Introduction Many if not all are likely aware that colleges and universities provide some of the most cutting-edge research in the country. What few people know is that it was not always this way. In fact, universities had difficulties with retaining ownership of inventions developed with federal research funding until passage of the Bayh-Dole Act [...]

By Joshua Goldberg, Co-Managing Partner  Introduction The departure of a lead researcher from a university is often viewed through the lens of lost research grants, publications, and academic prestige. However, in today's innovation-driven environment, one of the most significant consequences may be the effect of the departure on the university's intellectual property (IP) portfolio, patent [...]

Recurring Challenges in Academic Inventor Engagement By Joshua Goldberg, Co-Managing Partner  Common challenges include misunderstandings about patentability standards, premature public disclosures, and difficulty coordinating across large, interdisciplinary teams. Academic culture, which prioritizes openness and dissemination of knowledge, may conflict with the confidentiality requirements of patenting. Addressing these challenges requires ongoing education, clear processes, and strong [...]

Maintaining Inventor Engagement By Joshua Goldberg, Co-Managing Partner  Maintaining engagement throughout the patent lifecycle can be challenging in academia due to competing demands on researchers’ time, the long duration of patent prosecution, and inventor unfamiliarity with the process. Effective approaches to resolve this difficulty can include minimizing administrative burden, scheduling targeted interactions, and providing clear, [...]

Role of Outside Counsel in Academic Settings By Joshua Goldberg, Co-Managing Partner  Outside counsel plays a central role in university patenting activities, as most TTOs rely heavily on external firms for patent application drafting and prosecution. Effective coordination between TTO staff, inventors, and outside counsel is essential. Outside counsel must be able to communicate effectively [...]

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 [...]

Inventorship, Ownership, and Collaboration Challenges By Joshua Goldberg, Co-Managing Partner  Inventorship is often a complex issue in academic environments, particularly given the collaborative nature of research. A common misconception is equating authorship on academic publications with inventorship under patent law. These concepts differ significantly: inventorship is based on contribution to the claimed invention, not participation [...]

Use of Artificial Intelligence in Academic Inventor Interactions By Joshua Goldberg, Co-Managing Partner  The use of artificial intelligence (AI) tools by academic inventors is increasing, particularly for drafting disclosures, summarizing data, and generating preliminary technical narratives. While these tools can improve efficiency, they introduce risks related to confidentiality and accuracy. Uploading unpublished research or invention [...]

Patent Timelines and Strategic Tradeoffs in Academic Research By Joshua Goldberg, Co-Managing Partner  Academic inventors often have limited familiarity with patent timelines and strategic considerations. Practitioners must explain the sequence from disclosure to filing, prosecution, and eventual issuance, as well as the factors influencing timing decisions. Key considerations include data readiness, funding cycles, publication deadlines, [...]

Publication Pressures and Clearance Processes By Joshua Goldberg, Co-Managing Partner  Publication is a core objective in academia, creating direct tension with patent requirements, particularly in jurisdictions requiring absolute novelty. Faculty and students often seek to publish quickly through journal articles, conference presentations, or thesis defenses, sometimes without informing others at the university of their plans. [...]