TTO's as Inventors

Every person who has worked a university technology commercialization office (TCO) has had this experience. A faculty member has a "invention" that could be politely described as "incompletely realized". The faculty member is pointing out a very real market opportunity, but their "invention" is probably not patentable at all. The technology manager has years of experience working in this technology area and makes several improvements to the faculty member's invention. These are improvements that the faculty member doesn't have the expertise to make themselves because they lack knowledge in the areas where the technology manager is strongest (technology development).


Later, a patentability assessment is performed on the invention. It turns out that the faculty member's original broad concept is NOT patentable, but that the specific embodiments suggested by the technology manager ARE patentable. What should happen next?

The "Real World"...

In the real world, a patent application is (probably) just filed in the name of the faculty member even though the technology manager has probably contributed enough to be at least a co-inventor. This happens for a variety of reasons:

• Political: It would take a very brave technology manager to say, "You know.....when you filled out your invention disclosure forms after we talked, I feel like you have incorporated a lot of my intellectual input and have not listed me as an inventor." A statement like that could result in Armageddon! Unfortunately, 99% of faculty just do not consider technology managers capable of contributing to an invention. Never even crosses their minds.
• Low probability of success: Given item #1 above. The technology manger knows that if he/she raises the question, it will be a mess. It's one thing to go through that for a sure thing, but so few of these technologies pan out that it seems silly to take a stand.
• "Just doing your job": There is a concept (mostly among older technology managers) that a technology manager is merely helping the inventor to "flesh out" his/her invention. Therefore, the technology manager cannot be an inventor. I think this is hogwash. There is a big difference between saying, "What kinds of materials would you make this invention out of?" and saying, "Your invention would work better if you made it out of ______ and incorporated these other 5 things." For better or worse, these old-school technology managers were the ones who helped to write all the pertinent policies back in the 1980's and their bias continues to this day. Life would be better if they just got on with it and retired.

A more perfect world....

Obviously I have a bias, but I think that two things are important here. One, inventorship on a patent application is a matter of law......not a matter of political expediency. If the technology managers are contributing to inventions (and they are) then they should clearly be named on the patent application. Not doing so jeopardizes the validity of the resulting patents and that doesn't serve anyone's interests.

The other is whether the technology manager is entitled to a portion of revenue. For better or worse, universities and the Bayh-Dole Act created a bit of a monster when they mandated that faculty inventors share in the revenues resulting from their patents. The old-school folks think that technology managers also think we shouldn't share in revenues because it is professionally improper or something. I ask this: How can it be reasonable for a university to have two classes of employees? One (faculty) are allowed to make millions (in addition to their salary) from their intellectual property. The other is simply paid a salary. What possible rationale is there for this? 

I have also heard these old-schoolers claim that if technology managers are inventors it is only because the faculty member brought the concept to them first, so adding to the invention is somehow stealing. Actually, the reverse is true. What happens is that the patent estates are more robust due to the contribution of the technology managers and the faculty members are the financial beneficiaries of this. Who is "stealing" from whom?

Why this will be a larger issue in the future....

Again, I come back to the common theme on this blog that patent rights are becoming more narrow. I need an example, real examples won't do for all sorts of reasons, so let's consider a hypothetical medical device that could be claimed in the patent as follows:

Claim 1: A medical device which may be inserted into the body of a human patient for the purpose of opening an occluded blood vessel.

Say that on the date that the faculty member and the technology manger discuss this concept, the faculty member doesn't know much beyond this claim #1 above. They just have a nebulous concept for what would turn out to be a coronary stent. Further imagine that the technology manager has 10+ years of experience. He/She has an advanced scientific degree and has successfully licensed 50+ medical technologies in a variety of areas. Along the way, he/she has learned a LOT about production techniques, regulatory requirements and the materials used in such devices. The great thing about experienced technology managers is that they know a LOT about a LOT of different areas and our job is to connect the dots. Say the technology manager says, "I like your concept. You could deliver something like this on the end of a balloon catheter or it could be made out of some sort of memory metal. I'd also seen some new research on atherosclerosis. It might be a good idea to put some kind of anti-proliferative drug on the stent."

In the old days, Claim #1 would have been allowable (assume it meets the standards for novelty and non-obviousness). The technology manager's contribution is relegated to dependent claims:

Claim #83: "The medical device of Claim #1 coated with an anti-proliferative agent".

I am not a patent attorney, but am familiar with the concept that conception of the invention only applies to its broadest embodiment and you do not become an inventor by merely suggesting other narrow embodiments using common knowledge. That would seem to speak against naming the technology manager as an inventor.

But, what happens when the patent office becomes incredibly picky about patent claims. Board claims are often no longer patentable even if they are novel and non-obvious. The claims which we can actually issue are often on very specific embodiments. What happens if the best claim we can issue is:

Claim #1: A medical device which may be inserted on a balloon catheter into an occluded coronary artery of a human patient for the purpose of opening said artery wherein said device is also coated with an anti-proliferative agent.

In my hypothetical situation, the faculty member didn't know about drug coatings or catheter delivery systems. That was 100% the technology manager. Is the faculty member even an inventor at this point? You'd have to ask a patent attorney, but I think the answer is "no".

However, in common practice, the faculty member would remain as the sole inventor, the technology manager would be left off completely with the faculty member having a large financial interest in someone else's intellectual property.

What to do?

I think that the universities have to take the lead on this topic. A sensible path would be to suggest that a university's patent policy anticipate the possibility that a technology manager could become an inventor and suggest a course of action. Any amendments to a patent policy are going to have faculty involvement and that allows for a nice dialog on the subject without the heat of "You're mooching off my invention!".

A nice side effect is that faculty would think harder about their inventions BEFORE going to the TCO for fear that we'd become inventors. Is that a bad thing? And if they do really pour all their creative talents into it and we can still add something, shouldn't we get a little credit for that?

*Articles are reproduced with permission from Dean Stell, the owner of Technologycommercialization.blogspot.com