Tech Transfer eNews Blog

Gateway to IP program seeds patent know-how in students, cuts legal costs

By Jesse Schwartz
Published: February 26th, 2020

Wichita State University in Kansas aims to promote its IP as much as any other major university, but it faces a challenge that many others don’t: There are hardly any registered patent practitioners in Wichita, compared to more than 50 in nearby Omaha or Tulsa.

To address the problem, WSU is helping its own students gain IP skills through a new program called Gateway to IP. Students get first-hand experience in IP development by conducting inventor interviews, engaging in technology evaluations, executing patent and other intellectual property searches, and obtaining exposure to preparing patent applications. The program is paying surprising dividends to the university’s tech transfer program.

The students cannot perform legal services, but they learn the intricacies associated with the patent process, says Rob Gerlach, JD, WSU Ventures’ director of intellectual property and technology transfer. Gerlach studied mechanical engineering at WSU before going to law school. He returned to Wichita to lead the university’s tech transfer program but realized right away that the dearth of attorneys available for IP work would be an obstacle.

“There are only two private practice practitioners in the entire city of Wichita, Kansas, for helping companies, start-ups, and businesses with intellectual property, specifically patent prosecution,” Gerlach says. “I had a few students working with me in the tech transfer office and they were all engineering students, but what they were primarily doing was market analysis to help us identify potential licensees. Kind of what you’d expect a standard tech transfer office to have students helping out with.”

Gerlach floated the idea of a program that would give those students more experience in the meaningful work that often would be performed by a patent attorney, and he found the students receptive. Even those with no stated interest in law saw the opportunity to immerse themselves much more deeply in IP development than simply tracking down potential licensees, he says.

“Essentially I wanted the students to get exposure to patent prosecution while they were still at Wichita State University as undergraduate students,” he says. “I have one student who is interested in intellectual property law and may go on to law school after another two years here getting her master’s, so she was key in helping me develop this program.”

Like many universities, WSU has outside counsel that helps draft and file patent applications, so Gerlach called the law firm and asked if they would be willing to work with university students to help them understand the patient process — how to take an invention disclosure, how to convert it into a patent application, and how to talk to faculty to ferret out the information needed for that application. The law firm was interested, so Gerlach formed the Gateway to IP program and connected five students with the firm.

“They are acting as an associate would at a law firm, under the guidance of a practicing patent attorney at the firm,” Gerlach explains. “When we get the invention disclosure, they will interview the faculty member, learning that they have to develop a claims set and get figures that represent the claims set. They are able to put together a nice little package before we even contact outside counsel, who will then work with them to finalize the patent application and get it on file.”

A detailed article on the Gateway to IP program appears in the February issue of Technology Transfer Tactics. For subscription information, click here.

Posted under: Tech Transfer e-News

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