AUTM Days 2 and 3

On Wednesday I attended a very interesting session: “Not the Usual Suspects: Non-traditional IP from Non-traditional Sources.” The panel presenters from the OTT from the University of Illinois shared how they realized one day that they were only interacting with a very small part of their campus. To kick start communication with the rest of the campus, they held an open meeting with the deans of the humanities and social science departments to discuss what the OTT does and what types of resources they could offer.

They have since partnered with foreign language department, industrial design, music, sociology, psychology and architecture. The OTT has made the commitment to the entire campus to listen and learn, and to adapt existing processes and tools (within reason) in order to meet non-traditional IP needs.

One presenter from a consulting company mentioned something important to think about when opening up OTT resources to departments other than STEM – impact is not always proportional to dollars. These projects are still important.

The consultant also talked about licensing opportunities for university collections of art, music, artifacts, antique maps, and books. These licensing agreements are often very different from tech agreements in that they are limited term, payout minimum royalties in advance and often specify how the work is to be used (replicated on t-shirts, used as a logo for software, etc.). This type of licensing protects the university’s investment in the collection.

Today on the closing day of the conference, I attended a session which was essentially an open discussion about faculty expectations of tech transfer offices. Many topics were brought up in this session both from faculty representatives and OTT representatives such as faculty motivation for disclosing their IP (money, altruism), the need for consistent clear expectations and communication from both parties, and showing the value of what the OTT can bring to the inventor.

One university representative talked about having a faculty liaison act as a bridge between OTT and the inventor. When OTT has to say no to a technology or invention, the inventor might doubt that the OTT office has done its due diligence, but if a colleague explains why it can’t move forward, they are often more accepting of the news.

One panel presenter who has been on both the university and the corporate side of IP, suggested that the OTT be more involved with the brainstorming around how ideas and technology could be used. He gave the example of a chemist who is very interested in how certain molecules are bonding, but is unsure of how this would be applicable commercially. The OTT staff could bring an outside perspective on ways the technology could be used.

Another suggestion from the audience is using a third-party patentability and licensing analyst. This negates any perception of the tech transfer office being biased toward individual faculty or departments.

 

 

 

Tech Transfer and Patents: Observations at AUTM

My name is Cathi Kennedy and I am the program coordinator for the MSc in Patent Law. This week I’m attending the Association of University Technology Managers’ (AUTM) Central Regional Meeting in Indianapolis. Representatives from universities, law firms, and industry are here to exchange ideas, network, and learn about new trends and practices in the field.

Having neither a technical nor legal background, I am here to observe and absorb information and meet nice, very smart people who are interested in hearing about the MSc in Patent Law program.

Today’s first session was about the America Invents Act, which went into effect on March 16th. Two people on the panel were from the USPTO. They spoke to the new procedures and requirements surrounding the new act, and also about the AIA training and resources available for both new and seasoned patent examiners.

The other presenters were from law firms and a tech transfer office. They spoke about how the new act is changing the way patent applications are being written and prosecuted and took questions from the audience.

I also attended an interactive session on “Negotiating the Basics.” In this session, we broke out into groups in which half the took the side of the university and the other half played the role of the industry. Each side then had to go through the terms of negotiation on the technology for the Horseless Carriage from their perspective. The terms that were considered were scope, term, joint development, reps and warranties, consideration (payments), improvements, and enforcement of patent rights.

My half of the group represented the company side of the negotiation (although all the members of the group work for tech transfer departments). Panel representatives from a university tech transfer office and from a large biotech company then talked through each of the terms of negotiation from their viewpoint. It was interesting to see how each side ranked the terms’ importance and which areas were more contentious (consideration and reps and warranties for instance).

Tomorrow’s agenda: licensing opportunities from non-traditional sources, and trends and strategies for working with academia from the industry leader perspective.