Track D

D9 Benchmarking Study: Best Practices for Filing and Converting High Tech vs. Biopharma Patents Among 25 AUTM Institutions

Track: Nuts and Bolts of Technology Transfer

Target Audience: All Audiences

Orin Herskowitz, Columbia Technology Ventures

Linda Chao, Stanford University
Mick Sawka, Harvard University

In Spring 2015, 25 institutions (including large universities such as Columbia, Stanford, Harvard, Johns Hopkins, U Michigan, UCLA, and others) collaborated on a benchmarking study focused on identifying patent filing strategy best practices within our industry.  In particular, the study looked at patent filing, conversion, and foreign filing decision ratios both for the portfolio overall and also specifically for “high tech” assets (software / IT hardware / semiconductor) vs. biopharma assets.   The panel discussion will review the results of the survey, discuss the (surprising) patent filing strategies observed, and also share some possible rationales for each strategy as provided by the senior staff of the various offices.  We will focus in particular on patent filing in “high tech”, given the current challenging licensing environment.  While the first part of the session will be a review of the data, we very much hope that the session will evolve into a group discussion of the pros and cons of various strategies for managing our collective patent assets going forward.

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