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 Uploading unpublished research or invention [...]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. [...]

Generating High Quality Disclosures and Managing Timing By Joshua Goldberg, Co-Managing Partner  Research, discovery, and inventions are typically memorialized as the research is ongoing, whether in a laboratory notebook or otherwise. Once the research is sufficiently advanced, the question often turns to whether the results of the research could or should be patented. The first [...]

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 [...]

Also Known as "A Story About a Song Girl’s Adventures in Intellectual Property"   By Joshua Goldberg, Co-Managing Partner  And now for a brief interlude from our regularly scheduled programming…for a bit of fun, here is a story about intellectual property and a song girl from Nashville, Tennessee. Even if you have never listened to [...]

The Only Question That Matters By Joshua Goldberg, Co-Managing Partner  The Decision Framework Behind Every Investment At the end of every investment conversation…everything reduces to one question: “Can this company stay ahead long enough to matter?” Why This Question Exists Markets do not reward innovation. They reward controlled advantage. Because without the barriers created by [...]

The Parts You Should Never Patent By Joshua Goldberg, Co-Managing Partner  Why Disclosure Can Quietly Destroy Advantage The most valuable part of your business…might be the part no one ever sees. The Default Instinct When companies create something valuable, the instinct is to protect it. In most cases, that means filing a patent application. But [...]