The Path to Patent

For brain scientists chasing breakthroughs that could one day help patients of neurological diseases, their inventions face a long journey from the “eureka” moments to the market.

Before pharmaceutical companies are ready to take the risk of developing and commercializing new medicines, therapies or other tools that were born in the university laboratory, they’ll need the peace of mind provided by patent protection.

Randy Blakely, Ph.D., is the executive director of the Florida Atlantic Stiles-Nicholson Brain Institute and has a dozen patents to his name. He knows how complicated the patent process can be, and he credits support from university personnel and resources with making it as painless as possible.

“A good technology transfer office and a good patent lawyer? In this process, they’re worth their weight in gold,” said Blakely, the David J. S. Nicholson Distinguished Professor in Neuroscience and a professor of biomedical science in Florida Atlantic’s Schmidt College of Medicine.

At Florida Atlantic, the face of that process is Dana Vouglitois, associate director of the Office of Technology Development. Vouglitois is a patent attorney and the point of first contact for Florida Atlantic researchers with an invention that would benefit from intellectual property protection. She serves as a liaison between the researchers and the consultants, lawyers and industry partners who all play a role in patenting and commercializing a new discovery.

“It’s my job to be able to communicate the technology transfer process in a way that academic researchers who might not have any experience in this area can understand,” Vouglitois said. “And vice versa: I need their assistance to understand exactly what it is that they’ve developed.”

It’s important to get an early start, Vouglitois said. A discovery’s patentability can be impacted if it has been publicized, especially through academic papers or presentations. Publicly disclosing an invention bars patent protection in most of the world, while the U.S. allows a one-year grace period between disclosure and filing a patent application.

The first formal step in the university’s technology transfer process is filing an invention disclosure. This is a confidential document where researchers describe the details of their invention and its development. It’s a place to differentiate between their work and what’s already in place, including how it might improve on existing solutions. They’ll also report the sources used to fund their research, some of which may have terms that impact intellectual property rights.

After meeting with the inventors to ask questions, clarify and finalize the disclosure, Vouglitois works with an outside consulting firm to conduct an assessment of the innovation’s commercial potential. The firm uses its international expertise of the market to advise whether the university should invest the tens of thousands of dollars required to obtain a patent.

“That’s the objective resource that my office uses to make a judgment call as to whether we move forward with an innovation,” Vouglitois said. “Or maybe whether we return it to the inventors and recommend they perform some additional research and development before we’re ready to work with them.”

If the market assessment is promising, the next step is typically to file a provisional patent application. This work goes to an outside law firm that specializes in working with university technology transfer offices and can match the invention with a patent attorney with the requisite expertise.

The provisional patent application is like a placeholder — a stake in the ground that establishes a filing date that grants priority over any others that may try to file a patent application for the same invention.

The patent attorney drafts the patent application with feedback from the researchers. Vouglitois strives to make this as collaborative and transparent for the inventors as possible. She makes sure the communication between lawyers and researchers is clear and thorough so they’re aware of where things stand throughout the application.

In the meantime, the inventors continue to develop and improve their invention and generate more data, taking into consideration recommendations from the market assessment. Vouglitois prepares marketing materials, including a brief, nonconfidential summary that features a high-level description of the invention, its benefits and applications. She and the consulting firm will use this summary to pique the interest of companies that may be interested in pursuing a partnership with the university to develop the invention.

If a patent is awarded and the invention attracts interest from industry, one possible outcome is a license agreement between the university and a company. This gives the business permission to use the underlying intellectual property rights to commercialize the invention. The university maintains ownership of the patent, requiring the company to meet certain milestones and comply with other terms as it brings the invention to market.

A successful technology transfer process doesn’t all come down to patents and license agreements. A company that doesn’t yet see a viable commercialization opportunity could still seek another kind of partnership that could be just as fruitful for scientists and the university. That could mean sponsoring research in a faculty member’s lab or providing internship and job opportunities for students.

“I want this to be a positive experience for everyone from start to finish,” Vouglitois said. “Whether that’s receiving a patent that provides them with opportunities for professional accolades, or building a partnership with a company that helps bring their idea to the market so that people are benefiting from it in a significant way. I want people to feel like there is a benefit to working with my office, because that’s what I’m here to do.”