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 (ou.edu/otc/inventiondisclosure). 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