From Mind to Market
When faculty, students or staff make an invention such as a new method, devices or composition of matter, create software, author a work or build a database, the Office of Entrepreneurship and Innovation Partnerships serves as the campus resource to help assess, protect and leverage — to patent, market and license — the underlying intellectual property rights.
Critical Role of the Inventor
The inventor plays a central role on the critical path from lab to market. As a stakeholder, beneficiary and driver of the technology licensing process, an engaged inventor is key to successful outcomes, for example, in writing compelling patent applications with outside counsel and in identifying and developing the interest of prospective licensees.
From Intake Assessment to Marketing and Patenting
When an inventor or author submits a technology disclosure to our office, the initial evaluation may include an in-house or outsourced patentability review as well as a commercial assessment. We may launch a marketing effort right away — for example, disseminating a non-confidential description of the intellectual property in order to elicit feedback about commercial potential. The process of preparing a patent application with legal counsel can be valuable in posing “what if” and “did you consider” questions to the inventors. Often the process extends the boundaries of the initially conceived invention, provides guidance as to whether it may be too early (hopefully not too late!) to file for protection or otherwise provides insight to the faculty member’s research program.
On receiving the disclosure, we also engage with colleagues in the Office of Sponsored Programs to determine ownership and third-party rights, if any. Subject to contractual obligations contained in the research agreement, we notify a company sponsor when inventions have been conceived or reduced to practice under the project using Binghamton University facilities. A company research sponsor typically has a period of time to exercise its option to negotiate a license. Similarly, industry members of various Binghamton University research consortia often have built-in option rights to technologies that arose from projects conducted through the center. Likewise, we adhere to specific reporting and commercialization performance standards when working to transfer inventions made with federal funding.
Statistically, the majority of university inventions are not patented and do not develop into innovations that find their way to the market. (Sometimes, we “build it and no one comes,” to paraphrase.) This fact is not a reflection on the science or engineering merit behind a particular discovery, but a function of various business, budget, strategic and legal considerations. The office must weigh carefully the decision on whether to commit additional resources. Binghamton University invests in the patenting of almost half of the disclosures submitted to us. We look for opportunities to build patent portfolios and clusters of intellectual property assets in order to achieve a critical mass that facilitates marketing and licensing efforts. We may patent on a “speculative” basis, depending on the commercialization outlook, but like any operating unit, we have to live within our budget.
Entrepreneurs and Licensees Welcome
Platform inventions lend themselves to forming the core technology on which a spin-out company can be founded by faculty members and students. The Start-Up Suite at the Innovative Technologies Complex offers reasonably-priced pre-incubator space in both the Biotechnology and Engineering and Science buildings. Other, more incremental technologies are better suited to be licensed to a company with ongoing operations looking to reduce costs or add to its product or service offerings.
We welcome inquiries from members of the University community, as well as entrepreneurs, brokers, angel investors, venture capitalists and company business development executives, and look forward to introducing our technologies and inventors and discussing the structure of a synergistic business relationship.
Assistant Vice President Director, IP Management and Licensing