Evaluating the ROI of a patent application

There is a great thread on Core77 on patents, protection of design concepts and IP issues that is chock full of great information – and here’s my humble contribution to the conversation, reblogged,

after my mba, I spent a year as a fellow at the
office of technology transfer at the university of pittsburgh, plowing
through invention disclosures from students, research associates and
faculty in order to make recommendations to the council which would
then decide which disclosures were:

1.  patent worthy [$$
investment plus time as discussed by many above] and in this category
which were patent worth immediately and which could be protected using
a far cheaper [under $500**] system of filing an intent to patent which
gave you a year to decide to file while communicating your intent to
patent and protecting your invention. [as per US law of first to
invent]

2. the decision making criteria
used were – estimated market potential for commercialization of the
"novel invention" through such means as licensing, start ups, royalties
etc under the Bayh Dole act

2.1 the answers to "does this have commercial value for us" and "does
it make sense for the university to invest $$ in patenting this" were
based on secondary research by the resident interns online where the
format included questions such as :

2.1.1 – were there firms that use similar or complementary
technology or whatever that could be potential licensees that would
make something commercially applicable

2.2.2. was there even any use of this new invention/tech in the
first place? the example that comes to my mind was the guy who
submitted a system for threading a radio antenna through a live mouse
without hurting it. er..yeah, and how does the Uni make back the $$
they spent on patenting it plus why on earth would anyone want to steal
your idea?

2.2.3 the market analysis of potential for commercial applications
– as with any novel disclosure or technology, while there might not be
firms in the field already [example, rfid advances had an entire
industry] but could there be firms in the general field who might
license [example, a holographic projection of the ultra sound image in
real time on the anatomical location could help a mfr such as siemens
or ge improve their existing tech/machinery]

Based on these recommendation/research findings, the decision would then be taken to file.

For details of university practice and ownership, particularly for students, this is a good place to start your research:

http://www.autm.net/aboutTT/index.cfm

Also, here are some more useful links:

http://www.autm.net/aboutTT/aboutTT_bayhDoleAct.cfm

bayh dole act

http://www.autm.net/aboutTT/aboutTT_links.cfm

global links to patenting info, innovation, associatons

http://www.autm.net/aboutTT/aboutTT_techTrans.cfm

links to legal info on trademarks, copyrights and patents

http://www.autm.net/aboutTT/aboutTT_policies.cfm

sample policies and agreements

** this was just over five years ago, so here’s my official disclaimer as to the legal validity of any of this, please consult a lawyer.

Advertisements
This entry was posted in Business, Design, Strategy. Bookmark the permalink.