Established in 1965, the Licensing Executives Society (U.S.A. and Canada), Inc. (LES) is a professional society comprised of over 6,000 members engaged in the transfer, use, development, manufacture and marketing of intellectual property.

The LES membership includes a wide range of professionals, including business executives, lawyers, licensing consultants, engineers, academicians, scientists and government officials. Many large corporations, professional firms, and universities comprise the Society's membership.

Licensing Executives Society (U.S.A. and Canada), Inc. is a member society of the Licensing Executives Society International, Inc. (LESI), with a worldwide membership of over 12,000 members in 30 national societies, representing over 80 countries.

This year, the annual meeting of the Licensing Executives Society (U.S.A. and Canada) is in San Francisco from October 18h to the 22nd.

I will be attending LES in San Francisco next week from Monday through Thursday morning. I am planning to meet with various companies and tech transfer professionals to discuss their intellectual property strategies.

For organizations, I am trying to get a better sense of their current intellectual property management processes and discuss potential areas of improvement. Since IP.com focuses on best practices for innovation management, I am trying to identify if our search services or configurable workflow solutions would be beneficial to specific organizations.

For tech transfer professionals much of their focus is on improving early-stage marketability analysis, increasing exposure of their portfolio of available technologies, and successfully securing licensing engagements. IP.com has robust IP tools and services to assist with these initiatives – my ultimate objective is to determine if there is sufficient interest to continue discussions and demonstrate some of our capabilities and see how we can help.

If you'd like to meetup when we're at LES in San Francisco next week, just send an email to mdidas at ip.com with your contact information and we'll arrange to get together. There's going to be hundreds, maybe thousands, of members attending this year's annual meeting, which will be both interesting and challenging to make the right connections. Hope to see you there!

• Email This
• Print
• Comments
• Trackbacks

Technology Transfer and patent licensing by universities has come a long way in the forty years since IP Hall of Fame inductee Niels Reimers first established the Office of Technology Licensing (OTL) at Stanford.

Since then, many academic institutions and laboratories have established some form of Technology Transfer Office, or TTO, as they're generally called, or have designated someone to manage the marketing and licensing of technology invented at the university. There's even a specialty publication dedicated to providing the latest information and best practices, titled Technology Transfer Tactics.

Technology Transfer Tactics is independent and unbiased. It is not affiliated with any organization, government agency, or foundation, or with any vendor or supplier. It is entirely funded by subscription revenue, and accepts no advertising.

For the current issue of the Technology Transfer Tactics monthly newsletter, Cameron J. McCoy of the University of Oklahoma was interviewed about their Intellectual Property Management Office (IPMO), which we've also written about here on our corporate weblog, in connection with the implementation there of IP.com's InnovationQ workflow management software.

You can read the article here and, if you're interested in the latest tactics for technology transfer and licensing, you might want to subscribe to the newsletter of Technology Transfer Tactics.

In addition to the article about the University of Oklahoma's IPMO, the June 2009 Issue of Technology Transfer Tactics has interesting pieces with these headlines:

• TTOs take part in mad scramble for research dollars.
• Examine COI policies as big pharmas take bigger stake in early-stage research.
• Model for patent protection at Virginia Tech speeds up commercialization process, but challenges remain.
  
• TTO uses technology to target IP management/marketing gains.
• ‘Trolls’ have a thing or two to teach TTOs about patent protection.
• Florida start-ups to double with integrated statewide program.

 Click here to subscribe to the Technology Transfer Tactics monthly newsletter

Each issue targets specific challenges in recognizing, protecting, and “marketing” potentially valuable research results, moving the discovery from the sheltered world of the laboratory to successful wide utilization, funding these challenges, and ensuring proper division of recognition and resultant monies. Our editors and writers report expert advice, successful case histories, legal perspectives, and other information that will enable hurdles to be surmounted efficiently and with prudent use of limited resources.

Here's a link to the current issue of Technology Transfer Tactics.

• Email This
• Print
• Comments
• Trackbacks

The University of Oklahoma's Intellectual Property Management Office is in the business of developing relationships with researchers and providing to them the benefits of commercialization of their projects. The IPMO focuses on getting value from the technology that is developed at OU which, in turn, increases the university’s research, and creates new companies or finds companies that can benefit from that technology, all of which contributes directly to the intellectual, economic, social and cultural vitality of the state and the nation.

Yesterday, IP.com and the University of Oklahoma announced the launch of the InnovationQ Technology Transfer Workflow application for the University of Oklahoma's Intellectual Property Management Office. The system was designed to improve decision-making, secure IP records, and enhance the marketing of university intellectual property to prospective licensees.

