Invention Disclosure Analysis Triage

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Invention Disclosure Analysis / Triage
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Overview

• Decision making
• Components of an invention disclosure
• Review process
• Qualitative factors art vs. science
• Tools / frameworks

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Decisions, decisions

• The simplified process
• Patent vs. punt
• A more mature tech transfer process involves
  technology development
• Address key questions investigators need to
  answer before we can patent and/or license
• Identify key projects that will create value
  inflection points for promising technologies
• Locate financing / management to further develop
  technology

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Components of a new disclosure

• Named inventors
• Invention title
• Description
• Patentability bars
• Disclosure
• Offer for sale
• Funding

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Review process

• Review process
• Ownership / rights assessment Do we own it?
• Commercial feasibility Will people buy it?
• Patentability Can we protect it?
• Technical feasibility Does it work?
• Legal constraints

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Ownership / rights assessment

• Factors driving ownership
• People - Who did the work?
• Financing Who paid for the development of the
  technology?
• Location - Where was the work done?
• Were proprietary tools used?
• Biomaterials (MTAs)
• Code

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Patentability

• Will inventors own disclosure, sale or use bar
  patentability?
• To what extent has the invention already been
  described? (i.e. is it novel)
• Patents
• Literature
• Obviousness - TSM test, an invention is obvious
  (and therefore unpatentable) only if there is a
  teaching, suggestion or motivation to combine
  prior art references. 
• Incremental improvement vs. disruptive
  technology?
• Anticipated scope of claims
• Blocking patent vs. an asset to induce investment

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Commercial feasibility

• Opportunity or need
• Market potential
• Growing vs. declining markets
• Market structure
• What is the problem being solved?
• What is the product and what the applications?
• Target market
• Unique benefits / value proposition
• Competitive analysis
• Risks
• Does the added value exceed the cost of
  development?
• Who are the target licensing partners? How many
  degrees of freedom are there?

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Technical Feasibility

• Stage of development
• Conception
• Reduction to practice
• What data exists that demonstrates it works?
• Estimated time and money expended?
• Expertise, resources (funds) available for
  further development?

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Other Legal Constraints

• Regulatory path
• Policy
• Reimbursement

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Art vs. Science qualitative drivers

• Inventor motivation
• Commitment to technology (focus)
• Inventor reputability
• Interest in the market space
• Politics

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Assessment tools

• Tech assess
• Case summary template

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Resources