The Journey to Impact: An Inventor Walks into a Bar…
Rana K. Gupta formerly served as director of faculty entrepreneurship at Boston University. He helped BU researchers bring technology and other research breakthroughs to the marketplace to increase their impact through programs and workshops, one-on-one consulting with faculty, educational resources, and community building among BU innovators.
Here’s one for you:
An inventor, a patent holder and a company founder walk into a bar…and the bartender says, “Who’s paying?”
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.
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.
Let’s 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.
Here are just a few of the misconceptions surrounding these three titles:
- If I invent but someone else holds the patent associated with that invention, my invention is no longer mine and I can’t proceed to start a company.
- If I invent something and BU owns the patent, I cannot be a founder.
- An invention is the same thing as a patent.
- I need my patent AND my invention to be a founder.
- All founders have patents.
- All patents are in use by the invention, otherwise why would they be patented?
- All three happen at the same time.
Now let’s try some simple descriptors of each word:
- Inventor: made or created something (maybe it’s valuable, maybe it’s not, we don’t yet know)
- 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)
- Founder: someone who starts a company
Lastly, let me offer in response to the above misperceptions, just a few examples to dispel those notions:
- The VAST majority of issued patents are not in use – they have no applicability to a product – the final product does not rely on the claims in the original patent written at the invention stage.*
- The VAST majority of products are not patented.
- A patent is a series of claims to an idea. IF those claims turn out not 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).
- You can found a company every day of the week. You don’t require a patent to do that. Inventing, patenting and founding are independent events.
- 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’re 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.
- Some of the best inventions are not patented so that no one knows how to do it – this is called a trade secret or know-how and can be the most effective form of intellectual property.
- Scenario: As a result of your work at BU, you invent something and BU files a patent for you with the idea that you’ll found a company and license the patent. BU owns the rights in the patent – 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.
- Here’s 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’re both licensees to the patent and via your license agreement with the university, have the rights to the patent’s claims for your product(s)
Hopefully, with this onslaught of scenarios I’ve challenged your understanding of the meaning of these three words and the relationship between them. When in doubt, send me a question: rkgupta@bu.edu. You can also learn more on the Bring to Market webpage.
*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.
**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 “returned” to the inventor.