A 2013 Brookings Institute study showed that most universities aren’t benefitting much from their patents and licensing. The situation is much the same today. Most universities fail to turn their research into a significant source of income through industrial licensing. According to Leopold Demiddeleer, part of this is due to patenting mistakes.
University startups tend to be based around licensed patents, and any corporation hoping to buy rights to an invention or discovery will need that invention to be properly patented and licensed. The three criteria for obtaining a patent are usefulness, novelty, and nonobviousness, but making a patent commercially viable goes beyond these basic criteria.
Universities tend to produce ideas and discoveries, but commercially viable patents document actual inventions. In fact, inventors are encouraged to produce a prototype of their invention before patenting. Combined that with the fact that universities in the US have a year after publishing to apply for a patent – and even less in other countries – these needs become difficult to reconcile.
Universities need to patent early with an emphasis on tangible plans for inventions that companies would want to develop. Researchers, on the other hand, feel the pressure to publish quickly and often, with an emphasis on producing ideas.
To be commercially viable, the two must bridge the gap. And that’s just the beginning. For a patent to be viable, it needs to be developable, marketable, and written with an eye to enforcement. Patents aren’t guarantees of the rights to use an invention, but instead prevent others from doing so without your permission. This means making patents as broad as possible is necessary.
Researchers and university patent offices must make their patents as broad as possible – while still being precise – to prevent others from working around the idea and competing with any company who chooses to use their work. This means articulating 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 startup or corporation might do with the university’s discoveries so that, when those businesses invest in them, they don’t immediately face competition.
Of course, you should do patent searches for anything you’re patenting to ensure yours won’t be rejected for infringing on others’ work.
Writing patents with industrial licensing needs in mind can help you more effectively capitalize on your university’s innovations.