Nanotechnology Patenting Issues

Today I would like to present an interview that I did with nine leading university patent officials.

RR: What key points would you emphasize to the business community regarding the technology transfer process?

Charles F. Rancourt, Director, Office of Technology Commercialization, Rensselaer Polytechnic Institute: If you look at the process of Technology Transfer, what really helps in terms of building the relationship with a potential business partner is a good exchange of information between the parties; whether it be about the technology or about the market space the business partner is looking at. So from our standpoint a really important point here associated with this process is a good exchange, which needs to be ongoing throughout the relationship of information about the technology and the market place.

RR: What advice would you give a business wanting license your patents?

Oren Livne, Patent Manager, University of California, Santa Barbara: Talk to us. If we are able to understand what a company's needs are, we can often find university researchers or technologies in that area. If a company already has a specific patent of interest, we can work with them to get the license they need in a way that meets the sometimes complex policy guidelines of a public university.

RR: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

James A. Poulos III, Executive Director of the Office of Technology Commercialization, University of Maryland: The large company two step; a company obtaining an exclusive position and sitting on the rights.; a lack of follow-on funding. As suggested above, a University technology is an early stage technology. A professor may have developed the algorithms for routing a packet of information securely over the Internet but no black box has been developed to show that to industry. And generally there is no funding and often times a lack of desire to develop such a prototype. It is very hard to license such technology when all you can show is the math and not a device cranking out the result.

RR: If you could, would you change anything about the patent process?

Troy Coyle, Manager of Innovation and Commercial Development (Engineering, Science and Law) Office of Technology Commercialization, University of Wollongong: There are numerous things I would like to change but if limited to one change, I would like international harmonisation of patent laws. It is very difficult to develop a comprehensive IP Protection Strategy when the rules vary between jurisdictions. For example, first to invent vs first to file issues, assumption of joint tenancy vs assumption of tenancy in common, grace period vs no grace period etc.

RR: Prior to working with a business to develop a new technology, what questions must you answer? Patent rights? Mutually defined (and agreed upon) definitions of success? Critical path to success? Stock distribution? Funding opportunities? Other?

Neil Iscoe, Director, Office of Technology Commercialization, for The University of Texas at Austin: When working with potential licensees, we discuss their commercialization plans and the resources that have available to achieve those goals. When working with a NewCo, we look at their business plan, their management team and the anticipated financing. With an established company, we look at their commercialization plans, their past successes, and their corporate goals and resource allocation.

RR: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

William J. Decker, Assistant Director, Physical Science Licensing in the Technology Transfer and Intellectual Property Services (TechTIPS) office of the University of California, San Diego: There is a big gap between proving a concept and having three working, commercial-grade prototypes of a possible product (or having human data, if you are in the biomedical arena). University researchers are often only interested in proving a concept, publishing, and moving on to the next concept. Our inventions are usually at this very early stage. But having a tangible prototype of a product means a great deal in creating more value for a business interested in commercializing that particular technology, both in advancing the technology and the value of the technology at the time of licensing. Overcoming this hurdle - the gap between proof-of-concept and three working prototypes (or human data, if you are in the biomedical arena) - is key.


Read the entire interview, here:
http://www.nanotech-now.com/products/nanonewsnow/issues/031/031.htm#main