"The chief goal was to improve the ability of the University of Oklahoma to identify, secure, and market the incredible research that occurs on their campuses," says Tom Petrocelli, IP.com's SVP for Enterprise Software. "Not only will the University of Oklahoma's IPMO be able to make better decisions about their ground-breaking research, they will be able to more effectively discover and attract licensees for those ideas."

InnovationQ helps companies to legally safeguard their intellectual property, derive more value from ideas, and speed the monetization of innovation. With streamlined processes, collaboration tools, and a secure system for managing innovation, InnovationQ effectively protects and enhances intellectual property from its conception.

"IP.com is designed to capture innovation at a very early stage and automate common but tedious IP related processes," says Colin FitzSimons, Associate VP for Technology Development and the Executive Director of the Intellectual Property Management Office at the University of Oklahoma.

InnovationQ offers the flexibility to integrate with existing software systems and corporate LDAP directories. This simplifies the process of assigning user and group roles within the system and accessing existing records, ultimately increasing compliance. Researchers and faculty are more likely to submit inventions -- as they can continually track the progress and status of each disclosure. It creates transparency between researchers and the IPMO.

"InnovationQ provides us with a suite of IP marketing tools," says Cameron McCoy, Director of Technology Marketing for the Intellectual Property Management Office at the University of Oklahoma. "We are collaborating with IP.com to create a unique innovation dashboard for technology managers to view reports, assess activities, and take action on their technologies and non-confidential summaries. It provides a platform for us to showcase our licensable content through a custom technology marketing portal -- providing OU with new commercialization opportunities."

InnovationQ delivers web-based, onsite intellectual property management solutions including invention disclosure review, patent analysis to assess acquisitions and divestitures, publication clearance, and R&D collaboration. IP.com configures these user modules to customer specifications yielding an application that is unique to customers.

• Email This
• Print
• Comments
• Trackbacks

We're at the Bio-IT World Conference & Expo at the World Trade Center in Boston showing off the latest version of InnovationQ. This release, version 3.1, adds several major new features to the InnovationQ platform.



InnovationQ helps companies safeguard their intellectual property, derive more value from ideas, and speed the monetization of innovation. With streamlined processes and a secure system for managing innovation, InnovationQ effectively protects and enhances intellectual property from its earliest stages.

Version 3.1 incorporates collaborative features within the InnovationQ platform. With InnovationQ, users can now efficiently communicate as a team in an environment that secures their ideas as intellectual property. Combined with the workflow engine and document management capabilities, InnovationQ delivers full-featured innovation and intellectual property management solutions.

Next month, we'll be at the PharmaBiotech IP Summit in Philadelphia.

See what's happening here at IP.com in the weeks and months ahead, and where you'll be able to meet up with us between now and the Bio International Convention in San Diego in June.

• Email This
• Print
• Comments
• Trackbacks

"The day academia & industrialists can smoothly inter-connect, inter-operate & forge alliances of equals, will be the beginning of an era of smooth, continuous innovation." - Desmond Aubery

That's a perceptive observation pulled from the comments to a great article "Innovation and the University-Industry Interface" republished on Xconomy, which begins with this thought:

The buzzword of the 1980s and ’90s was “entrepreneurship.” This decade, the obsession is with “innovation” as the presumed path to riches for people and nations. Since the key generators of innovation are research universities and the key implementers of innovation are companies, there is an ever-increasing focus on making the university and industry interface more effective. But will the twain meet? It could be very difficult.

I thought the article was well worth reading again and, as I'm preparing to head off  to "Changing Horizons", the 2008 Annual Meeting of the Association of University Technology Managers (AUTM), the following quote from the article caught my attention:

Academic institutions have huge reputations and visibility, but a very small or dedicated core staff. For instance, MIT is huge in reach, breadth, impact, and reputation. Yet its core faculty has hovered around 900 since 1950. Contrast this with IBM at some 350,000 employees.

IP.com works with major companies, helping businesses manage innovation, and recently we've been talking with technology managers at universities about leveraging our innovation management applications and technologies to create a customized interface between academia and big business. As noted in the New York Times:

The obsession with marrying research and markets, while generally a strength of American capitalism, leaves some needs unmet. To fill them, “companies need boots on the ground at universities,” says Henry Chesbrough, a business professor who studies innovation at the University of California, Berkeley.

We're really looking forward to meeting with the intellectual property professionals at  AUTM, a nonprofit professional association with membership of more than 3,600 intellectual property managers and business executives from 45 countries.  This looks like an especially interesting part of the conference program:

Innovation Showcases: academic and government technology transfer offices, along with university-based startup companies, present the latest and greatest technologies in life sciences and physical sciences to affiliate members in these rapid-fire, business-oriented sessions. The Showcase will be followed by AUTM's new "Getting Down to Business" Social Hour, a reception for academics, company representatives, investors and other service providers an opportunity to get to know each other in a relaxed social setting.

