September 22, 2014
First Steps to Intellectual Property Protection and Commercialization
The path an invention takes from initial research to market product is extensive and time consuming, filled with steps, forms, setbacks and triumphs. Quickly, a researcher can become overwhelmed and unsure of how to proceed.
Recently, the University of Iowa Research Foundation (UIRF) gave presentations across campus to ensure that researchers were aware of one very important part of the process: the disclosure.
“It’s a summary of your idea,” said Mihaela Bojin, a Licensing Associate and Intellectual Property Analyst with the UIRF. “We have disclosures that are literally a sentence long and others that are 50 pages.”
The disclosure is the first step in ensuring an inventor’s or researcher’s intellectual property is protected. It includes an easily understandable abstract, various specifics about the idea, how it differs from prior ideas or inventions, funding sources, co-inventors, and the application of the research. This application is referred to as the enabling idea.
“For instance, we typically help inventors protect new compositions or drugs, or alternatively, novel uses of known compositions as long as inventors have some evidence of the activity of those compositions (i.e., in vitro or in vivo supporting data),” said Bojin.
Bojin said researchers who are unsure whether they should disclose their idea should reach out to the UIRF no matter what stage of development they’re in.
“Once you have some result, even an early peek into the data that proves you are right, then it’s a good time to reach out to us,” she said. “We often have disclosures that are fully proofed and ready to be filed, and in other cases we have inventions in the conceptual stage.”
When an inventor contacts the UIRF with an idea, Bojin or one of her colleagues will talk with the inventor to determine where they are in the research process, whether the time is right to disclose, or if the UIRF should monitor the research as it continues. Even for early stage ideas, the UIRF can provide feedback on the idea, other similar projects, and the size of the market.
“Often, we just get an email from inventors that says, ‘I have an idea. I don’t know what to do with it. Should I disclose?’ and we meet even before they send a disclosure,” said Bojin.
If the time is right for a disclosure and the UIRF decides to go forward with the researcher’s idea, they can assist with the patenting process and legal cost as well as reaching out to companies who may be interested in licensing the idea. Bojin said the organization actively talks with inventors, so they are involved in every part of the process.
“Inventor input is very valuable to us,” she said. “PI’s know better what companies would be very interested in that specific technology.”
Ryan Flynn, a University of Iowa Clinical Associate Professor of Radiation Oncology, founded pxAlpha LLC, a company working on developing new ways of delivering radiation therapy in a targeted manner to reduce damage to healthy tissues and focus radiation doses on tumor tissues. Flynn has filed many disclosures with the UIRF and said the help they provide is extremely beneficial for inventors.
“If you have experience patenting your ideas and bringing them to market, then it may be kind of obvious to you how to do that,” he said. “But for me, it definitely was not, and the UIRF has done a great job of helping out with that. They really help inventors bridge that gap from invention to commercialization.”
Over the past year, Bojin reached out to departments across the university and offered information on the UIRF and disclosures. As a result, disclosure numbers have gone up by 40% from last year and doubled the number from prior years.
“I think it shows that the faculty is more informed about us,” said Bojin. “But also that government funding is being slashed every year, and faculty are looking into outside sources of funding, and this could be one of them.”
Fore more information on disclosures and the University of Iowa Research Foundation visithttps://research.uiowa.edu/uirf.
By: Julia Jessen