IP COMMERCIALIZATION

Universities, research institutions and companies involved in R&D activities typically build significant patent portfolios over time. These portfolios require a significant amount of time and a specialized skill set to manage. Many university tech transfer offices and corporate IP teams find themselves overwhelmed by the amount of work, and need help from external consultants from time to time. Smaller companies and startups may not even have an IP team at all.

In such situations, we can act as an extension of your staff to help manage part or all of your patent portfolio. This can include the following activities:

1) Invention Disclosures: You may be making significant investments in R&D activities, but are you capturing the full value of this investment? Developing a process for your R&D team to identify and disclose inventions is essential to ensure that maximum value is captured from your R&D activities. We can help to develop this process, create an invention disclosure form template, train your R&D team on when and how to disclose potential inventions, and we can even work directly with them to help them identify and disclose potential inventions.

2) Invention Assessments: Once you have invention disclosures being filed, the next step is to assess these inventions to identify which ones should be protected. We can support you in assessing these disclosures, taking into account the legal, technical and business aspects. We can also help you to determine which type of IP protection is most appropriate in each case. All of this is done in view of your organization’s innovation strategy and priorities.

3) Patent Filing, Prosecution and Management: A patenting strategy must be developed for those inventions selected for patent protection. This strategy includes how and where to file patent applications, and exactly what to claim, all of which depends on your innovation strategy and commercialization goals. We can assist with developing patenting strategies, and then to proceed with identifying the right patent counsel for each case, working with counsel to file and prosecute the patents, and to manage all other aspects of the portfolio.

4) Commercialization: Depending on your business strategy, appropriate commercialization plans must be developed for capturing the maximum value from your patent portfolio. Will the patents be developed into products? Or should they be licensed to other parties to commercialize? Can the patents be enforced in case of infringement? Is commercialization through a spinout more appropriate? Can additional value be extracted from patents that have other potential applications in other industries or fields of use? We can support you in developing commercialization plans that answer all of these questions.

Please contact us if you would like to discuss how we can support you with your IP management & commercialization.