Who knows what new technology developed at universities will be showcased? I wonder if there will be anyone from the University of Michigan to talk about the new Hercules laser announced this week. Wow!

If you're planning on attending the annual meeting of the Association of University Technology Managers in San Diego from February 28th to March 1st and would like to get together and chat about what we can do to bridge the technology transfer gap between universities and corporations, please give me a call or email and we'll set something up. Perhaps we can connect you with the people at our corporate clients that share the vision for an innovative university-industry interface.

• Email This
• Print
• Comments
• Trackbacks

PubMed Central (PMC) is a free digital archive of biomedical and life sciences journal literature at the U.S. National Institutes of Health (NIH), developed and managed by NIH's National Center for Biotechnology Information (NCBI) in the National Library of Medicine (NLM).

Recently, on the Patent Information Users Group discussion list, we picked up an email conversation among registered users of the PIUG that raised questions and concerns that re-publication on PubMed Central, while a valuable additional source for online access to information that might be evidence of prior art, does not help establish with any authority the "publication date" or the "public availability date" of the information published in participating journals. As one industry specialist observed:

Websites are notorious for not posting availability dates or publication dates, or for posting dates that later get revised with reloads. Just as masters theses are often problematic prior art documents, not just from a retrieval perspective, but from proof of publication or public availability dates. Universities vary widely in their treatment of their own Masters theses. Some are accessioned like standard publications, get date stamped, cataloged normally,etc., but others merely sit on special collection shelves with no way to prove public availability until someone checks them out!

It is certainly difficult, if not impossible, to verify publication dates of online content. That is why many companies and individuals publish their documents not only in a specific trade journal, but also in secure online environments such as the IP.com Prior Art Database to provide a non-refereed destination for technical disclosures and other documents which need verifiable dates of publication.

If participants in this discussion on the PIUG discussion list and other readers here would like to share thoughts and experiences verifying dates of publication of online documents, we'd be very interested in your comments.

• Email This
• Print
• Comments
• Trackbacks

Publishing a technical disclosure to the IP.com Prior Art Database is straightforward and easy. The following paragraphs contain certain elements that you are likely to find useful as you begin to use the system, but for complete instructions and online demonstrations for both publishing and searching, please visit our Prior Art Database at http://www.ip.com/pad Use of the publishing site requires registration with IP.com and the purchase of publication vouchers. Whereas vouchers may be purchased online using a credit card, most companies choose either to buy vouchers in bulk or to be billed monthly. Individual registration is easily accomplished online.

Companies which prefer to set up corporate accounts that share a pool of vouchers can contact an IP.com representative at 1-585-427-8180. Limited free searching of the Prior Art Database is available. Full access and robust searching such as patent examiners enjoy, including unlimited downloading of documents, is available for an annual fee. Our search facility allows for full text, concept or fielded Boolean searches.

Content of a technical disclosure

Submission of your technical disclosure for publication via the IP.com website is accomplished by a simple series of steps, each of which has instructions and links to get further information if necessary. The most significant element that is required by the disclosure submission process is the primary document - the document containing the technical disclosure itself. Your primary document should contain the full text and, optionally, any graphics associated with your disclosure. Many standard formats are accepted, including Microsoft Word® (DOC), Microsoft PowerPoint® (PPT), PDF, HTML, Rich Text Format (RTF), and clear text (ASCII) files.

If you so choose, you can put supporting materials into the attachment - a secondary file that may be uploaded during the submission process. Files of arbitrary format are accepted as the attachment, allowing you to publish output from CAD programs, graphics programs, or virtually any other program that you use. It is possible to publish a disclosure with multiple attachments by bundling the attachments using various technologies. If you use a ZIP utility for bundling, the disclosure publishing process will optionally unpack the ZIP file into individual attachments.

Solving Business Problems and Managing Risk with Technical Disclosures Continue Reading...

• Email This
• Print
• Comments
• Trackbacks

There are a number of key issues with which disclosure writers should be familiar. Technical disclosures as a publication vehicle have several unique characteristics that you can leverage. In addition, the various purposes for and methods of use of technical disclosures can alter the content in the disclosure or the way disclosures are written.

Flexible, controllable technical disclosures

Anonymity - Published technical disclosures have several unique advantages relative to other publications. For example, unlike conventional publications, disclosures can be published anonymously, allowing an author to safely disclose information that might otherwise be useful to a competitor's intelligence function or that could be offensive to a business partner. Clearly, certain instances of the customer/supplier control tactics might be quite problematic if your publication could be linked back to you.

