) in Fiscal Year 2004
Licenses Provide More Than Just a
Revenue Steam
ARM Ltd., a leader in microprocessor technology,
sponsors 10 research assistants at an annual
salary of $65,000 at the University of Michigan
in return for taking co-ownership of any
patents they file.
Patents are an Indicator of the Relationships
Between Academic Research and
Commercial Application of New Technologies

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Since 1980 there have been nearly 5000
startup companies spun out from U.S.
University license of patents
2/3 of these are still in operation
IN FY2004, Universities spun out 462 new
companies and received an equity interest
in 51.9% of them
Simply put, the difference
between not patenting your
ideas and seeking patent
protection…….
Baby Gets A New Pair of Shoes
or…
Baby Gets A New Beach House
Patent or Perish?
Presented By: John F. Letchford
Archer & Greiner, P.C.
October 19, 2006