Report of Invention: Not Just for IP Protection Anymore...

You may have noticed that the JHU Report of Invention (ROI) has undergone changes throughout recent time. Indeed, it's a living document. We not only are interested in improving the convenience of the ROI, we are striving to make the entire process of reporting an invention easier, more efficient, and more fruitful.

The process improvements are served not only by the way in which the ROI is electronically completed and submitted but also by the inclusion of marketing-related information that now needs addressing.

Why do we need marketing info at the time of disclosure? Because we are "under the gun" to attract a Licensee within one year from filing a provisional patent! JHU takes advantage of the Provisional Patent Application (See Research WebNotes April 2003) in our first pass to protect your intellectual property (IP) as it allows us to take a year to explore the demand for the technology in the marketplace.

This year period buys JHU time to find a Licensee that will reimburse JHU for patent costs before we have to make decisions to pursue more formal and expensive, IP protection. Without a Licensee willing to become a commercialization partner, it becomes less likely that JHU will speculate on the individual technology and incur patent costs (See Research WebNotes June 2003). For this reason, and because "time flies", we need you to provide marketing information in the ROI!

The marketing summary section on the third page is the place for you to describe your invention in a non-disclosing but promotional sense. After all, no one more than you know what is great about your invention! We need you to share this with us so that we can shop it around to potential Licensees, starting, of course, with those companies you listed on the ROI.

While you are writing the marketing summary, keep in mind that its role is to stimulate interest from skimming it …fast. Therefore the summary should be written more for the layman and in a quick-read style, kind of like this article. Don't fret over this! Its not expected that you'll write "Madison Avenue" advertising copy. And, the corporate business development executives probably have advanced science degrees, just like you! They will understand many of the technical terms you use and expect disclosing tidbits to be excluded.

Briefly describe what is great about the invention, its potential commercial use, its stage of development, and perhaps why it is an improvement over existing technology. If there are specific compounds in the invention, use basic classification so as not to be disclosing and giving too much information away. We want to capture their curiosity such that they come back to us to get more information (provided only under a Non-disclosure Agreement, (See Research WebNotes, November 2003 ).

How do we actually use the marketing summary? We post it on outside IP exchanges such as TechEx, Tech Meta Search, UVentures, Pharma-Transfer Ltd., Pharma Ventures, Knowledge Express, Global Technoscan, and Kristi. We post it to our own website so that interested parties (perhaps your mom) can check out what's happening at JHU. Go to: www.ltd.jhu.edu. We insert it into e-mails for direct marketing campaigns. We print them in a JHU LTD template and hand them out like brochures at meetings and seminars. We really use them! It is our single most important tool for disseminating what's good about your invention!

We also ask that you check off the keywords that best describe your invention. We provide them to the IP exchanges along with the marketing summary as they push your summary to companies based on keyword matching. Companies can also search for inventions using selected keywords of interest.

Because corporate business development executives are bombarded with technologies available for licensing from universities around the world; the "jury is still out" on the effectiveness of the IP exchange push method. As executives are awash in information, we find that using the summary in an e-mail to a company business development executive provides the best response…either way.

We may also learn why a technology may NOT be of interest. This can help us in either targeting a different market segment or indicate if more work needs to be done by the inventor to make the invention more marketable or even if there is just to many background rights out there to warrant not going forward with expensive patent protection. The truth is: not all patentable inventions are commercializable. Marketing efforts help us learn what is, and what is not, of commercial interest.

We also ask in the commercialization section( on page 4) for names of companies that you think may be interested in your invention. List the companies that you think have core competencies or strategic interests in your area of expertise. List companies that have called you or approached you at scientific meetings or that have requested tangible materials from you (See Research WebNotes, November 2002 ). If documented on the ROI, all of these experiences can quickly steer us in the right direction to stimulate further bona fide commercial interest that can lead to patenting and ultimately the transfer and utilization of your discoveries for public benefit.

All of these marketing activities are usually happening before we have actually established the asset, i.e. the specific claims sought after. Therefore, we need the marketing information at the time of disclosure and we value your input in the marketing process. One of the best indicators of future success of technology transfer is if the inventor is engaged in the disclosure and patenting processes and also if the inventor develops a good relationship with the licensing company. After all, no one knows more about what's good about your invention than you!

For more information regarding LTD's marketing processes or if you wish to discuss marketing summary preparation, please contact: Catherine Vorwald, Assistant Director Licensing and Technology Development, at cvorwal1@jhmi.edu or call 410 526-4964.

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