What are some of the most common start-up mistakes that scientists make and how do you avoid them?
Here are 6 of the most common mistakes made in the licensing process:
Not involving the Technology Licensing Office (TLO) early in the process
Invalidating your patents by
Making a public disclosure prior to filing
Not documenting invention and date
Not getting documentation witnessed
Not citing all known prior art
Not describing best mode
Including erroneous or excluding valid inventors
Poor search to identify dominating patents, and prior art.
This is primarily the responsibility of the TLO, but may include the assistance of the investigator.
Not hiring good lawyers
Not writing patent claims to cover how others might circumvent your patent. This is usually the responsibility of the lawyers and the TLO.
Not helping the TLO
One way to help is by suggesting some companies and individuals who might be interested in licensing the technology or who are funding research in your area.
TLO officers have large portfolios of IP and are very busy. You typically will know your area better than they do, so if possible, make it easier for them by suggesting some leads.
Not allowing the TLO to negotiate the terms of the license.
It rarely happens, but if you try to negotiate a license directly with a company then a less than optimal license can result. It is better to let the TLO take the lead since they often have significant experience and know what the industry norms are for licenses.