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Fully leverage licensing, faculty resources to pick up on potential infringement


By Jesse Schwartz
Published: April 4th, 2018

No TTO relishes the idea of patent litigation, but if a university is losing out on significant revenue due to infringement that could be plowed back into the institution’s research endeavors, there is a good case to be made that the public is losing out as well.

“It is our job and it is our duty to make sure patent rights are protected, so it is something that needs to be monitored; it is something that needs to be taken very seriously; and it is something that is not only about the money,” stresses Dipanjan “DJ” Nag, the associate vice president of technology commercialization at Ohio State University in Columbus. “It is about the recognition that patent rights are valuable. If someone is using our technologies, then they should be giving something back to the university.”

However, defending an institution’s patent rights does not necessarily mean filing a lawsuit. Indeed, most conflicts over potential infringement can be resolved without going to court. But the first step in any good, defensive policy is becoming aware that an unauthorized person or entity is practicing a university patent in the first place. It’s a task that may sound overwhelming, but veteran TTOs have developed ways to pick up on such cases.

For instance, the Wisconsin Alumni Research Foundation (WARF) in Madison, WI, a TTO that has leveled some fairly high-profile infringement cases against names like Apple and Intel, is organized to ensure that it has eyes and ears on the ground to monitor what is going on in the tech-heavy industries that rely on the kind of research developed at the University of Wisconsin (UW).

“Our licensing managers, whose job it is to license and do business deals with companies, are our best source of early leads on potential infringement, and that is because they are aware of what industry is doing,” explains Michael Falk, the chief operating officer and general counsel for WARF. “They attend the trade shows and they’re talking to people about what they might be interested in licensing, and they have their ears to the ground.”

A second source of leads on potential infringement is UW’s inventor community. Many inventors have industry ties with consulting agreements or graduate students who have gone into industry after doing industry-sponsored research. Such contacts are particularly plentiful in technical areas such as medical imaging and computer science, observes Falk. “They are often an early lead on who may be incorporating a technology into their products and doesn’t have a license,” he says.

Nag notes that his office has a commercialization strategies group which makes it a point to stay on top of the TTO’s patent portfolio, identifying which patents are likely to hold the most value — and thus the highest risk for infringement. “We have 4,000 plus patents, including foreign counterparts, so we have gone though and audited our portfolio, essentially looking at which patents are the most cited,” he says.

“Our approach is let’s take a look at these patents, find the valuable assets, and try to match them up with outside companies and products.”

Rodney Sparks, the senior biotechnology patent counsel at the University of Virginia Licensing and Ventures Group in Charlottesville, observes that while most TTOs generally don’t have formal processes in place to monitor for infringement, such instances tend to come to light when TTO staff search for potential licensees or potential partners, or when a publication or an advertisement is discovered by an inventor.

Staying abreast of what is going on in a particular field or industry is most important, observes Sparks. “Some companies, even large organizations, don’t really actively monitor, but they know the field so well that by keeping an eye on the competition, and knowing what is going on in the field, they are in effect doing the equivalent of monitoring,” he says. In cases where the technology is licensed, the licensee may be more active than the TTO in monitoring for infringement — and may also have deeper pockets to handle such issues, adds Sparks.

A detailed article on detecting infringement appears in the March issue of Technology Transfer Tactics. To subscribe and get the full article, as well as the publication’s rich 10+ year archive of best practices and success strategies for TTOs, CLICK HERE

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