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Inventor, Organization and licensee Perspective on Patents

Yogesh Nathuji Dhoble Senior Scientist B.E. (Chemical Engg.), M. Tech.(Env. Sc. & Engg.) Innovation Protection Unit, CSIR 9555192402
The views expressed in this presentation are solely those of the author and do not necessarily reflect the position of CSIR

Inventor: Who is inventor: Anyone who contributes to the CONCEPTION of the invention Importance of the inventor:

51 out of 85 universities reported that “The researcher is primarily responsible for recognizing the discovery and its potential, reporting it to the institution and requesting consideration for protection and commercialization.”
“Survery of intellectual property commercialization in the higher education sector, 2001”,Statistics Canada, ST-03-12, 2003


“Conception is a definite solution to a problem that can be explained to and understood by one skilled in the art and that requires only the assistance of one of ordinary skill in the art to reduce to practice.” Fed. Cir.

What is CONCEPTION? (cont.)

Conception exists if:

“… the inventor(s) had an idea – a specific settled idea, a particular solution to the problem at hand and not a general goal or research plan – that was definite and permanent enough that one skilled in the art could understand the invention.”


• Supported by corroborating eviden • Contemporaneous written disclosu • Lab Notebook!

Who should not be JOINT INVENTOR
Joint conception will not exist where: • One contributes an obvious element • One merely suggests an idea • One only follows instructions • One explains how or why the invention works • One participates in consultations prior to or after conception

The Invention Disclosure Process
 Normally thought of as starting with invention
 often focused problem solving has taken place and the invention is an outcome of that problem solving

 The inventor needs to recognize that the invention has value
 inventions have value in a context  the inventor needs to have familiarity with the context in order to recognize the value of the invention  corporate goals and strategy

 The inventor must be willing to share the invention with others to reinforce the value assessment and to decide the appropriate next steps
 this requires trust on the part of the inventor  trust is built on mutual understanding and the outcome of previous interaction

 The inventor must receive a signal that reinforces participation in the activity
 recognition from others  personal achievement and satisfaction

The Feedback Loop in a Corporate Environment


Inventor •the inventors understanding of what has value

Company •relevance in the context of company values, processes and resources

•Patent Agent •patentable?



The Feedback Loop in an Academic Setting

Company A


Company B


Technology Transfer Office

Company C

An Alternative Feedback Loop in the Academic Setting


Inventor Build the company value Technology Transfer Office

Managing Expectations
 A clear understanding of how inventions will be valued, and under what circumstances, is central to managing expectations  Involvement of the inventor in the valuing process lays the foundation for the development of a relationship based on trust  Potential personal gain outcomes and the process by which these are bestowed must also be clearly defined

 Monetary awards
 range from no monetary award to small cash incentives  can sometimes vary with the number of inventors  in some cases, further cash awards were possible based on profit generated by a new product introduction or substantial cost savings

 Peer Recognition
     celebration ceremonies are common (both formal & informal) awards presentations in the presence of peers and/or family inventor’s “hall of fame” acknowledgement in company newsletter calls and emails of congratulations

 Career Enhancement
 recognition in performance review

Organization needs to • Review disclosure• speak with inventor(s) • perform prior art search/novelty • Look in to the interest of organization • Decide to file/ what to file / what data to be disclosed • Determination to File PROVISIONAL/Complete or hold or let go(Informed decision with reason) • Search for the prospective licensees from the existing network • Give wide publicity to the availability of the patent for licensing


Types of Inventor:
1) Independent Inventor 2) Dependent Inventor(s) 1) Employed Inventor(s) 2) Contract Inventor(s) –Problem solution

Organization: Who is this Organization: • Which has Intellectual Property assigned by the inventors/Employees • Which can utilize its own IP if required or out license or in license the patent for its benefit Interest of the Organization: To maximize benefit for the organization and for the society from the IP owned

Organization: Types of Organizations:

Government organization NGO Industry – Small and Medium Scale Industries -Multinational Industries


Who is this Licensee: • Willing to sustain in the the market by increasing the products, products quality • Willing to have the eco-friendly and cost effective manufacturing process • Willing to earn more profits out of licensed technology • Willing to share the minimum royalty or upfront payment on the licensed technology

 What is the commercial potential?
     Is it better, cheaper, quicker? How much development needed before commercialization? What is the Market size? Potential for making a profit? Is a company interested already?

 Knowing types of licensing strategies (i) Exclusive license (ii) Non-exclusive license (iii) Cross-license (iv) Partial license (v) Licensing-in (vi) Know-how license

What are the merits and risks of a licensing strategy?
 When granting or transferring (sub-licensing) a license, there is the risk of increasing competition in the market, and there is the benefit of being able to generate stable profits.  When receiving a license from another company, there are risks including the payment of royalties and the restrictions on the use of the IP right in business operations.

Where can a company find technology seeds that it lacks?
 Searching for technology seeds through a university’s consultation service  Using various databases and patent licensing-related events

Tips of better Management
1. 2. 3. 4. Hire good attorneys for the rewarding patents Informed decision between all stakeholders Ensure no loss of information Boosting of inventors confidence and encouraging them to disclose the inventions 5. Continual Counseling with the scientist and developing IP awareness 6. Accessing need of second line of technocrats for the senior scientists 7. Invention disclosure and confidentiality must be maintained 8. Recognition of the inventor(s) contributions 9. Strategy planning the patent to be licensed must be done 10. Delay in licensing must be avoided

Tips of better Management- contd.
11. Lead source may not be given importance 12.What kind of company do we license (start-up, small or large company)? 13.What expertise would the licensee need? 14.Interest of licensee in Exclusive or non-exclusive and further sub-licensee 15.Field of use 16.Geographic areas to be covered by the licensee 17.Advice of IP licensing expert must be taken before finalizing the licensing agreement to avoid any litigation 18.Responsibility may be fixed for each and every activity 19.Timely execution of every activity 20.Above all is Maintaining healthy Relationship

Inventor Licensee

Organization/ Financer