October 12, 2010 –
Patel: File your Record of Invention form with OTA.
“Protecting IP” was the focus of the debut lecture last Friday in the CALIT2 TechPortal Entrepreneur Series. The series, co-sponsored by UCI Extension, OCTANe@UCI and the Office of Technology Alliances, is directed at researchers interested in launching new businesses or licensing their technology.
Friday’s presentation, featuring Megha Patel, OTA senior licensing officer, and Steven Nataupsky, managing partner at intellectual property law firm Knobbe Martens, Olson and Bear, was introduced by Matthew Jenusaitis, OCTANe president and CEO.
Jenusaitis told the crowd that crisis often leads to opportunity. “I don’t know if anybody’s heard, but there’s a little bit of a budget crisis in the state of California,” he said, to audience laughter. “As state budgets are cut, the university has been very open to licensing technology and has a strong desire to create entrepreneurial startups that are based on university technology.
“We can thank Arnold Schwarzenegger for the budget crisis but the trickle-down effect is that it’s really started to foster this growth of innovation.
Patel explained the technology-transfer process and the importance of protecting intellectual property by involving OTA early on. The process begins with the lead inventor filing a Record-of-Invention form, which includes relevant dates that can establish a timeline for the invention. The form also asks for proposed uses of the invention and if the inventor knows of any companies that might be interested in licensing the product.
Once the form is completed, OTA determines whether the potential product is patentable and commercially viable. A provisional patent may be filed, giving OTA a year in which to seek potential licensing sponsorship. If no companies are interested in licensing the invention, it is typically discarded, Patel said.
Nataupsky: Be sure to get OTA involved at a very early stage.
The ROI is critical, she added, because it provides an official record of the invention, serves as the basis for a patentability review and can serve as the foundation for a non-confidential disclosure sent to potential licensees. Patel also urged entrepreneurs to contact OTA before publishing to protect their rights.
Nataupsky told the would-be entrepreneurs that the rapid pace of technology development has created a unique opportunity for new inventions. “We’re at a time in history that is incredible,” he said. “It makes the industrial revolution look like a high-school science fair.”
He echoed Patel’s message about the importance of the ROI form. “One of the things you have to do to get a patent is show your invention is not obvious to someone of ordinary skill in your field,” he said. Even if you think your invention is not special, even if it’s something you came up with overnight, turn that into an ROI,” he advised, “because often times it may be patentable.”
Adding that the U.S. patent office has issued about 9 million patents to date and the rate of issue has skyrocketed over the past 5-10 years, Nataupsky said, “Clearly if everything were obvious there wouldn’t be anywhere near 9 million patents. Be sure to get OTA involved at a very early stage [in your invention]; that’s important.””
