Patent Licensing

While the title of this paper is a very general one, I will spend most of my time discussing the licensing of patents which cover inventions made at educational and scientific research institutions. I will draw heavily on my personal experiences gained during the last 17 years with the invention administration programs of Research Corporation. It should be noted, however, that these perspectives will admirably illustrate the general principles involved in developing and carrying out any patent licensing program. Inventions and patents covering inventions may be brought into public use by several means. The owner of an invention or patent may, himself, undertake its further development and marketing. He may do this jointly in partnership with other individuals, or he may outright sell or assign the invention, know-how associated with it, or corresponding patents to others for commercialization. By far the most widely-used method of developing commercial interest in university inventions is through licensing them to other individuals or industrial organizations with the necessary entrepreneurial, financial, managerial, technical, and marketing capabilities. This method is particularly applicable to patents covering university inventions, and is the primary method used by Research Corporation. Usually, licensing of inventions and the patents covering them brings the greatest overall financial return to the patent owner at minimum risk and with least involvement in areas where needed expertise may be weak or missing. Little or no capital investment is needed, business and managerial problems are minimized, market development is rapid, and a wide distribution of final products is accomplished in minimum time. However, like the proverbial rabbit stew where the first cookbook instruction is to first catch the rabbit, one must first at least file an application for a patent before patent licensing can begin. Let me now digress to discuss briefly the evaluation and patenting of inventions, necessary preliminary steps to obtaining issued patents.