The Office of Innovation and Corporate Partnerships is focused on integrating the university’s efforts in technology commercialization, entrepreneurship, and corporate partnerships for sponsored research and education.

two faculty talking in the Bizzell Memorial Library

Month: August 2022

A Few Words about OU’s In-house Patent Expert

As this is my first contribution to the OICP blog, I’m going to start by introducing myself, then give a brief description of what I do as Director of Intellectual Property for the University of Oklahoma.

I’m a “Registered Patent Agent,” which means I can draft patent applications and work directly with the US Patent and Trademark Office (USPTO) to prosecute them through the system until they are issued as patents. Patent agents and patent attorneys must pass the same federal patent bar exam to qualify to do this. My particular areas of specialization are biotechnology, pharmaceutics, medical, and chemistry.

I began in this field in 1991 and worked for 22 years in a boutique IP law firm in Oklahoma City, where a large portion of my work was patenting technologies developed at OU. In 2013, I left the law firm and began my tenure at OU. While the move from the private sector was a significant step down in salary, it was a huge gain for me in “psychic rewards” because I got to work fulltime, every day, with brilliant OU researchers and their fascinating inventions. In return, OU got its very own patent expert.  

So, what about the patenting process? How does it work? First off, when a researcher has an invention, they submit an invention disclosure to the Office of Technology Commercialization via our online disclosure system ( A meeting is then arranged with the inventor to determine next steps. If a decision is made to file a patent application on the invention, I will draft it, or I will send the disclosure to one of our outside patent counsel for drafting.

It’s very unusual for a university to have an “in-house” patent practitioner, but there are many benefits to doing so. For example, since I don’t “charge” for drafting a patent application, the patenting costs incurred by the university are much less than they would be if all of our patent applications were prepared by outside law firms. Another way to look at this is that we can file significantly more patent applications than another university could for the same number of dollars. Another advantage to having me in-house is that I can act much faster when a provisional patent application needs to be filed quickly in advance of a public disclosure of the invention. And, if an inventor has a patent question or needs information, they can simply contact me, rather than having to talk to the outside patent counsel, for which the university would be billed.

After a non-provisional patent application is filed, a USPTO examiner eventually issues an “office action” in which the patent claims are usually rejected over various “prior art” documents, such as patents or journal articles. These rejections require a response. While we always use outside patent counsel to submit documents to the USPTO (or foreign patent offices), I will frequently meet with our inventors to determine how we will respond to the rejections, then will forward these instructions to the outside patent counsel. Other times I simply instruct the outside patent counsel to work directly with the inventor.

A big part of drafting a patent application is deciding how to “claim” the invention. This is one of the aspects of my job that I find most challenging and intellectually stimulating. The claims constitute the “business end” of the patent and are different for every invention. It is the claims that are litigated in a patent infringement lawsuit, so each claim must be carefully constructed to not only be legally supportable, but also must not “read on” the prior art. Frequently the patentability or validity of a patent comes down to one word or phrase in a single claim. For this reason, I consider claim drafting to be one of my most serious responsibilities.

Some years ago, I was at a social gathering and was asked what I did for a living. I told the gentleman that I worked for OU and one of my tasks was to draft patent applications. His response was “Man that sure sounds boring!” He displayed an amazing absence of social skills for an adult, but I felt no need to try to change his mind. Perhaps he had no frame of reference. In his occupation, did he get to investigate a new antibody treatment for lupus on a Tuesday, a high efficiency photovoltaic cell on Wednesday, and a bioengineered gene on Thursday? Unlikely. While I don’t get to do science myself, I can certainly live vicariously through those who do, and help them along the way to turn their discoveries into a tangible product, a patent, having potential societal benefit and monetary value.

Chris Corbett, PhD

Innovation Pathway – What is iPath?

Back in October of last year while talking to two senior administrators at OU’s College of Medicine, I was walking them through what I wanted to be doing on the venture development front.  Out of the blue I declared “I’m tired of talking about what I want to do…so why don’t we just DO something?  Why don’t I solicit our researchers and offer to take then through an ideation and strategy building process for those wanting to see their innovations commercialized?”  And thus, Innovation Pathway was quickly born put into the hands of our first cohort of researchers.  We have since initiated the concept with a second cohort.

What is Innovation Pathway?  In just a few words it is a process to help a scientific researcher articulate the business value of their innovation.  But it is so much more!  It’s all about understanding the value of markets in getting innovations in the hands of users.  It’s about briefly and succinctly explaining the application of the innovation to investors, customers, future employees and others who can lend aide on the journey to the market.  It’s about designing a workable strategy to obtain capital for commercialization activity and ultimately market presence.  It’s even about learning how to leverage the knowledge of mentors and investors in realizing your dream of market impact.

Originally named Innovation Pathway, now shortened to iPath, this program held its inaugural installment in the first half of 2022 at OU’s Health Science Center Campus. The program has now been expanded to accommodate faculty, students or staff innovators from any of the OU campuses. Any OU founder – faculty, staff or student – with an idea to test in the market is encouraged to apply.  You can apply by clicking on the IPath Application link on our Office of Innovation and Corporate Partnerships website at

On our website, you can find the entire list of things you will learn in the program, including market validation, customer discovery, finding the right investors, the components of a pitch, why investors say “no,” presenting your opportunity, identifying funding needs, what investors look for, insights from entrepreneurs, developing your plan, and importantly, refining your financials.

We have refined the content down in such a way as to bring you all this via an online learning ideation program that lets you progress through it at your own pace – you just commit to six weekly hour-long sessions for review.  And all this culminates in a two-full day commitment to attend the closing workshop focused on mentorship, capital strategy development and investor pitches.

But perhaps the most exciting part of the program is the speakers, investors and mentors that come in to spend time with us.  It is these treasures that make us realize how networking, teamwork and joint efforts are what make the difference in successfully taking the pathway to the market.

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