I have an intellectual property?
July 5, 2019 3:41 PM   Subscribe

I've created something and I don't know whether to turn it into research or try to sell it. Please help me figure out where to go from here.

In addition to being study abroad professional/full-time staff member for 10 years, I am currently a graduate student in a PhD program at my university in the U.S. During spring semester, we were assigned a final project to create a system of educational quality. For my project, I completed a survey of literature on student decision-making in study abroad and created a prototype of a method that would (IMHO) do a much better job of matching students with programs based on decision-making factors and a visual system to support student agency in the process. I was proud to show what I had made, and explained that we had talked about perhaps paying our software vender to implement it for use in our advising processes.

However, at the conclusion of my presentation, I was very surprised to receive feedback from the AVP at my research institution (who was co-teaching the course) that I should pursue a patent for my intellectual property. I have also since received pushes and offers of support from my department for pursuing this project as well.

Let me say, having an IP is completely out of my range of experience and knowledge.

As a first step, I did run a notification form through our Tech Transfer office and have received in writing a notice that because it was a class project my university does NOT consider itself to have any rights. This news is both good (yay for 100% instead of 30%) but also difficult it also means that I don't have the structural support for where to go.

Because I've been in academia so long, my inclination now is to pursue the route of developing a prototype, testing it, and then submitting the research for publications/conference presentations. The advantage of this route is that I could add to my C.V. and perhaps open up potential employment opportunities.

However, I worry that I may be selling myself short simply because I have the eternal specter of imposter syndrome and I'm not giving something that I made value. I know there are software venders in this field and program providers who could be interested, but I have no idea what the range of value might be or what I would do to explore it since this is such a specific field. The only people who would likely be able to assess a value would be the companies I'd be trying to sell it to down the road.

Current status:
- I have a basic proof of concept prototype
- I have plans for how to implement a more detailed version that could be embedded into our website and used in advising processes, but because this system would best function as attached to existing website/software data, I don't think it would be worthwhile to make a stand-alone app (i.e. this has more value as an integrated system).
- The support in my academic department would be very helpful for implementation, but because the application is specialized they don't have a background to comment further on the utility. They are going off my marketing pitch as to why this is an improvement on existing systems in being supportive at this point. I have extensive experience in this field, and I already know what companies POTENTIALLY could be interested but not IF they actually would be interested.
- It sounds like presenting on my framework in class at the end of April counts as a public disclosure. I am confident that no one in my class has the knowledge of the field to make use of it, but I understand that having done so can impact the timeline if I did want to pursue a patent.
- It also sounds like patents are expensive, and I don't want to spend money if it makes no sense to do it. I have contacts to find a patent lawyer, and I am confident that I could work through the logistics of the application process with appropriate counsel. But would a patent lawyer only be able to help with the "how" and not where I am at with the question of "whether"?
- To complicate this all, I'm in the middle of writing a literature review this summer and my cats are having major health issues, which makes my time to just do things because maybe something will come of it more limited.

So, entrepreneurs of MeFi, my question is how do you know whether something is worth pursuing? Do you have any insight on what it's like to sell an IP to specialized company? Can you give me recommendations on what I should be taking into consideration for my next steps?

Thank you for your help!
posted by past unusual to Work & Money (7 answers total)
 
A patent only covers a specific novel process. I wonder if the AVP meant to say that they thought it had commercial potential, rather than they thought that patents were the specific way to protect your intellectual property.

One question is how easy if would be for a company that might want to offer this as a commercial product to re-create it on their own. Is there anything in there that wouldn't be obvious to another person of reasonable skill who sat down to address the problem on their own? If you have some unusual insight the average person wouldn't think of, you might be able to get patent protection. Otherwise, you are probably operating under copyright law. Then the question is how much work are saving them by giving them what you have now? That is going to limit the upside value of your work.

Second question is how much work are you willing to do to try to commericalize this? In addition to money, this is going to take time on your part, even if you hoping they will just pay you money and take it off your hands once the deal is done.

