The article below appeared in the December 2009 issue of Technology Transfer Tactics. Click here to subscribe.

As a relatively small technology transfer office, the Office of Economic Innovation and Partnerships (OEIP) at the University of Delaware (UD) in Newark “doesn’t have the luxury of being able to personally guide every single invention or patent application that comes into our office,” says Bruce Morrissey, director of technology development at OEIP’s IP Center. “So we developed a team approach with our law firm to get some leverage on that process. This frees us from having to worry about the patent procurement effort and deadlines so that we can use our staff for marketing-related purposes.”

UD’s relationship with its law firm, RatnerPrestia, pre-dates the summer 2008 creation of OEIP. When Morrissey originally came on board, UD’s legal IP work was spread among eight or nine law firms, “none of which had enough of our work to prioritize our needs by giving us a docket report or reviewing the key decisions that we would need to manage our portfolio,” he stresses.

Morrissey put out a request for proposals to determine whether consolidating legal services with one firm could enhance the support the office was receiving. “That RFP highlighted several issues,” he explains. “We wanted a high-quality work product that was timely and responsive. We also wanted to obtain those services in a way that gave us the benefit of the experience and judgment of the lawyer. In other words, if a lawyer is working for eight or 10 companies and sees a path to market for one of them, without betraying confidences we would like that lawyer to suggest to us other licensing or commercialization opportunities. And frankly, we wanted to do all of this at a fixed cost that we would know in advance.”

In October 2006, a UD selection committee awarded RatnerPrestia an exclusive arrangement, says Morrissey. Over the past three years, that relationship has developed to the point that “RatnerPrestia is an integral part of the team,” says David Weir, PhD, director of OEIP. “The coordination between us is very close.”

RatnerPrestia’s main role in the partnership is patent preparation and prosecution, says CEO Paul Prestia. “Many universities struggle with patent preparation and prosecution. It is an expensive proposition and often unpredictable. Here, UD has undertaken internally and with us in partnership to try to make that a more rational activity.”

As UD requested, RatnerPrestia is paid using a fixed-fee arrangement based on the incremental steps in the patenting process, Prestia reports. “We have different stages of patent applications that we will do at fixed fees so that the University of Delaware has a standardized fee structure. The fees are established in relation to the survey of fees that the American Intellectual Property Law Association publishes.”

RatnerPrestia has designated Rex Donnelly, managing shareholder of the firm’s Wilmington office, as the partnership’s relationship manager or primary contact. In addition, the firm has named lead senior attorneys to be responsible for each of the four main technology areas typically covered by UD patents: mechanical, electrical/physics, chemical, and biotechnology.

“So the attorneys we work with tend to become rather knowledgeable about the university, our personnel, and the kind of work that we do,” says Morrissey. “What we learn on one case can quickly be applied to another case, and that hold-over experience is beneficial.”

Off to a fast start

RatnerPrestia gets involved with OEIP “at a very early stage,” he says. “Rather than just receiving a finished invention disclosure that someone else has prepared, we help the inventor participate in the preparation either before a regular application is filed or at some stage, depending on the level of information.”

This early involvement begins at the first marketing review session that OEIP holds for every invention disclosure. RatnerPrestia attorneys participate in this meeting to “evaluate what has been done so far and help the inventor determine what additional information they need to give us to reach the next stage of patent preparation,” says Prestia. “The university decides where in our incremental application stage we should be — and whether we should eventually produce a non-provisional application that leads through regular patent prosecution and into an issued patent.”

Including RatnerPrestia in the initial marketing review gives the attorneys “a better understanding of the utility of the applications,” says Morrissey. “That understanding could become invaluable in patent prosecution, and sometimes they make a recommendation as to an option that we might not have been familiar with.”

The marketing review is just one of several consultation sessions that go with each invention at various stages. These regular meetings allow for significant “back-and-forth interaction” between tech transfer staff and RatnerPrestia, says Prestia.

“Some of those consultations are complimentary to the university within certain time boundaries and stages,” points out Donnelly. “From our perspective as a law firm, getting those discussions in early helps us fix the disclosure at a point where we can efficiently prepare applications.”

This upfront vetting of all of the issues that could drive up the cost of an application later in the invention’s lifecycle is the key to the firm’s ability to operate on a fixed-fee basis, relates Prestia. “Cost overruns in patent preparation work are often caused by invention disclosures that are less than complete. That’s what we try to avoid.”

If a patent attorney writes a patent application based solely on an invention disclosure or research publication without ever engaging in discussions with the inventor or the TTO, “two or three years later, the applicant may be dealing with an application that doesn’t necessarily cover everything it should, and by then it’s too late,” explains Donnelly. “So it’s important to have those conversations as soon as possible to get the right patent scope. We are having those discussions with university inventors early, before we start writing, so that all the important information is in the first draft. This is far more cost-effective than adding new matter in later drafts, and infinitely better than never getting that information in the application at all.”

RatnerPrestia and OEIP also hold quarterly meetings to discuss the partnership and patenting activities. “We talk about what our actual costs have been relative to the fees, we talk about how much time it is taking us to get from the disclosure stage to the prepared application stage, and we talk about specific cases that might be of particular interest,” says Donnelly. “In addition, we look at the overall numbers. How many disclosures have there been in the last period, and is this where the university wants that number to be? Are there ways in which we can encourage more invention or more disclosures? So the university is taking an overall look to boost its program, and we are an integral part of that.”

In addition to its work on the patenting side, RatnerPrestia is heavily involved in OEIP’s deal-making process, says Weir. “Since they are in the flow from the very beginning, once we get into negotiations on licensing or taking equity, they are a major part of that process as well.”

The office decided to involve its law firm throughout the entire tech transfer process to help “connect the pieces from the inventor to our IP Center and through to the outside,” says Weir. “We felt it was important to have RatnerPrestia part of the team so there was no passing the baton from one piece to the other. They would be seamlessly involved.”

This comprehensive approach also helps RatnerPrestia “feel greater ownership for the success of the whole process as opposed to their particular segment of it,” he adds.

Contact Prestia at 302-778-3470 or pprestia@ratnerprestia.com; contact Donnelly at 302-778-3460 or radonnelly@ratnerprestia.com.