Filing Decisions, Portfolio Strategy, and Commercialization
By Joshua Goldberg, Co-Managing Partner
In academia, filing decisions may be driven by one or a combination of different factors,
including patentability, commercial potential, and resource constraints. TTOs must
evaluate whether an invention is likely to attract licensing interest or support startup
formation, whether patent application filings can help retain a critical university
researcher, and how to incentivize the submission of more future disclosures, among
many other considerations.
Some factors the TTO may consider include novelty, technical significance, available
data, market relevance, and competitive landscape. Unlike corporate settings, where
patents may support internal product pipelines, university patent decisions are often
made with external commercialization in mind.
Portfolio strategy may emphasize technologies with broad applicability or platform
potential. Defensive considerations may also arise, particularly where patents can
preserve freedom to operate for licensees.
Transparency in decision-making is important. When a university declines to pursue
patent protection, explaining the rationale helps maintain trust and encourages future
disclosures from the internal faculty.
