Invention Disclosure Analysis / Triage. Overview Decision making Components of an invention...
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Transcript of Invention Disclosure Analysis / Triage. Overview Decision making Components of an invention...
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