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Invention Disclosure Analysis / Triage

Invention Disclosure Analysis / Triage. Overview. Decision making Components of an invention disclosure Review process Qualitative factors – art vs. science Tools / frameworks. Decisions, decisions. The simplified process Patent vs. punt

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Invention Disclosure Analysis / Triage

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  1. Invention Disclosure Analysis / Triage

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

  3. 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

  4. Components of a new disclosure • Named inventors • Invention title • Description • Patentability bars • Disclosure • Offer for sale • Funding

  5. 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

  6. 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 (MTA’s) • Code

  7. 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

  8. 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?

  9. 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?

  10. Other Legal Constraints • Regulatory path • Policy • Reimbursement

  11. Art vs. Science – qualitative drivers • Inventor motivation • Commitment to technology (focus) • Inventor reputability • Interest in the market space • Politics

  12. Assessment tools • Tech assess • Case summary template

  13. Resources

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