One of the key responsibilities of the Office of Technology Transfer (OTT) is determining which form of intellectual property protection is most appropriate (and feasible) for inventions arising out of research, and other activities, at Emory. The Emory Patent Group (EPG), one of the pillars of our ReTechTran program, was created in 2009 as an innovative way to address budgetary constraints and improve our ability to pursue promising new technology. These constraints had started to impact our ability to protect new technologies effectively.
Emory’s goal is to draft, manage, and prosecute all patents for unlicensed technologies in-house rather than working with an outside law firm. Bringing patent work in-house is very uncommon for university tech transfer offices. Two distinct challenges that often keep universities from creating an in-house patent counsel include 1) uncertainty whether there will be real cash savings, and 2) concern that a few in-house patent attorneys will not be able to cover the high variability in technology. OTT has carefully evaluated the implications of bringing our patent work in-house including the potential cost savings. Further, unlike many universities Emory’s focus in biomedical research makes it more practical to cover all relevant technical areas compared to many of our peers.
In its current incarnation, the EPG is a team of two attorneys and a patent manager. “We’re fortunate to have such a talented group of professionals in EPG” says Susanne Hollinger, Director of License and Patent Strategy and team leader for EPG. The EPG team brings us more than 50 years of combined patent law-related experience and over 20 years in-house corporate life science experience.
The EPG will be completing its third full year in August 2013. “In its first two years, the initiative has been wildly successful by both achieving its budgetary goals and filing a record number of new patent applications.” says Hollinger “In the first year alone Emory OTT exceeded our previous record of newly filed patent applications by more than 30% and we expect these additional filings to lead directly to more licensable technology in the upcoming years.”
The EPG is consistently praised by our constituents for its abilities and accessibility and has allowed OTT to offer more in-depth analyses of our intellectual property assets for commercialization. It has also improved collaboration between licensing and patenting and alignment between intellectual property protection and budget goals.
Stay tuned to future pieces from the staff in EPG.