It’s a tale as old as tech transfer: an academic researcher invents a revolutionary technology and wants to get it out of the lab to the public, maximizing its real-world impact. But there are many steps involved in this process – including securing intellectual property protection via patents. For that, they’ll need a patent application with strong claims and knowledge of their university’s IP policy.
If they’re an Emory inventor, the Emory Patent Group (EPG) is the go-to resource for navigating the patent process.
Patent Power
When Emory inventors make a discovery or innovate a new technology, they disclose it to the licensing team at Emory’s Office of Technology Transfer (OTT) to see if it’s viable for commercialization. If the licensing team evaluates the tech to have market potential, that’s where EPG steps in. Their job is to help inventors and the university secure their intellectual property, including filing and prosecuting patents.
“We turn the invention disclosures into patent applications,” said Jim Mason, a patent counsel in EPG. EPG also advises the licensing associates on the patentability of new technologies they receive.
The Dream Team of Patent Experts
Right now, EPG has four members:
Jill Uhl – Director, License and Patent Strategy & Chief Intellectual Property Officer
Uhl manages the day-to-day operations of EPG and oversees the legal and administrative processes of the group.
Randi Isaacs and Jim Mason – Patent Counsels
Isaacs and Mason are the in-house patent lawyers who, according to Isaacs, “work with the licensing associates to align our protection strategy with the intended commercialization strategy.”
Kristi Rebel – Patent Manager
Emory owns more than 900 patents and has many others pending, and someone has to keep track of those patents and documents. Rebel is responsible for preparing and managing documents throughout the patent process.
An In-House Legal Team Like No Other
According to Winsome Dunn, EPG’s patent manager from 2010 to 2015, “[EPG] is like bringing together a law firm of people with specialized patent knowledge and bringing them into the university to do assessments and protections, and it’s at a great cost-savings to the university.”
The first members of Emory Patent Group, 2010: (l to r) Randi Isaacs, Winsome Dunn, Susanne Hollinger, James Mason
OTT Executive Director Todd Sherer estimated that EPG’s creation in 2010 has saved Emory close to $500,000 annually while doubling the output of patent filings.
Aside from saved costs and increased patent applications, there are other perks to having an in-house patent group.
- The current EPG team brings Emory more than 60 years of combined patent law-related experience and over 30 years in-house corporate life science experience.
- This depth of experience saves time and money, benefitting both the university and the inventors; no need to spend extra time explaining complicated technologies to patent counsels without deep knowledge in medical innovations.
- EPG is also dedicated solely to patent prosecution. Their presence takes this crucial part of tech transfer off our licensing associates’ plates, so they can focus on case management.
- Finally, just a handful of U.S. universities have an in-house patent group due to the uncertainty of costs and the ability to address the high variability of technologies disclosed. But because more than 90% of the inventions disclosed to OTT pertain to life sciences, EPG is able to maintain a narrow focus and find success.
EPG helps Emory and its inventors shine in a competitive environment. By securing patents and helping close deals, the team plays a crucial role in making Emory inventions more attractive for licensing, saving time and money, and maximizing Emory’s research impact.
– Jenna Woods