Got IP?  Disclose!

By Dr. Carlos Báez

Research is at the heart of technology transfer. Without scientific research, there would be no technologies to transfer. However, for technology transfer to occur, inventions created in universities need to be disclosed to technology transfer offices (TTOs). Filling out invention disclosures forms may have seemed daunting in the past, leading some to not disclose at all. Nowadays, disclosing inventions is much simpler, with most university TTOs moving into web-based inventor portals allowing researchers to easily disclose online.

The TTO of the Puerto Rico Science, Technology and Research Trust launched an “Inventor Portal” where investigators from Puerto Rican universities that partner with us can disclose their inventions. The process is simple. Researchers are asked to describe their inventions in lay terms focusing on the problems that are solved by the invention, and additional inventors can be added as needed. They are asked to disclose previous agreements related to the invention, the sources of funding, if they are aware of companies that might be interested in the invention, and if a public disclosure has been made in the past, which might affect patentability.

Once the invention disclosure has been received by us, the TTO initiates its evaluation focusing on patentability and commercial potential. A series of specialized tools are used, such as PatSnap, that allow us to search for prior art in addition to providing valuable information about companies that might be interested in obtaining a license. Based on this evaluation a decision is made whether or not to seek patent protection for the invention.

Technology transfer brings many benefits to society and the economy. A recent survey by the Association of University Technology Managers (AUTM) revealed that from 1996 to 2015 academic technology transfer contributed $1.3 trillion dollars to the U.S. gross industrial output and supported up to 4.3 million jobs.  Tech transfer helps us compete globally and innovations keep our companies strong.

Remember that each success starts with a disclosure.