{"id":26764,"date":"2021-02-16T12:53:55","date_gmt":"2021-02-16T17:53:55","guid":{"rendered":"https:\/\/www.bu.edu\/research\/?p=26764"},"modified":"2024-02-15T14:52:40","modified_gmt":"2024-02-15T19:52:40","slug":"an-inventor-walks-into-a-bar","status":"publish","type":"post","link":"https:\/\/www.bu.edu\/research\/2021\/02\/16\/an-inventor-walks-into-a-bar\/","title":{"rendered":"The Journey to Impact: An Inventor Walks into a Bar&#8230;"},"content":{"rendered":"<p><em><img loading=\"lazy\" src=\"\/research\/files\/2018\/09\/gupta-rana_600px-150x150.jpg\" alt=\"Image of Rana Gupta\" width=\"150\" height=\"150\" class=\"wp-image-15510 size-thumbnail alignright\" srcset=\"https:\/\/www.bu.edu\/research\/files\/2018\/09\/gupta-rana_600px-150x150.jpg 150w, https:\/\/www.bu.edu\/research\/files\/2018\/09\/gupta-rana_600px-636x636.jpg 636w, https:\/\/www.bu.edu\/research\/files\/2018\/09\/gupta-rana_600px-768x768.jpg 768w, https:\/\/www.bu.edu\/research\/files\/2018\/09\/gupta-rana_600px-1024x1024.jpg 1024w, https:\/\/www.bu.edu\/research\/files\/2018\/09\/gupta-rana_600px.jpg 1226w\" sizes=\"(max-width: 150px) 100vw, 150px\" \/><\/em><\/p>\n<p><em>Rana K. Gupta formerly served as director of faculty entrepreneurship at Boston University. He helped BU researchers <a href=\"https:\/\/www.bu.edu\/research\/collaboration-partnership\/otd\/\" target=\"_blank\" rel=\"noopener noreferrer\">bring technology and other research breakthroughs to the marketplace<\/a> to increase their impact through <a href=\"https:\/\/www.bu.edu\/research\/collaboration-partnership\/otd\/programs\/\" target=\"_blank\" rel=\"noopener noreferrer\">programs and workshops<\/a>, one-on-one consulting with faculty, educational resources, and community building among BU innovators.<\/em><em><\/em><\/p>\n<hr \/>\n<p>Here\u2019s one for you:<\/p>\n<p>An inventor, a patent holder and a company founder walk into a bar\u2026and the bartender says, \u201cWho\u2019s paying?\u201d<\/p>\n<p>I wish I had a real joke for you but hopefully, at a minimum, I have your attention. The joke, if there is one, is that these are just titles. They have no value, yet.<\/p>\n<p>Among academic innovators, there is confusion around these three titles and whether one leads to the other or precludes one from becoming the other, as well as their respective meanings and significance.<\/p>\n<p>Let\u2019s take a moment to understand just how different these three titles are. Can one person be all three? Yes. Can three different people be each of these? Yes. Can we start a company under both scenarios? Yes. But even these questions reflect faulty thinking.<\/p>\n<p>Here are just a few of the misconceptions surrounding these three titles:<\/p>\n<ul>\n<li>If I invent but someone else holds the patent associated with that invention, my invention is no longer mine and I can\u2019t proceed to start a company.<\/li>\n<li>If I invent something and BU owns the patent, I cannot be a founder.<\/li>\n<li>An invention is the same thing as a patent.<\/li>\n<li>I need my patent AND my invention to be a founder.<\/li>\n<li>All founders have patents.<\/li>\n<li>All patents are in use by the invention, otherwise why would they be patented?<\/li>\n<li>All three happen at the same time.<\/li>\n<\/ul>\n<p>Now let\u2019s try some simple descriptors of each word:<\/p>\n<ul>\n<li>Inventor: made or created something (maybe it\u2019s valuable, maybe it\u2019s not, we don\u2019t yet know)<\/li>\n<li>Patent holder: owns a legal document comprising a series of claims to the concepts described in those claims (and only those claims) and the right to stop others from practicing those claims. These claims may only represent a subset of the complete invention or only be related to the actual invention that enables the final product (it is only what the patent claims that matters most)<\/li>\n<li>Founder: someone who starts a company<\/li>\n<\/ul>\n<p>Lastly, let me offer in response to the above misperceptions,<em> just a few<\/em> examples to dispel those notions:<\/p>\n<ul>\n<li>The VAST majority of issued patents are not in use \u2013 they have no applicability to a product \u2013 the final product does not rely on the claims in the original patent written at the invention stage.*<\/li>\n<li>The VAST majority of products are not patented.