In a Sept. 3rd post, we noted a recent business method patent application filed by Jan Buck, describing a “unique” for-profit technology commercialization model within an operating company, focused primarily on university research. Now, in a series of interviews, a number of observers have given the application little chance of granting. But several firms and organizations that use a similar model say they are not taking it lightly either, given the U.S. Patent Office’s record of, let’s say, unpredictable decision making. Detractors say the process Buck describes is already working in TTOs and companies in the U.S. and overseas — the UK in particular. But an official at one of those UK companies, who says his firm does almost exactly what Buck claims to have invented, takes a “never say never” approach and notes that a successful application on Buck’s part could alter his company’s plans for working with U.S. clients. “I do not believe the patent office will grant the application in its current format,” says Mark Fisher, PhD, chief technology officer at Exomedica Ltd., a medical technology developer based in London. “However, we must prepare for the worst-case scenario.” That’s why he’s discussing the case publicly as much as possible — to “draw any patent examiners’ attention to what’s happening in the wider world.” If the Buck patent application is approved, he explains, “it will simply prevent us from establishing Exomedica Inc. as a U.S.-based business in the future.” Fisher says Exomedica plans to “meet the application head on and prevent its progression to grant.” The patent application in question, #20080201193, appears to be nothing more complex than commercializing university research through a for-profit operating company. (For a complete description of the “invention” and list of claims, go here). Other tech transfer experts without Fisher’s directly competing interests nonetheless share his skepticism about the patent application’s eventual success — but they share his concerns about it, too. The fact is, they note, stranger things have happened. “New business models are emerging daily,” says Debra M. Amidon, founder and CEO at ENTOVATION International Ltd., Wilmington, MA. “Whether they are patentable or easily protected in a global knowledge economy is subject to question. But that does not mean one should not try. There is an entire new arena of knowledge markets, which can include IP exchanges and patent pools, networking grids, matching or brokering services, clearinghouses, knowledge banks, and auctions. This is only the beginning,” she comments. G. Michael Alder, TTO director at Brigham Young University, takes a more doubtful view. “It’s not a new idea,” he says. “Emerging Technology Partners of Alabama (where Alder served previously as CEO) followed the same plan from 1996 through 2006.” John Fraser, past AUTM president and assistant vice president for research and economic development at Florida State University, has a similar feeling of déjà vu. “I suspect that prior art will prevent that business method application from issuing,” he comments. “Buck is in essence describing something that already exists — a for-profit technology transfer company that is a stand-alone entity. A partner and I created one in North Carolina in the mid 1980s and sold it. Also, [University Technologies International] exists in Calgary, Canada, as the for-profit company for the University of Calgary’s tech transfer activities.” A detailed article on the patent application and its prospects for success appears in the October issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

Posted October 29th, 2008 under Tech Transfer

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