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Patent Reform’s Effect On The University Tech Transfer Office & R&D Organizations

Melba Kurman is my next interview subject for my blog series on Patent Reform and R&D. I found Melba through the series of excellent articles she has written on the topic of Patent Reform and Universities. Melba Kurman is a strong advocate of both the value of university innovation, as well as the value of updating and evolving how university inventions are brought to market.  Her insights and analysis arise from first-hand experience working inside a university technology transfer office and before that, in a large technology company.   She is the president of Triple Helix Innovation, a consulting firm dedicated to improving innovation partnerships between companies and universities.

John: What organizational changes do you have to make to prepare for patent reform?

Melba: The unit that manages patents -- the technology transfer office in the case of a university -- will have to think through whether it can afford the time and cost of getting a provisional patent on most newly submitted inventions.  If a university is going to make the commitment to patenting more of its inventions, then many universities will need to make changes to their tech transfer workflow and budget allocations.  In terms of outreach, technology transfer staff should reach out to university researchers to make sure that researchers understand that there’s a weakened grace period, and that they should submit new inventions as soon as they can.  

Today, most U.S. research universities do not file a provisional patent on each new invention.  Of the few universities that currently file a provisional on most new inventions, interestingly, that commitment does not appear to be related to the size of the university, the number of tech transfer staff, nor the university’s research expenditures. To put some numbers around it, I looked at the Association of University Technology Managers (AUTM) data.  For each university, I compared the number of newly disclosed inventions that year against the number of new provisional patents filed in that same year.  The ranking did not play out by budget.  For example, the University of Hawaii files a provisional patent on nearly every new invention they receive.  As a result, their workflow should not be impacted too much by the new law.  Hawaii does not a have a large budget so provisional filing appears to be also a matter of a university’s culture.

Although local university culture plays a part in patent strategy, budget remains a real challenge.  Many universities struggle since their patent budgets just isn’t big enough to patent as many inventions as faculty would like.  As a result, the technology transfer office must make difficult decisions about which inventions are worth the $30-40K investment.  Under the new patent laws, universities should make sure they have a rigorous process to sift out the commercially viable inventions (hence worth patenting) from the non-commercially viable inventions.

Good common-sense business practices and a culture of honest and transparent two-way communication on patenting decisions will make the transition to a new patent law smoother.    Being able to explain patenting decisions to university faculty is key from a customer satisfaction point of view.  To get commercially-oriented faculty to continue to submit inventions early and often, it’s important that faculty perceive the technology transfer process as one that’s fair, rational and worth spending time and energy on.  For example, if a technology transfer staff member decides that an invention lacks commercial potential and therefore should not receive a patent application, that staff person should be able to clearly explain to the inventor why that decision was made.

In addition to clarity of process, it’s important that inventing faculty experience the commercialization process and one that’s smooth and efficient.  Consider that in the University environment, faculty and graduate students advance their careers by publishing their research to as broad of an audience as possible.  Therefore, for many busy faculty, patenting their research remains a “nice to have.”  If a university researcher has more than one less-than-ideal experiences working with the technology transfer office, he or she may decide to re-direct time and energy away from patenting and commercialization, and back to publishing, teaching and doing research.

John: How will first to file change filing behavior for the culture?

Melba:  There’s no such thing on campuses as a single “university mindset.”  Each staff role inside a university has its own unique goals and challenges; even between faculty members we see a wide range of attitudes and degrees of interest in nearly everything, including whether or not to pursue patents.  However, for the university faculty who have made technology commercialization a career priority, I suspect these researchers will quickly catch on that they should keep closer contact with their tech transfer licensing person.  These faculty will make it part of their workflow to disclose an invention before going to a conference or publishing a paper.  They will teach their grad students to do the same.  Commercially active faculty will ask their licensing staff member to keep them closely updated on decisions on patent filings.

John: How will Patent Reform affect the R&D organizations relationship with Universities?

Melba:  Again, this will vary tremendously by university, and by individual researcher.  Some researchers who want patents may become more cautious in freely sharing their preliminary research and in engaging in industry consulting activity.  However, given the complexity of the university innovation ecosystem, it is too early to tell how it’s all going to play out between the R&D organization, the researchers, and the tech transfer office.  I suspect that for universities that have clear procedures, good relationships with faculty and industry and are already filing lots of provisional patents, this new law won’t really impact them much.  R&D organizations fortunate enough to work with universities such as these will discover that the university technology transfer staff and researchers will continue business as usual.

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The “Structural Packaging Summit,” is nearly here (February 28th – March 1st) and Newlogic will be presenting on patent reform, patent portfolio management and the effect it will have on packaging R&D.