<\/li>\n<li>A patent is a series of claims to an idea. IF those claims turn out <em>not<\/em> to be valuable to your product (or service) when you actually make the product, there may not be a need for that patent* (unless it helps you to prevent competitors from making similar products).<\/li>\n<li>You can found a company every day of the week. You don\u2019t require a patent to do that. Inventing, patenting and founding are independent events.<\/li>\n<li>BU has no interest in keeping your patent from you. In most cases, it is beneficial to keep the inventor together with the patent. Our preferred licensee is usually YOU; you\u2019re the inventor with a vision! If you have no interest in licensing it (from BU) then we are happy to seek a third-party licensee.<\/li>\n<li>Some of the best inventions are not patented so that no one knows how to do it \u2013 this is called a trade secret or know-how and can be the most effective form of intellectual property.<\/li>\n<li>Scenario: As a result of your work at BU, you invent something and BU files a patent for you with the idea that you\u2019ll found a company and license the patent. BU owns the rights in the patent \u2013 the right to prevent others from practicing those claims. However, the patents owned by BU may not claim the invention (either in its entirety or for the particular embodiment you choose to develop)! You can spin out your invention and never license the patent from BU. Is that a waste of BU resources? Yes. Do PIs do that? Yes. While not desirable, this scenario highlights the independent relationship between an invention and a patent.<\/li>\n<li>Here\u2019s another scenario for you: You invent something worthy of BU patenting it,** BU holds the patent, a third party entrepreneur and you decide to found a company and license the patent from BU. That entrepreneur is a founder but she or he is neither the inventor nor patent holder. You are the inventor and founder but not the patent holder. You\u2019re both licensees to the patent and via your license agreement with the university, have the rights to the patent\u2019s claims for your product(s)<\/li>\n<\/ul>\n<p>Hopefully, with this onslaught of scenarios I\u2019ve challenged your understanding of the meaning of these three words and the relationship between them. When in doubt, send me a question: <a href=\"mailto:rkgupta@bu.edu\">rkgupta@bu.edu<\/a>. You can also learn more on the <a href=\"https:\/\/www.bu.edu\/research\/collaboration-partnership\/otd\/\">Bring to Market webpage<\/a>.<\/p>\n<p><em>*THIS is why I so often ask researchers and practitioners at BU to find out the need first to understand the product (or service) and THEN start worrying about protecting the invention. Otherwise you may be patenting an invention with no value.<\/em><\/p>\n<p><em>**Please note, BU can only field a select number of patents per year, so many of the ideas brought to Technology Development are not patented and simply \u201creturned\u201d to the inventor.<\/em><\/p>\n","protected":false},"excerpt":{"rendered":"<p>Here\u2019s one for you:<\/p>\n<p>An inventor, a patent holder and a company founder walk into a bar\u2026and the bartender says, \u201cWho\u2019s paying?\u201d<\/p>\n","protected":false},"author":15731,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":[],"categories":[477,247],"tags":[],"_links":{"self":[{"href":"https:\/\/www.bu.edu\/research\/wp-json\/wp\/v2\/posts\/26764"}],"collection":[{"href":"https:\/\/www.bu.edu\/research\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bu.edu\/research\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bu.edu\/research\/wp-json\/wp\/v2\/users\/15731"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bu.edu\/research\/wp-json\/wp\/v2\/comments?post=26764"}],"version-history":[{"count":10,"href":"https:\/\/www.bu.edu\/research\/wp-json\/wp\/v2\/posts\/26764\/revisions"}],"predecessor-version":[{"id":51442,"href":"https:\/\/www.bu.edu\/research\/wp-json\/wp\/v2\/posts\/26764\/revisions\/51442"}],"wp:attachment":[{"href":"https:\/\/www.bu.edu\/research\/wp-json\/wp\/v2\/media?parent=26764"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bu.edu\/research\/wp-json\/wp\/v2\/categories?post=26764"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bu.edu\/research\/wp-json\/wp\/v2\/tags?post=26764"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}