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Moving software through the tech transfer process requires speed, finesse

By Jesse Schwartz
Published: September 20th, 2017

Apps and software are becoming more common in TTO portfolios, but they may require a slight reworking of how you think about IP and guide it to commercialization, experts say.

This type of IP can be handled largely the same way you handle other technology, but there can be some unique aspects to keep in mind, says Daniel E. Sineway, JD, partner in the Technology/IP Group with Morris, Manning & Martin in Atlanta. Speed and rapid reaction to developments are key, he says. TTOs must find a licensee rapidly and in many cases will look to the researcher whose name is on the disclosure. The best recipe is when that researcher has the business acumen to turn the software into a business and get it to market quickly, Sineway says.

At the early stages, universities tend to be a little more discerning about what they patent in this area, he says. “In many other areas there is not a lot of thought given to that, with people saying let’s file a provisional patent and we’ll assess it later. In the majority of those cases they’ll go ahead with a full patent application later,” he says. “With software, they tend to be a little more critical and not file for some [innovations] because they’re worried about the non-patentable subject matter issues.”

But when a university is confident in the future prospects of a software project, they tend to move more rapidly than with some other technology, Sineway says. “If you compare software to life sciences or pharma inventions, for example, in those cases there is an intentional strategy to defer the patent process for as long as possible. They often will file PCT applications and at the end of that 30-month period they will file a U.S. national, trying to push out the time window to allow for FDA approvals and similar developments,” he says. “On the software side the development is far more rapid, with things changing at a far quicker pace, and the investment happens more rapidly in response to that. You also have fewer barriers to entry, so there’s no need to delay as you wait for approvals.”

Though software needs to move along at a good clip, Sineway cautions universities to take the time for proper provisional patent applications. Too often, he says, applications are not technically specific and focus more on the end result, advantages, or the business side of the project.

 “As we’ve seen case law change and become more stringent on software patents over the last seven or eight years, we’ve seen that being specific and giving examples is key. If you get a few years down the path and you don’t have that stuff in there, you’ve shot yourself in the foot with a non-patentable subject matter problem,” Sineway says. “That’s a big mistake for people new to the game, not having that level of detail in there.”

There also is less focus on international protections because many foreign countries are even more adverse to software-related technology patents than the United States, Sineway says. For a pharma invention, for instance, the university will file in many countries, but not necessarily for software.

Even though the process may move more rapidly with software, you’re still typically at the licensing phase before you have any real indication from the patent office as to how the application will be treated, Sineway says.

A detailed article on patenting software innovations appears in the September issue of Technology Transfer Tactics. To subscribe and access the full article, along with the publication’s 10-year archive of best practices and success strategies for TTOs, CLICK HERE.

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