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University IP offices protect key innovations

January 9, 2019

At major universities, research is king.

Whether it’s a professor working to get a paper published, a scientist doing research in a lab or a web developer creating software, research universities produce seemingly never-ending innovations and inventions. Often the goal is for researchers and their sponsors to turn their work into a marketable product, but how can that be accomplished?

Today, the answer often lies in university technology and commercialization offices. These offices are generally staffed with intellectual property attorneys who work with research faculty to properly protect inventions and ensure the researchers and universities receive their due.

The presence of technology and commercialization offices has become more common in recent years, according to some university IP experts. Aside from ensuring protectable research is claimed under IP laws, the attorneys who work in these offices say their job is to help researchers ensure their work reaches the right people.

“The reality is that even though technology may be published through academic papers or the like, that doesn’t mean it can be commercialized and placed into the hands of people that need it,” said Bobak Jalaie, chief patent counsel and director of IP-legal in Purdue University’s Office of Technology Commercialization.

Clifford Clifford

What is ‘university IP’?

The phrase “university IP” can cover a wide variety of research, IP attorneys say. The traditional perception is the image of a seasoned professor working in a lab, often on technological research, said Jodi Clifford, director of Notre Dame’s Intellectual Property and Entrepreneurship Clinic. From there, the research is published in an academic journal, often with the goal of putting the professor on a tenure track.

Then there are university-developed inventions such as medical devices that fall under the domain of patent law, said Norm Hedges, director of Indiana University Maurer School of Law’s IP Law Clinic. And on the trademark and copyright side, Jalaie said software-related technology is common in the university setting.

Sometimes, entrepreneurial faculty want to turn their research into a business, Clifford said, while others want to put their inventions on the market. Such behavior is encouraged, IP attorneys say, but what is also encouraged is taking their research public in conjunction with university IP counsel.

“There’s a lot of counseling for new businesses, new inventors who haven’t been through this process,” Clifford said. “They come to us with their business and say, ‘What’s protectable? What are my options for doing so? What should I be worried about?’ That sort of thing.”

Same goal, different functions

According to Clifford, there has been a trend over the last five years of major research universities developing IP offices dedicated specifically to protecting and marketing faculty research. At Notre Dame, for example, the university created its IDEA Center about two years ago to assist students and faculty who want to commercialize their research. And Jalaie’s team in Purdue’s Office of Technology Commercialization has added a suite of six in-house attorneys dedicated solely to IP over roughly the last five years.

Similarly in July 2017, Indiana University created the Innovation and Commercialization Office, an offshoot of the IU Research and Technology Corporation. The IURTC still exists, but the Innovation and Commercialization Office is directly affiliated with the university and is there to specifically serve the school’s IP needs.

lyman-beverly-mug Lyman

Each of these offices have the same goal of helping the universities protect and market their research, though each function slightly differently. In the ICO, for example, chief IP counsel Beverly Lyman is tasked with the full gamut of IP protection, from patents and copyrights to helping the school develop IP policy and strategy. As a life sciences professor-turned-IP lawyer, Lyman uses her experience in higher education to inform her IP oversight for all of IU.

From a commercialization perspective, the ICO serves IU in one way by seeking out commercial partners who will use university-related IP rights as a revenue source, said Bill Brizzard, the ICO’s executive director. Similarly, Lyman said IU has partnered with other schools such as Notre Dame to develop best practices for technology commercialization, and she regularly seeks out networking opportunities that will promote the school’s research.

Tech commercialization is the core feature of Notre Dame’s IDEA Center, which provides faculty and students the resources they need to develop their research and turn it into a viable business or product. The center helps would-be entrepreneurs walk through the steps of forming their business and putting their innovation on the market, Clifford said.

Purdue, by nature, is a patent-heavy university, Jalaie said, so the Office of Technology Commercialization is staffed with technical managers who have specialized degrees in different areas of technology, enabling them to effectively communicate with university researchers developing new technological products. But what sets the OTC apart, Jalaie said, is his team of in-house IP attorneys who are solely devoted to patent prosecution and other similar work on behalf of Purdue inventors.

“It’s just a closer collaboration with the inventors,” Jalaie said of his in-house IP team. “We can meet with them on a day’s notice or on a moment’s notice, and we can develop strong relationships with many faculty who are comfortable working with people in our group.”

Why protect?

The increasing presence of university-based IP offices begs an obvious question: why are such offices needed? The short answer, IP attorneys say, is that research can only become profitable if it is properly protected, and some research faculty do not know how to secure that protection on their own.

Once faculty research is published in a journal or through the release of a product, it becomes part of the public domain and loses its protectability if a patent application is not timely filed, Hedges said. That could negatively impact potential revenue sources, he said.

American IP law gives inventors a bit of leeway, allowing them to file for patent protection within one year of taking something public, Clifford said. However, that one-year period is unique to the United States, she said, meaning the invention will likely not be protectable in other countries.

Sometimes the work of the technology and commercialization offices is less about inventions and more about the university itself. For example, Lyman’s job can include ensuring sufficient IP protection is in place for celebrities who visit campus, or overseeing university donations to ensure proper documentation, title and clearance. What’s more, her office is tasked with ensuring the school doesn’t infringe on any existing patents, and vice-versa.

“It affects everything,” Lyman said. “… You never know what’s going to come across the desk.”

Though it may be an involved process, the IP attorneys say it’s important for university researchers to work with the technology and commercialization offices to ensure the developments they devote so much time to can be used to their full potential.

“Having some sort of group that assists to develop and commercialize IP at a university provides that bridge to get the IP into the hands of the people that can benefit from it,” Jalaie said.•

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