Ophthalmic Innovator

Innovating in an Ivory Tower

Commercializing an invention in a university environment poses unique challenges.

Carl Awh, MD, Michael Korenfeld, MD, Kevin Rollins, JD, Gregg Scheller

Academic institutions are great places for innovation. Many universities have technology transfer programs designed to facilitate intellectual property protection and licensing of technology within their walls.

However, commercializing an invention in a college or university environment can be uniquely challenging, and many technology transfer programs are relative newcomers to the commercialization process. So a physician inventor in a university environment must understand the technology transfer system and how to work within it.

A University’s Policies

Every inventor in an academic environment should be familiar with his or her institution’s intellectual property policies. These policies contain important information such as the types of inventions the university regards as its property, schedules for distribution of royalties to inventors, and the processes required to submit an invention disclosure to a university technology transfer organization.

The substance of an intellectual property policy varies significantly by individual institution. For example, some universities pledge to distribute as much as one-third of all licensing revenue from a university invention to the inventors while other universities do not distribute any to the inventors.

Inventions Outside the University

University intellectual property policies may even reach beyond the scope of a pure academic environment. Some broadly claim ownership of technologies arguably developed outside the university. These broad ownership claims may encompass inventions conceived on any university property, inventions prototyped using university facilities, or inventions developed from research partially financed with university funds.

Whenever possible, an inventor should review an institution’s intellectual property policies before deciding to join the institution.

Universities do not claim ownership of inventions conceived before the inventor works there. One way an inventor can establish ownership of pre-university inventions is to submit a list of them to the university and request an acknowledgement they were invented beforehand.

Pre-employment negotiations are probably the best time for the inventor to request a personal exemption from some terms of a university’s intellectual property policy. However, some universities, particularly public ones, may be unable to negotiate individual exemptions.

The Technology Transfer Process

The technology transfer process typically begins with an invention disclosure, which the inventor usually prepares. This disclosure includes a summary of the invention, its commercial applications and a list of relevant publications. The inventor typically submits this disclosure to a technology transfer office that reviews and evaluates it.

The evaluation process usually involves an estimate of the commercial value of the disclosed technology. Importantly, a physician inventor in a university environment should understand three factors about invention disclosure:

• It will be reviewed against other invention disclosures.

• Only a small number of the invention disclosures submitted may be selected for commercialization and patent protection.

• The invention disclosure evaluation may be the only element considered in the selection process.

Selection for Commercialization

If the technology transfer office selects an invention disclosure for commercialization, then it usually coordinates with outside legal counsel for filing the patent applications. Preparing the application may not even include the inventors unless they request otherwise.

Accordingly, inventors in a university environment should check on the status of a submitted invention disclosure frequently and communicate their desire to be involved in the patent process.

After it files the patent application, the technology transfer office typically lists the technology in a public database of university technologies available for licensing. In many cases, such a listing may be the only thing the technology transfer office does to facilitate its commercialization. In other words, an inventor should not rely solely on the technology transfer office to attract third-party interest in commercializing a new technology. Rather, an inventor should use any available resources to do so.

The Inventor’s Role in Technology Transfer

It is especially important for an inventor to have an active role in the technology transfer process in a university environment. An actively involved inventor increases the chances that an invention disclosure moves onto successful commercialization.

Factors that increase the likelihood a technology transfer office will select a particular technology as a commercialization candidate include a sizable market potential, some indication that the technology is patentable, and an expressed interest from a third-party or the inventors themselves in licensing the technology.

As an inventor solicits interest in a technology, he should only disclose confidential information when a third-party commercialization candidate has signed a non-disclosure agreement.

If the university passes up selecting a technology for commercialization, then it may be willing to allow the inventors to pursue patent applications and commercialization of the technology at their own expense. Inventors increase the likelihood of successful commercialization by offering to assist a potential licensee in product development and actively soliciting commercialization partners. OM

Additional guidance and information for inventors in a university environment is available at: http://www.katalystsurgical.com/oin/university_inventor.pdf

From top: Gregg Scheller is an engineer/inventor with 90 patentable inventions. He has been in ophthalmology for 30 years and started four medical-device companies. He holds significant financial interest in Katalyst Surgical. His e-mail is gs@katalystsurgical.com. Carl C. Awh, MD, is a retina specialist with Tennessee Retina PC in Nashville, Tenn. He is a consultant to Bausch + Lomb, Katalyst Surgical, Notal Vision, Synergetics and Volk. His e-mail is carlawh@gmail.com. Michael Korenfeld, MD, is in private practice with Comprehensive Eye Care Ltd., of Washington, Mo. He is a consultant to Bausch + Lomb, Katalyst Surgical, and Volk. His e-mail is michaelkorenfeld@hotmail.com. Kevin P. Rollins, JD, is a patent attorney who has represented clients ranging from independent physician inventors to Fortune 500 Companies.