Patenting for Industrial Licenses and Higher ROI

2013 Brookings Institute study showed that most universities aren’t benefitting financially from their patents and licensing – and the situation hasn’t really improved today. According to Leopold Demiddeleer, our resident tech scout, many universities are not able to turn their research into significant sources of income through industrial licensing. He says that sometimes when his team found a technology interesting enough to warrant a deep-dive, “we’d really like the research, but weren’t satisfied with the published IP – say, because the patent wasn’t written to protect what we needed – it happens a lot. Even with a smart and successful TTO associate guiding the process, patent applications can easily get written ‘academically’ and not meet industrial licensee needs.”

Any corporation hoping to buy the license to an invention or discovery, whether held by a university spin-out or the university TTO, will need that invention to be properly patented and licensed. The 4 criteria for an invention to be patentable, is that is must be (1) comprised of patent-eligible subject matter; (2) useful; (3) novel; (4) non-obvious – but making a patent commercially viable goes beyond these basic criteria.

Many researchers, however, feel the pressure to publish quickly and often, with an emphasis on producing ideas rather than commercially viable products and services. But, for a patent to be viable, it needs to be developable and marketable. Researchers and university patent offices must balance a focus on commercial viability and market needs with an emphasis on an invention’s novelty to prevent others from working around the idea and competing with any company that chooses to use their work. 

So what does this mean in practical terms? It means that when you are filing your patent, you should articulate alternative inventions and features, figuring out how others might work around the patent, and patenting those inventions, too. The goal is to anticipate and protect anything a corporate partner might do with the discovery so that, when those businesses invest in you, you don’t immediately face competition. Remember, patents aren’t guarantees of the rights to use an invention, but instead, prevent others from doing so without permission. 

Writing patents with industrial licensing needs in mind can help you more effectively capitalize on your innovation, which can benefit you (the inventor), your company, and your university! Are you a scientist-entrepreneur who’s spun your research into a startup? Check out our previous post on what you need to know about licensing university patents as a startup!


en_USEnglish ja日本語