It's novel...SO WHAT?


As many of you may know I originally hail from mainstream patent practice with a background in patent prosecution and litigation. Although this background has been very beneficial in the tech transfer environment, there have been various lessons I have learnt on this side of the fence that fall outside of the typical patent considerations that I had previously been accustomed to seeing.

Patent attorneys are tasked with assisting clients in prosecuting patents through to grant and to dealing with the various objections raised by examiners in relation to the novelty and inventiveness of the invention described in the patent. This involves careful consideration of the objections raised in order to make adequate amendments to the claims or alternatively to structure an argument to attempt to convince the examiner that your client's invention is indeed new and/or inventive. This is by no means a trivial or easy task! A patent attorney is able to celebrate a great success once the patent has been prosecuted to grant and the client is adequately protected from a patent point of view. The exploitation of the patent is then up to the client and, although the attorney may be involved in assisting with license agreements, it is up to the client to find licensees.

In the tech transfer environment the focus is on building relationships with partners and licensees and hence the patenting portion of the technology commercialisation journey makes up just a fraction of the entire journey. "Is it patentable?" is only one of the questions asked when making a strategic patenting decision. Obviously, if after an initial assessment the technology appears to be both novel and inventive, protecting the technology using the patent system will be considered. However, the other very important consideration that is taken into account is whether there is a market for the technology? Having a patent is great and in most cases is a first step in the commercialisation process BUT having a technology that is working/available for purchase in the real world is what we at the tech transfer unit are aiming to do. The patent is just a tool in the commercialisation process. In order to do this, a patent is merely a tool to aid in protecting a competitive advantage and in providing leverage in the negotiation of license agreements.

In addition to considering patentability, the tech transfer team informs every patenting decision by considering whether the technology is marketable and, if so, where the major markets for such a technology exist. When considering these markets not only do we consider where the developed products would be sold but also where they would be manufactured as it is often important to protect the sale as well as manufacture of the technology in order to provides potential licensees with sufficient comfort that their competitive advantage would be protected. Competing products are considered, as are market penetration and market size. Patenting can be very expensive, in the order of R1 million per technology, and we therefore need to ensure that these decisions are supported by market realities and that there is at least a reasonable chance that the product would be marketable in a particular country. Looking at the market also provides a very good opportunity to investigate who the players in the market are, as these players can provide a point of departure when deciding who the potential licensees or partners are. We have found that many researchers have connections with industry and that these connections are very helpful in establishing partnerships and relationships to advance the technology which may ultimately result in the successful commercialisation of the technology.

This has been quite a journey for me and the sum of that learning is that having a patent is great, BUT SO WHAT!? A patent is only useful where there is real potential for commercialisation. It is our hope that well-informed patent strategies, that consider all relevant aspects, will lead to commercialised technologies and put Wits on the map as a technology provider in addition to it being known at a top class higher education institution.

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