Patents policy aids inventors

Inventors, researchers and authors: fear not, the University of Pittsburgh Patent Rights… Inventors, researchers and authors: fear not, the University of Pittsburgh Patent Rights Policy is not going to steal your discoveries for profit.

Although all university staff, faculty and students are required to submit for review any and all inventions, innovations, technology or products developed while they were associated with Pitt, the Office of Technology Management is far more interested in turning innovations into profits that both benefit the inventors and increase the prestige of the University.

Since 1996, the OTM has been working with university faculty and students who have developed potentially marketable products through research associated with specific university departments.

OTM’s mission is to facilitate the development of products and processes from university technology for the benefit of the University, its faculty, staff, students and the wider community.

Turning an invention into a commercial product requires several steps. According to the OTM, when an innovation is developed, the innovator must promptly submit an “invention disclosure statement” to the office.

After the disclosure statements are submitted, the University evaluates the technology, medical advancement or electronic development according to its commercial potential. It then decides whether or not to invest in a patent based on the innovation’s criteria, patentability, marketability and ability to license.

The university patent counsel then takes the innovation and searches for interested businesses that can license the technology. The companies that Pitt sells to are then responsible by law to move the technology forward.

“Some companies actually license new technology in order to shelf them so that they are no longer on the market. Pitt makes sure that the technology developed by its faculty, staff or students gets the opportunity to reach the market and the public,”Daniel Bates, strategic relations manager of the OTM, said.

The office contributes the time and assistance necessary for a majority of the innovations developed by Pitt staff and students to achieve licensing and commercial success.

OTM received $11.86 million in total revenue from innovation licenses during the 2006 fiscal year, and hopes to see that amount increase.

Although there are cases when the University profits considerably from a licensed innovation, the OTM says the University is not using the office to generate money. In fact, a federal law requires universities to maintain offices like the OTM in order to disseminate staff and student ideas and inventions.

Not to mention, the University barely breaks even after all the costs of obtaining these patents. Patent costs range between $2 – $3 million a year and are incurred by the University.

“Put it in perspective, for many innovators at Pitt, Pitt provides access to world-class labs and equipment and facilities,” Bates said. “Pitt also incurs the cost of the patent process and still provides meaningful distribution and revenue to the innovator.”

For those skeptical of a policy that allows Pitt to claim ownership and control of all inventions developed by university faculty, staff and students, the Patent Rights and Technology Transfers policy is available to the public.

“It is always good to know about university policy. If you come up with an invention, let us evaluate it based on the policy and make a formal decision about who owns what,” Chiara F. Orsini, Pitt’s associate director of intellectual property, said. “We will not automatically claim ownership because we are very fair about deciding ownership. However, everything is handled on a case-by-case basis.”

Pitt also provides assistance to inventors whose inventions are not affiliated with the University. The Small Business Development Center is one of the many agencies suggested by the OTM to counsel faculty, staff and students on what to do with innovations and business ideas.

“There are advantages to working within the University of Pittsburgh because even if Pitt cannot use your invention we provide outside resources to help in finding other avenues,” Orsini said.

Over the last few years the number of faculty-student collaborators participating in the process has significantly increased. During the 2006 fiscal year, the OTM received 165 invention disclosures from university faculty, staff and students.

On Sept.24, the annual Celebration of Innovation event will be held at the Pete to recognize the students and faculty who participated in the process of submitting an Invention Disclosure Statement. The students and faculty who received patents and licenses for their innovations will receive awards.

More than 60 students have been invited to the celebration this year-double the amount that participated last year.