OTT30: Emory Patent Group

2015 marks the 30th anniversary for Emory OTT and part of that celebration includes a series of blog posts highlighting important “firsts” for the office.  This month we highlight the Emory Patent Group (EPG).

The Emory Patent Group, our in-house patent department, was created within OTT in 2010. While there had been cursor consideration in previous years there was now a need to cut costs and this would have to be looked at in detail. “We looked at the numbers much more closely, evaluated them, and ran them by in-house counsel,” says Todd Sherer, Executive Director. “We convinced ourselves that we could save around $375,000 a year.” While the primary driver was budgetary constraints, it also provided the ability to improve the pursuit of promising new technology both with the number of applications and their quality.

While the numbers seemed to add up pretty well on paper, it was hardly a sure bet. “We were a little bit reluctant, and a little bit concerned as to whether it would actually work,” acknowledges Sherer. Fortunately, once implemented, the approach exceeded expectations, delivering savings closer to $500,000 per year. “It has just been a raging success,” says Sherer. “On top of the [savings], we are also filing on twice as many applications as we were previously.

Having an in-house patent group in a tech transfer office is fairly rare due to the uncertainty of costs and the ability to address the high variability of technology. With Emory’s heavy focus on biomedical research this narrowed the field and aided in the viability of a successful program. Another key element of success is to keep the patent attorneys focused on prosecution and away from case management leaving that to the licensing associates. Keeping roles and expectations clear is critical.

With two attorneys and a patent manager, EPG brings Emory more than 50 years of combined patent law-related experience and over 20 years in-house corporate life science experience. This wealth of experience allows OTT to offer a more in-depth analyses of our intellectual property assets for commercialization. It has also improved the collaboration between licensing and patenting and the balance between intellectual property protection and costs.

To learn more about EPG visit our website here and to learn more about intellectual property visit our website here.

Note: quotes from Todd Sherer originally in Technology Transfer Tactics article ”TTOs slash patent costs, boost efficiency with internal patent attorney groups,” August 2014, found here: