Helping and Working with University Inventors

By Joshua Goldberg, Co-Managing Partner 

Just as no two people are the same, no two inventors are the same. Over time, though,
I have learned there are certain common attributes inventors of a certain category or
type can often share. Included among these categories is the University inventor.
Inventor engagement within universities is often shaped by the structure of the
intellectual property (IP) operations put in place by the university. In contrast to
corporate environments, universities typically centralize IP functions within Technology
Transfer Offices (TTOs), which operate as part of the research administration
infrastructure. TTOs are responsible for managing invention disclosures, patenting,
licensing, and commercialization activities, including startup formation and industry
partnerships.

When present, TTOs are typically the primary interface between inventors (faculty,
postdocs, and students) and the patent system, usually in conjunction with outside
counsel. Among their many functions, they assess invention disclosures, coordinate
patent prosecution, and guide commercialization strategy.

Academic researchers tend to focus on education, voluntary participation, and
alignment with academic incentives such as publication, funding, and recognition.
Accordingly, a recurring challenge relates to ensuring that inventors understand when to
engage with the TTO (or other corresponding entity) so that the rights to new valuable
inventions and discoveries are not lost.

Many academic inventors are unfamiliar with patent law concepts, including what
constitutes patentable subject matter or when disclosure triggers loss of rights. Inventor
education is therefore foundational to effective engagement and to ending up with a
positive result, i.e., obtaining one or more patents protecting the valuable results of
research being conducted. Across this series of articles, I will discuss some of the
common challenges to working with university inventors, from research capture and
disclosure, continuing through avoiding pre-patent filing publication, and ending with
some options for incentivizing university inventor patent activities.