Speed - Another advantage of the published technical disclosure is that it can be published extremely rapidly (relative to peer review publications). In fact, technical disclosures can be published in minutes, as opposed to weeks or months. Every day counts in matters pertaining to publication of inventions and patentable technology, since the outcome of patent prosecution and interference actions often depends on differences of days or weeks.

Format Flexibility - Even the formats of published technical disclosures can vary significantly, depending on the particular goals of the author and the complexity of the disclosed technology. The length of disclosures ranges widely, and many can be found that are less than a page long although some are many pages. A typical disclosure is one or two pages in length and often contains nothing other than a title, an abstract, and a description of the invention, although it may also contain graphs, chemical structures, process charts, citations, tables of data, etc.

Content Control - Finally, since they are not subjected to peer or editorial review, the author has full control in determining the content. This should be used to your advantage in your writing. For example, you can choose which pieces of an invention to disclose and which to keep secret. Or you can provide market information regarding the potential value of the invention if your purpose is to advertise your pending patent. You can choose your context and citations based on how you want readers to think about your technology, or you can suggest wide ranges of applications. It all depends on your goals in writing the disclosure, as the next section describes. Continue Reading...

• Email This
• Print
• Comments
• Trackbacks

It should be obvious by now that technical disclosures are something you need to start utilizing. But where do you begin? With so many possible approaches, coupled with your limited resources, it may seem to be a daunting task. You need to consider which tactic(s) will provide you with the greatest value for the least effort.

Check off the easy tactics

If you've never utilized technical disclosures before, it's clear that you'll need to make some changes in order to integrate these new methodologies into your existing processes. This doesn't, however, mean that it will take a long time to start utilizing the power of technical disclosures. Luckily, there are some tactics that are easy to implement, require little or no additional processes, and yet provide substantial benefits for very little cost. These are ideal situations in which to apply the power of technical disclosures immediately.

Information that is already in the public domain (albeit in an obscure publication) is an excellent place to let technical disclosures start to work. Re-publishing existing materials with the express intent of making them more accessible to examiners can help ensure that bad patents do not issue on disclosed information. The act of publishing this information requires no strategic consideration on your part, as there is no question of the suitability of any particular innovation for public release. Typical items that should be published, or more accurately, re-published in this manner, are:

• conference proceedings
• product information
• product manuals
• marketing literature
• advertisements
• journal articles
• obscure prior art relevant to your IP domain
• rejected patent applications (with reasons for rejection)

All these should be disclosed as they become available. In addition, recent instances of these documents are likely to be easily located and published. For many companies, even older documents can be located and disclosed for the protection they afford. Continue Reading...

• Email This
• Print
• Comments
• Trackbacks

Technical disclosures originating at the invention review stage

For our purposes, the invention review process represents an organization's work process for assessing what should be done with new inventions and defining the scope of any patent application. It is typical for an IP management team (with input from appropriate R&D, business, and legal management) to handle this work process. It is in this domain that a clear understanding of the power of technical disclosure can save hundreds of thousands (or even millions) of dollars in fees associated with patenting technology that you might eventually discover is of marginal or no value. Retain your right to use your non-patented innovation At the time of invention review, you have some tough choices to make. The prohibitive cost of obtaining patents will force you into separating innovation between those which are deemed to be critical to your business and those which are not. Resources are limited - you have to make sure you fight the right fight!

Nevertheless, you have to be careful. Although the innovation you don't patent is deemed non-critical to the operation of your business, it doesn't mean that it wouldn't cause inconvenience and expense if you were prevented from using these inventions due to a competitor's patent. If a competitor obtains a patent on an innovation you failed to patent, you have three options. You can try to invalidate the patent, which will lead to a costly trial (in terms of both time and money). You can continue to use the innovation (and pay licensing fees). Or, you can devote time and money into developing ways to work around the patent.

The far simpler and more cost effective way is to prevent a competitor from obtaining a patent in the first place. At the time of your invention review, release your non-critical innovations to the public via a technical disclosure. This will establish your innovation as public domain, and prevent others from obtaining patents that can block your use.

When trying to decided whether to patent or publish, there is one highly effective question that can help you decide which is the better course: "If someone were to infringe this patent, would it be worth my while to defend my patent rights in court?" Certainly, it is unwise to spend more in litigation than you could hope to gain in judgments, royalties, and licensing fees from an infringer. And if your patent is not worth the millions you would spend defending it, is it worth the tens of thousands you would spend to acquire and maintain it in the first place? These questions are worth asking, since for a small fraction of these costs you can protect your freedom to practice your invention by publishing a technical disclosure. Continue Reading...

• Email This
• Print
• Comments
• Trackbacks