Why License Patents

Impact Through Patenting at PSU

What is a Patent?: a patent is a description of an idea that meets standards of novelty and usefulness required by US Patent and Trademark Office. A patent gives the owner the ability to stop others from using the patented idea without permission for a limited time (around 20 years) or, with permission of the patent owner, to encourage the development of the idea toward an identified objective or impact. In many cases the basis of a patent will be:

• a novel innovation that addresses a known market need,
• an idea which may (or may one day) be able to solve an important problem, or
• research results that could become part of a product or service.

To give your idea the best chance at becoming a valuable patent, it is important to discuss/disclose to IIP before publishing (including conference and poster sessions); public disclosure will often limit the scope of patentability.

What does “impact” mean?: Impact can mean many things:

• Innovations that would never have left the lab notebook but for the incentivized investment due to the patent is one kind of impact.
• When an innovation becomes a startup company, the jobs created (usually in Oregon), State revenue from sales of products (often made in Oregon), and benefits to those buying the product (such as a new pharmaceutical) are another kind of impact.
• When an innovation encourages a large company to partner with PSU, sponsoring work to build an early-stage idea into a real product, the experience of the students involved and relationships built are another kind of impact.
• When PSU licenses a patent and revenue comes to a department, lab, or center, that revenue can be utilized to invest in education or research that would otherwise lack funding.

Who owns the patent?: PSU claims ownership of most innovations created by staff and faculty. In most cases, non-employee students will own their innovations. In cases where the activity is funded by an agreement, the terms of that agreement may change the patent ownership guidelines.

In the general case, Oregon Administrative Rules (OARs) state that patentable works will be owned by PSU as a condition of employment if at least one of the following criteria are met:

• The work was developed performing activities of a sponsored project, gift, or grant-funded activity,
• the work was developed during the performance of employment duties, or
• the work was developed using institutional resources.

IIP is here to help if you have concerns about ownership or your rights or obligations related to patentable innovations. Please get in touch if you need to discuss ownership questions.

My research is federally funded or otherwise paid for by others, why should PSU patent it rather than give it away?: It is true that some innovations have inherent commercial value, need little to no investment to obtain market adoption, and by publishing the results could achieve our goal of impactful research. There are also many cases where there is no commercial value to research results, the value is primarily in dissemination of knowledge and hoping others can benefit. In each of these cases, there is probably no incentive to patent.

IIP focuses primarily on innovations that look like they could make a big impact, but the destiny of the innovation is uncertain. In those cases, there are often unanswered questions to pursue, prototypes to make, and business models to figure out. The work needed to take an innovation from lab to commercial product or service is significant, and therefore those who invest their time, money, or expertise into commercializing a patent owned by PSU will want to be confident that eventually, they will be able to recover their investment through licensing.

In cases of federally funded research, the entire federal government will have free right to use any patents which result from that research. This is normally the case with State and other funding agencies as well.

Reasons to license a patent: in most cases, creating impact with an innovation requires much more work than simply filing a patent. Patent law grants the owner of a patent several exclusive rights to control the use of the idea in the patent, essentially creating a limited-time monopoly on an innovation that incentivizes investment in the innovation. The rights include the exclusive power to, make, use, sell, or otherwise utilize the idea described in the patent. While a published idea without a patent is free to anyone to use, a patent gives PSU and the inventors the right to proactively determine the next steps in taking an innovation to market, which could be a license to an existing company, forming a startup, or seeking an applied development partnership with public or private funding. In most cases, a license to the patent will be given in exchange for a fee, and depending on the technology, a patent could be licensed many times to many different licensees.

Why should there be a licensing fee: PSU invests in several patents each year with the goal of protecting innovations that, with further future value-added by licensees, may create a much bigger impact on society than if the discovery was published without patenting. Licensing fees first recoup the patent costs, which are then used to invest in future patents; fees in excess of patent costs are disbursed among the college/department/center of the inventors, IIP, and the inventors personally, according to the IP revenue policy.

If I Have an Innovation to Discuss, What Should I do Next?:

• Get in touch with IIP.
• Disclose your work.
• IIP will read the disclosure and get in touch about potential next steps.
• Find partners or licensees for technologies that are patented.

Ready to disclose: access the Inventor Portal here.

Once your request has been approved, you may disclose your work by visiting the same url.

Please don’t hesitate to contact me should you have any questions or concerns. I’m here to help! My contact information can be found below.

Travis Woodland
Director, Innovation & Intellectual Property
503-725-8336