I would start with the Tech Transfer office and see if someone there might be willing to have an informal conversation with you about your options - with luck you will find a helpful soul who would be happy to spend a hour sharing their expertise with a university person even if the iP isn't being handled by their office.
posted by metahawk at 4:10 PM on July 5 [2 favorites]


Yeah talk to the brass. This is often not worth your time and effort unless you have institutional support.
posted by SaltySalticid at 4:34 PM on July 5


I think your first step would probably be to talk to a lawyer about the timeline, costs, etc. Then you can make a better decision about it. You can also consult with a patent agent instead. It's hard to say whether you can afford it in terms of time and money without knowing how much it'll cost.

A big thing to consider on top of profit from licensing is how much having a patent to your name might be worth in your field. I know that in some fields it would be a bit of a feather in your cap, in others they would sort of look at you with a bit of puzzlement.

It's also the case that you can have a patent and never worry about enforcement or sue infringers. So if you read about enforcement costs or whatever and that's not important to you, feel free to shrug about it.

I'm not a lawyer and I'm also not an IP lawyer. These are just some thoughts!
posted by internet fraud detective squad, station number 9 at 4:52 PM on July 5 [1 favorite]


Look around the business school, the engineering school, and whoever else might have resources for promoting entrepreneurial activities. There could be people whose job it is to help with situations like this, perhaps some sort of center for entrepreneurship. If not that there might at least be a student club.
posted by vogon_poet at 5:09 PM on July 5 [2 favorites]


It sounds like presenting on my framework in class at the end of April counts as a public disclosure. I am confident that no one in my class has the knowledge of the field to make use of it, but I understand that having done so can impact the timeline if I did want to pursue a patent.

Unless there's an expectation of confidentiality in the class, yes it does, and in fact it "technically" ruins your chance to obtain a patent. HOWEVER, it's very unlikely a patent examiner will actually be able to prove this in any way unless it's published online somewhere, so you're probably still alright!

I don't know how friendly the USPTO is to self-represented applicants but they should have some website resources on how to draft a patent specification. Attorneys / agents can be very expensive, and if you're only concerned about covering the particular invention you have, it's actually not TOO hard to draft a few claims that quite precisely describe the invention.
posted by nicolas léonard sadi carnot at 7:35 PM on July 5


Definitely talk to a patent lawyer who can help you just get a general handle on what your cost/benefit is, in terms of how much you'd be willing to spend on prosecuting (i.e. applying for and getting) the patent, versus how much you think it'd be worth. Trust a lawyer who is duty-bound to represent your interests over random pseudonymous internet insomniacs who will authoritatively tell you things that they only kinda half remember.

Unless there's an expectation of confidentiality in the class, yes it does, and in fact it "technically" ruins your chance to obtain a patent. HOWEVER, it's very unlikely a patent examiner will actually be able to prove this in any way unless it's published online somewhere, so you're probably still alright!

I have to disagree with this on two points.

1. I wouldn't say that having presented in April "ruins" your chances to obtain a US patent. Section 102 says you have a year from the public disclosure to apply. That does mean the clock is ticking, but your chance isn't "ruined."

2. I would not recommend waiting past that one year, and then just hoping that an examiner won't find out that you were dishonest in a patent application. Then you've spent a lot of money prosecuting a patent, and end up with no enforceable patent anyway. There's already so many patents being issued that shouldn't be; please don't add to that by blowing past a legal requirement and trying to hide it.
posted by pykrete jungle at 10:15 PM on July 5 [3 favorites]


Thank you all for the helpful thoughts. I marked a couple of answers as best answer because of the concrete next step suggestions—the reasoning on the cost-benefit purpose of talking with a patent lawyer is especially helpful. I’ll also talk with our entrepreneurship person on campus for ideas.

Thanks again!
posted by past unusual at 4:16 PM on July 6


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