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IP Strategy

Old Meets New in University IP Commercialization

By April 18, 2022No Comments

Economic pressures from the pandemic have left universities looking for new ways to boost revenue. Strategies for doing so have been developing since the Bayh-Dole Act (enacted in 1980) but the struggles of the last two years have accelerated these efforts as university technology transfer offices realize unmonetized patent portfolios are leaving money on the table.

IP.com provides a valuable service to universities working to monetize their IP. There are a number of strategies they can deploy to do so and each requires extensive review of the IP and industry landscapes with legal and strategic implications. IP.com can help with the following three strategies currently employed by technology transfer offices at major universities known to be prolific in their IP monetization.

Patent Assertion and Enforcement

One key, but sometimes overlooked, mechanism of monetization is patent assertion. Patent assertion is the process of taking legal action to establish infringement on a university’s patented technology. That can occur in part because publicly available prior art information can influence organizations developing new technologies. If they aren’t careful or are perhaps malicious, they can deploy technology that is already patented.

IP.com’s robust database search tools provide access to up-to-date portfolio mapping with access to legal, assignee, and transfer information. They can also discover associated technologies to determine the scope and impact of infringement. Dig deeper into child, parent, and subsidiary information with IP.com’s exclusive corporate tree product. With IP.com’s InnovationQ Plus®, you can also take steps to protect patents infringed on internationally with our new global legal databases.

Longer-term, partnerships with patent assertion entities (PAEs) can help if infringement is widespread across multiple technologies or industries. Some may even offer to buy or purchase a portion of a university’s intellectual property as an investment in future legal settlements or technology transfers.

If your university is not ready to commit to an organization like a PAE, IP.com’s search and data management tools are available. With our support, you can learn to investigate infringement independently to prepare you for next steps.

Establishing Industry Partners

A more conventional but still under-utilized strategy for monetizing IP is through strategic corporate partnerships like those first conceptualized under the Bayh-Dole Act of 1980. In sum, the law grants ownership to universities that received federal funding for the development of IP. These universities are then empowered to monetize innovations with the clarity and certainty that they hold patent rights.

Partnering with business entities is a powerful tool to bring patents to market. As basic research duties shift to universities—rather than the corporate entities often bringing those technologies to market—the environment has never been better for universities to monetize a business partnership.

Equity stake, licensing fees, royalty payments, and lump sum payments on technology transfers can benefit both the university and the corporate entity as the standardized model of cooperation continues to grow. Schools like Cornell University, Stanford and Carnegie Mellon have long fostered industry-wide partnerships in medicine, agriculture, and tech.

The key takeaway is that in order to fully monetize currently held university patents, as well as future ones, a long-term relationship with business is most optimal for both parties.

Investing in Startups

Perhaps the boldest but most potentially most lucrative strategy to monetize patents is direct investment in startup companies centered on bringing specific patents or patent portfolios to market. This is an increasingly common strategy in biotech and pharmaceutical realms where companies form around developing and marketing single drugs or pieces of biotechnology.

This can also be a sound and fair strategy to incentivize inventions by university students who, as some have pointed out, at times don’t receive the full monetary value of their IP development efforts. Such an arrangement helps attract talent and motivate students to create.

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