How BU Cut the Long Wait for Patents in Half
Have an idea to make the world a better place? BU Technology Development wants to fast-track your patent.
Ed Damiano, a College of Engineering biomedical engineering professor, shows off the medical device he developed to help people with type 1 diabetes. Photo by Jackie Ricciardi
Some academic researchers shrink at the idea of patenting their work. Why put protections on an idea you want the world to own and use? When Ed Damiano, professor of biomedical engineering (ENG), first conceived of his technology for a bionic pancreas to automatically control blood sugar levels, it wasn’t money on his mind—but his then infant son, David, who had just been diagnosed with type 1 diabetes, and the millions of people around the world who suffer from the disease.
Yet securing a patent is a critical first step in making technology accessible to real people. Professor Damiano worked with BU’s Technology Development office to patent his invention, and eventually spun out a public benefit corporation, Beta Bionics, to ensure his device would be commercially available to the people it was created to help (a milestone the company anticipates this year).
“If you want your technology widely available, you need to find someone to invest in it,” says Ken Zwicker, Executive Director of Intellectual Property & Licensing, BU Technology Development. “A patent is your proof, courtesy of the U.S. government, that the invention is yours and yours alone. No company will invest in your technology without that security.”
Patents are important, but they aren’t easy to land. The patent examination process is a legal negotiation with the U.S. Patent and Trademark Office (USPTO), involving the exchange of information, argumentation, and amendment. In the past decade, it’s taken an average of 6.4 years for BU inventions to move from an initial disclosure submitted to the Technology Development office to a successfully issued patent.
The Grand Experiment
In 2017, Mike Pratt, Managing Director of the Technology Development office, embarked on a “grand experiment” to fast-track development of the vast array of technologies emerging from BU’s research community. One component of this experiment was to expedite examination of patent applications using a USPTO process referred to as Track One Prioritized Examination, which strives for a one-year patent application turnaround.
Track One isn’t for everyone, and this strategy shift represents a calculated risk on the part of BU. First, it requires a significant upfront petition fee, which the University pays whether or not a patent is ultimately issued. Second, the process turns patent examination from a hand of gin rummy to a tennis volley. A delay of even a single day will cost additional fees and the immediate loss of Track One status, meaning the Technology Development office must play at the top of its game. Third, the expedited process doesn’t build in time for the testing and honing of a product’s commercial viability before setting the terms of its patent claim—something the longer, traditional process allows for.
Still, the benefits may well be worth the risk. By moving on as many promising, early-stage technologies as quickly as possible, the office hopes to see more early-issued patents, offering something tangible in-hand to incentivize investment in downstream product development. Track One provides helpful information about the scope of a product’s patentability, allowing BU to make more informed decisions about pursuing additional international protection down the line. Finally, Zwicker believes that over time the cost savings from reduced attorney and extension fees (associated with the traditional patent process) will begin to offset the higher upfront fees—saving BU money overall.
Early, Promising Results
Since 2017, Technology Development has fast tracked the majority of applications filed from BU using this Track One process—and initial data is promising. The average time to issuance for successful Track One patents is 2.9 years from the time of first disclosure to the Technology Development office. That’s 3.5 years shorter than previously. For BU researchers, such as the team behind the BU Photonics Center’s breakthrough MRI enhancement, issued patent #10,324,152 in June 2019 following a June 2018 Track One submission, this strategy means a shorter wait-time, less uncertainty, and, if all goes well, an accelerated path to market.
As for the “grand experiment”—testing whether early-issued patents will prove more attractive to potential licensing companies, and ultimately help realize the full impact of BU’s research—the investigation continues. Technology Development is closely tracking this data and plans to report out to the University research community as trends begin to emerge in the years to come.
Patent Now, Publish Later
Zwicker emphasizes that for BU faculty and researchers with a new idea or technology, the most important thing you can do is to talk to someone in the Technology Development office as early as possible. Too often, researchers publish or give a talk before kicking off the patent process, inadvertently undermining their ability to get the invention into the hands of real people by protecting it with a patent or licensing it to industry.
To submit a technology disclosure, visit the Research Support site, or email otd@bu.edu with questions, ideas, or to set up an initial meeting.