2.6 Working with Inventors on Tech Commercialization

The success of a TTO depends on the quality of its relationships with its inventors; bad relationships will certainly doom the TTP to failure, and, in the extreme, will take down the entire office. (Another way to look at the relationship is that professors have tenure, while TTPs do not!)

The real-world power balance between faculty and TTO is very different from what it appears to be on paper. On paper, the institution owns the IP and has the right to decide what to do with it. In reality, if the professor wants to use their invention for a start-up and the TTP tells them “No,” the TTP may end up getting summoned to an urgent meeting with the Dean or human resources shortly afterwards! In short, relationships with inventors are crucial.

2.6.1 Inventors and TTP as a Tech Commercialization/Licensing Team

A business start-up team requires a minimum of two people:

• An innovator who comes up with the product
• A businessperson who handles the finance, business development, and marketing side

In the TTO context, the inventor is the innovator, and the TTP is the businessperson. The TTP helps the inventor think through the business aspects of their invention. They should never second-guess the inventor on the validity of the science underlying the invention—the professor will always be the technical expert. Rather, the TTP’s job is to focus on what the invention can do.

Inventors are generally experts in a narrow field—an inch wide, but a mile deep. A good TTP, in contrast, must be able to work with many professors working in many fields, and to make insights about many different markets. A good TTP therefore needs to be interested and informed about many different markets—an inch deep but a mile wide.

2.6.2 Building the Relationship

TTPs should follow these simple rules to build the relationship:

• Be respectful of the professor’s time. In emails, be selective in using “Reply to all” and inundating the professor’s inbox with unnecessary emails.
• Be responsive. Respond to every voicemail and email the inventor sends within 24 hours.
• Take notes during meetings and phone calls and note every commitment made for follow-up actions and follow through. Get all follow-ups completed in 72 hours (and inform them of progress). Copy the professor on emails initiating follow-up (but then be careful with “Reply to all.” One way to achieve this is to bcc the professor—that way they won’t receive “Replies to All.”)
• Keep them updated on progress.
• Through being responsive to the inventor, the TTP may have the right to expect the inventor to be responsive as well. Unanswered emails may be followed-up in 72 hours to ask, “Did you see this request?”

2.6.3 Discussions on Prior Art, Inventiveness and Drafting the Patent

Inventors are an immense resource in the patenting process. Many, if not most, invention disclosures are driven by the faculty member preparing a publication and / or a grad student writing their thesis. As part of this, they will have prepared:

• A literature review, which assists the patent attorney in conducting a prior art search and review and in writing the background section;
• A description of experimental procedures, which informs the patent attorney in writing the preferred embodiment and examples sections.

TTPs should also have additional discussions with the inventor about:

• How precisely their invention adds to the previous state of the art;
• Keywords that capture the invention to use in the search for prior art;
• Alternative terms that capture these concepts. (For early-stage technology areas, different labs may use different terms and universally accepted terms may not yet be established.) 

2.6.4 Conceptualizing Potential Products, Value Proposition and Market Relevance

Good TTPs bring in great value at this stage by helping the inventor envision potential products and services. 

It’s important to have completed the productization process before filing the initial patent application, as the patent attorney must craft specific claims that protect the type of products that may be developed from the invention.

2.6.5 Patent Filing and Prosecution

The inventor must be engaged in the patent filing and prosecution process, so the TTP must fully explain these processes to them during their first discussion, particularly if it’s the inventor’s first foray into Tech Transfer.

The professor should have plenty of time to read and make comments on the application before it’s filed, so the TTP should make all deadlines clear at the outset of this stage.

Inventors are a critical resource in overcoming the examiner’s objections and rejections during prosecution—and often become strongly motivated to get the patent issued if an examiner rejects the genius of their invention.

2.6.6 Marketing, Commercialization Alliances and Potential Partners

The inventors are an invaluable resource for generating leads on potential commercialization partners. In fact, one (admittedly very old) study found that over half of the leads that resulted in signed licenses came from the inventor’s connections. Such connections can include:

• Where their grad students are getting jobs;
• Which companies attend the same conferences they do;
• Which companies co-publish with their academic competitors.

All of these will be great leads, particularly those where former grad students are working —they can often act as ambassadors for their institution’s IP by explaining to their managers how their old professor’s work fits with the company and can help its products!

The TTP must still do their own research and find additional leads. This can preclude inventors from incorrectly assuming that they have done all the work and deserve all the revenue!