Invention Disclosure Analysis / Triage

Overview

Decision making Components of an invention disclosure Review process Qualitative factors – art vs. science Tools / frameworks

Decisions, decisions

The simplified process Patent vs. punt

A more mature tech transfer process involves technology development Address key questions investigators need to

answer before we can patent and/or license Identify key projects that will create value

inflection points for promising technologies Locate financing / management to further develop

technology

Components of a new disclosure

Named inventors Invention title Description Patentability bars

Disclosure Offer for sale

Funding

Review process

Review process Ownership / rights assessment – Do we own it? Commercial feasibility – Will people buy it? Patentability – Can we protect it? Technical feasibility – Does it work? Legal constraints

Ownership / rights assessment

Factors driving ownership People - Who did the work? Financing – Who paid for

the development of the technology?

Location - Where was the work done?

Were proprietary tools used? Biomaterials (MTA’s) Code

Funding source ImplicationsUniv. of Colorado No strings

Federal government Bayh-dole restrictions apply

Foundations / Associations

Typically no licensing restrictions but royalty kick-back sometimes required

Industry sponsored research

Low probability of ownership; careful analysis of SRA and/or consulting agreements

Patentability Will inventors own disclosure, sale or use bar patentability? To what extent has the invention already been described? (i.e. is

it novel) Patents Literature

Obviousness - TSM test, an invention is obvious (and therefore unpatentable) only if there is a teaching, suggestion or motivation to combine prior art references. 

Incremental improvement vs. disruptive technology? Anticipated scope of claims Blocking patent vs. an asset to induce investment

Commercial feasibility Opportunity or need

Market potential Growing vs. declining markets Market structure What is the problem being solved?

What is the product and what the applications? Target market Unique benefits / value proposition Competitive analysis Risks Does the added value exceed the cost of development? Who are the target licensing partners? How many degrees of

freedom are there?

Technical Feasibility

Stage of development Conception Reduction to practice

What data exists that demonstrates it works? Estimated time and money expended? Expertise, resources (funds) available for

further development?

Other Legal Constraints

• Regulatory path• Policy• Reimbursement

Art vs. Science – qualitative drivers

Inventor motivation Commitment to technology (focus) Inventor reputability Interest in the market space Politics

Assessment tools

Tech assess Case summary template

Resources

Resource Use LocationMicropatent, Lexis-Nexis Patent search Paid databases – see licensing

manager for access

Pubmed, BLAST, Genbank Search scientific journals, genetic sequences

http://www.ncbi.nlm.nih.gov/

Frost & Sullivan Market research reports for IT and healthcare

CU business school web site)

CRISP Search NIH grants http://crisp.cit.nih.gov/crisp/crisp_query.generate_screen