September 21, 2020
Is this an Invention?
By Dennis Thomas, Associate Director, Life Sciences
Sometimes, it is obvious. It is easy to equate developing a new drug or gene therapy that can cure cancer and treat diseases or a device that heals fractured bones as a new invention. The invention has a clear path for becoming commercialized in order to move it to the people that need it. The steps are easy to follow:
- fill out an invention disclosure
- absent an existing partner (sponsor, startup) already interested in the technology, OTC will perform an initial market and technology assessment to determine patentability, potential market, existing competition, and potential licensees
- if patentable, you will work with an OTC licensing representative to file a patent application
- OTC will work to identify a partner or help with forming a new company to further develop and commercialize the technology
Not all inventions require a patent
Those types of patentable technologies (drugs, hardware, diagnostics, devices) represent much of the portfolio on which OTC works but are not the only types of intellectual property (IP) invented at Duke. A published paper describing a unique research material such as a mouse line, cell line, plasmid, or antibody would not necessarily need to be patented as these types of IP may still have commercial value. Additionally, data and software can be licensed. Licenses for these types of research materials are common and may involve one-time payments or royalties.
Another example of inventions that don’t necessarily need to be patented to be commercialized is copyrightable works. One example is an “instrument” called the Impact of Weight on Quality of Life-Lite (IWQOL-Lite). IWQOL-Lite is a copyrighted, patient reported outcome instrument developed by Ronette “Ronnie” L. Kolotkin, Ph.D. This is a validated survey a person takes to understand their own perception of how their weight is affecting their lives. This instrument has value in individual patient care and as an outcome measure in clinical trials.
IWQOL-Lite has been licensed by OTC hundreds of times. Further, OTC recognized that this paper instrument could benefit from moving to an online or app-based format. The office partnered with a company to produce and sell electronic versions of the instrument and continues to be a success for Duke today.
Your valuable IP
Failing to realize the value of your material is not unusual. Often inventors will only understand this once they start to get interest from companies after a publication.
Researchers that receive such requests and inquiries from outside companies should reach out to OTC to ensure these research tools can be made widely available through commercial vendors or license them to individual parties. OTC will also make sure they are listed as available on the OTC website under “available technologies.”