Importance of Intellectual Property
Why is intellectual property (IP) so important when you're pursuing technology commercialization?
Some corporations create value through the development and sale of high-volume, competitively priced commodities, and their competitive advantages may be attributed to various combinations of technical skills (know how) and production and distribution scale, but with little reliance on IP other than that associated with corporate and product brand management.
However, in the university environment researchers are focused on the creation of novel product concepts (inventions), the future value of which greatly depends upon whether or not proper steps are taken early to define and protect the associated intellectual property.
These assets, likely in the form of patent applications, provide the downstream opportunity for a licensee to obtain legal “monopoly” status for the technology. This is the foundation for a “sustainable competitive advantage”, which encourages the investment needed to transform the invention into a successful commercial innovation.
Protecting intellectual property provides an opportunity to gain “sustainable competitive advantage”…
IP maximizes the value of a solution to a given problem by excluding others from being able to use it, creating an advantage that is attractive to investors.
NOTE: Conversely, not having properly secured intellectual property may make it more difficult, or even impossible to bring technology to market.
Within the university environment, the “provisional” patent is often utilized as a strategy to secure invention protection with an early priority date soon after disclosure. This allows an inventor to then publish the findings prior to the filing of a “full” patent application. This mechanism, while attractive, is associated with coordination of multiple parties and time pressures that can result in a poor outcome if not taken seriously by the inventor. For more information, see “What is the meaning and value of provisional patent applications?”
There are four methods to protect different types of intellectual property:
- Trade Secrets
In review of the Patent & Copyrights Tutorial, you will learn the essential attributes that an idea must have in order to qualify for a patent, the most common form of IP protection. You’ll also learn how to determine who among your collaborators should be included as inventors in the disclosure of an invention. And, as part of your preparation toward the disclosure submission, you should determine early in the process how original your idea is with respect to other existing approaches, which are referred to as “prior art”.
One objective of that section is to acquaint you with the basics of how to conduct your own preliminary prior art search.
It’s also important to understand that, at some point, the university (or a licensee) may also need to ensure that the technology in question can be used and exploited without impediments. For example, even granted patents should be assessed for “freedom to operate”, a concept of patent law referring to the potential infringement of other issued patents.
Patent coverage is the most common type of intellectual property protection involving technological innovations...
An unavoidable fact is that patent preparation and filing fees are expensive, from hundreds to thousands of dollars. Therefore, there is a need to be selective and strategic regarding what is filed.
Ultimately, everyone wants to maximize the scope of a patent’s coverage while minimizing costs associated with it. In industry, companies typically have patent committees decide which inventions are worth filing at a given time.
At UC San Diego, the Office of Innovation & Commercialization (OIC) assigns a Licensing Officer who will review your invention disclosure and work with you toward a decision whether or not to file a particular provisional or full patent application.
To review the steps in the patent application process, go here to see the UC San Diego Invention Disclosure form.
For a thorough review of the basics associated with intellectual property development and protection, visit the Patent & Copyrights Tutorial. Content provided in that section has been derived primarily from various web-based publications produced and maintained by the U.S. Patent and Trademark Office (USPTO).