Protecting and Marketing IP…It’s Complicated!

By Carlos A. Báez-Pagán, PhD, MBA, and Josiah Hernandez, BSEE (Technology Manager).

Intellectual property (IP) is a critical element for fostering innovation. It is considered one of the most important assets in creating value for an organization. Creating and being creative is part of who we are as humans. However, without proper IP protection, people and organizations would never see the full benefits of all the work and resources it took to get to the innovation. When it comes to protecting innovation such as with a patent, getting from the idea to the patent is no easy task.

Scientists that have read patents know that they are seldom easy to comprehend. Unlike the scientific literature, patents include legal jargon and writing styles that deviate from the language and structure of scientific papers, specially the claims section. However, the claims are what give patents their value. Claims define the scope of inventions, and therefore require skilled patent attorneys and agents to draft claims that capture the breadth of inventions. Write them too broad, and they might be unenforceable; write them too narrow, and they might not have commercial value.

At the Puerto Rico Science, Technology, and Research Trust Technology Transfer Office (TTO) we have six firms under engagement with over 550 intellectual property specialists and 77 offices around the world to ensure that we identify the ideal patent attorneys to protect the inventions that are disclosed to us. Our patent attorneys have advanced degrees in areas directly relevant to the inventions we seek to protect. This ensures that they understand the nuances of the science and are uniquely qualified to write claims that appropriately protect the scope of inventions. Moreover, we repeatedly work with small teams of patent attorneys where each contributes their area of expertise to protect a single invention.

It is also important to understand the market that relates to a patent or innovation. Most patents (some sources indicate around 97%) never recoup the cost of filing them. One of the biggest problems is that market analysis is seldomly done before a patent is filed. Just because no one has ever done it, doesn’t necessarily mean that someone wants to buy it. So, aligning innovation to market needs is a crucial step in creating value to any IP efforts.

The TTO engages actively in market analysis related to the innovations from our network of researchers. Inventions from our universities frequently have global markets. Therefore, we often seek international patent protection and actively market our technologies to global markets. The TTO employs several active marketing platforms to reach a broad audience. For instance, our office subscribes to IN-PART, a matchmaking platform that matches inventions from different universities to more than 13,500 R&D professionals in decision-making positions. The goal is to identify companies that are likely to be interested in our technologies.  More than 5,500 companies such as Samsung, Merck, and General Electric; and more than 230 universities and research institutes, including Columbia, University of Cambridge, and University of Pennsylvania, are subscribers. The TTO leverages its IN-PART subscription to market the technologies from our Puerto Rican university partners.

Scientists thinking about patenting their inventions need not worry about drafting patent claims or marketing their technologies. TTOs manage the whole process. From securing the best patent attorneys, to actively marketing the inventions, TTOs help realize the commercial value of inventions, and most importantly, help transform technologies into services and products that benefit society.

You can see that protecting and marketing IP is complicated.  But as tech transfer professionals, we are prepared to meet the challenge.  We develop and leverage our professional networks, identify and engage experts, and present opportunities to a global market to get the best results possible.