The article below appeared in the January 2010 issue of Technology Transfer Tactics. Click here to subscribe.
Don't forget to sign up for Tech Transfer eNews, our free email newsletter filled with helpful tips, industry news, special reports, and key legal and regulatory updates, sent to your inbox every Wednesday!
You'll also receive info on upcoming webinars and other related products.
Go to virtually any innovation showcase or industry meeting and you’re bound to see a collection of poster presentations. They look harmless enough; summaries of ongoing research often created by graduate students. But beneath their innocuous façade, some say, lies a potential threat to the commercialization of the technologies in question.
“There are few things more damaging to university technology commercialization efforts than posters and abstracts that faculty present at academic meetings,” writes Dean Stell, associate director in Wake Forest University’s Office of Technology Asset Management, on his blog (technologycommercialization.blogspot.com.) “Yet, I find that faculty are not very aware of the damage caused by posters/abstracts and sometimes may even try to use premature abstracts to force the TCO to take action.”
“A lot of times there is not a lot of data yet” when a poster or abstract is released, Stell tells TTT. “There may be enough that you have to file, but not enough to support the patent claims you really want, so you can get yourself caught in a ‘Catch 22.’ Since patents outside the U.S. require ‘absolute novelty,’ he says, the public release of data can limit international potential. And in terms of U.S. filing, “if you start with a three-paragraph abstract, the attorney has to do a lot of writing — which can be expensive. So you end up with a lower quality application that costs twice as much.”
Stell further explains the conundrum in his blog post: “If you file a patent application with the early-stage data it is likely that you will not (in the patent office’s eyes) have enough support to make commercially relevant patent claims,” he writes. “One approach that could work would be to allow the abstract to publish and do nothing, then file a patent application in a couple of years when the inventors generate credible animal data (when you can support nice patent claims). The problem here is that the patent office will use the abstract against you (from a patent law standpoint, it does not matter that it is your own abstract). You will argue that your application claims a method of treatment and that the abstract only demonstrates some in vitro data and says nothing about treatment of an animal. . . . The patent office will construe that in vitro data broadly to say that your treatment claims are obvious in light of your earlier abstract. So, the situation is damned-if-you-do-damned-if-you-don’t.”
“That makes sense,” says Kristie D. Prinz, a Los Gatos, CA attorney who heads the IP licensing law firm that bears her name. “It may not always be an issue [in the U.S.], but if other countries and standards are different and you’re publishing information about your invention, you may be putting yourself at risk.”
As for Stell’s concerns about the patent office, she notes: “Basically, he’s talking about the subjectivity of the patent office; it’s up to the determination of the patent examiner whether or not to grant a patent.”
Since abstracts and posters are almost never sufficient to support a really good patent application, why do faculty pursue them? According to Stell, “some junior faculty might legitimately need the presentations on their CV, but many do these posters only to give their graduate students experience (and a chit on the graduate student’s CV). This is a necessary and laudable goal, but I would only ask that the faculty members be sensible about these abstracts/posters.”
What about the mission?
Wesley D. Blakeslee, JD, executive director of the TTO at Johns Hopkins, says Stell is right on the facts, but that he personally would not take any actions to discourage faculty members from making such presentations.
“Factually, he makes good points, but we are in the business of educating students, and giving them the opportunity to make presentations and to publish; that’s our primary mission,” Blakeslee says. “Yes, he’s right — you may put up a poster, 100 people will come by, and nobody will talk about your research. But one thing you’ve accomplished is that a grad student had to put the presentation together, decide what to include and what not to include, and work with the advisor, and they get the benefits from the experience.”
Blakeslee concedes his “life is made more difficult because these things happen, and maybe one of these days we might lose the most valuable invention we’ve ever had,” but those worries can’t supersede the overall mission, in his view.
Missions will vary from university to university, notes Prinz, and that will impact the way they handle these situations. “One university may wish to make as much money as possible off inventions, while another will say they are more into their role as educators and researchers, and that will take more precedence,” she comments.
Blakeslee adds that journal articles published before disclosure are “worse than” poster presentations. In either event, he says, referring to Stell, “he’s right, you probably get knocked out in Europe and it’s too soon [to file] in the U.S., and when you file you may be knocked out by your own prior art. But you can still file in the U.S., and that’s the biggest market, so it’s okay.”
Blakeslee also has a “yes, but” response to Stell’s assertion that you should be selective about which meetings merit revealing IP in a poster presentation. “The worst case scenario is when I see a potentially interesting invention getting its first debut as a poster at a decidedly low-rent meeting; what’s the point of that?” Stell writes. “If the faculty member just wants the student to have experience presenting, perhaps they should consider giving them something more established and mature.”
“It’s always a politically sensitive thing for us to suggest to a faculty member that a poster presentation may not be worth it,” Blakeslee responds. “For example, we have one department that has a kind of retreat, and they invite just enough external people that all posters are deemed public presentations. You just want to say, ‘Why are you doing this? You’re messing up our patent opportunities so your grad students can put up posters no one will look at.’ But I would never suggest they do not make the presentations.”
Education an important strategy
In his effort to minimize this potentially damaging exposure of IP, Stell says “it’s an education issue, although educating faculty is one of the biggest challenges we face.” In addition, he concedes, it’s a “very long-term” process, “and unfortunately many faculty have to learn by trial and error — like ending up with a weakened patent application that’s not going anywhere, and seven years later I gently say ‘I told you so,’ without coming off as demeaning or rude. Often the only way to reach them is to have them go through the process.”
Prinz adds that it’s important to give your faculty guidelines about what they should and shouldn’t do. “On the one hand you want to give experience to grad students, but at the same time you want to develop IP you can commercialize; the role of the TTO, in part, should be to sort things out so the professor knows what the priorities are,” she says.
Stell says the issue tends to be less problematic with younger, more entrepreneurial faculty, who are more receptive to suggestions regarding IP protection. “The faculty who started working here when I did are around 45 years old now and a little more entrepreneurial than guys who are, say, 65. You do not have to be quite as delicate. We have a few faculty here I know well enough that I can say, ‘Let your grad student show something else.'”
New faculty, says Stell, learn by word of mouth and tend not listen to the TTO but to each other. “So if they need a kind of mentor I try to steer them to ‘good’ faculty — those who’ve been around the block,” he says.
Blakeslee says he does try to put procedures in place to help avoid publication before disclosure, and to “have these things more on the minds of faculty so they contact us ahead of time — but I do not suggest to them that they shouldn’t be doing these little sessions.” In short, he explains, a delicate balance is involved. “We try to educate them as much as we can, but we do not try to usurp their mission.”
His department attempts to be proactive, Blakeslee continues. “We do not have the staff volume to ask that every abstract be sent to our office at the time it’s being submitted for peer review — there’s just too much volume. But we do [ask] that with some of the major conferences in technology areas where we get a lot of play,” he shares. And that strategy can actually work in the TTO’s favor, he adds, bringing IP to its attention that may have been under the radar. “For example, we will get a list of presenters, contact our faculty who will be presenting, and ask them to send us a copy before they send it out. At one conference alone we generated 20 disclosures.”
Contact Blakeslee at 410-516-8300 or email@example.com; Prinz at 800-884-2124 or firstname.lastname@example.org; and Stell at 336-716-3729 or email@example.com.
About Technology Transfer Tactics monthly newsletter...
Find more articles like this one when you subscribe to Technology Transfer Tactics monthly newsletter. Sign up today and get immediate access to our Subscriber-Only Online Resource Center, which includes the entire archive of TTT back issues (since 2007), as well as our treasury of industry research reports, legal opinions, sample forms and contracts, government documents and more.