Office of Technology Transfer & Business Development
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Patent Prosecution Contact:|
Office of Technology Transfer &
Thomas Jefferson University
1020 Locust Street
Jefferson Alumni Hall, Suite M34
Philadelphia, PA 19107
(215) 923-5835 (fax)
Contact Ms. Tsai
Patentability determinations and prosecution are tools in the commercialization of valuable research findings. It is important to note that patentability alone can never be the sole determinant of proceeding with patent filing on a discovery/invention. A commercialization assessment is an equal factor in proceeding, and it is essential that this process be carefully managed to ensure that the right partner (including a startup vehicle) is found to exploit the discovery, that there is a clear commercialization pathway and that monies invested by TJU in the commercialization and patenting process have a reasonable expectation of a return. Having said this, academic discoveries are frequently cutting edge and embryonic, presenting real challenges to finding an optimal commercialization pathway.
After an initial assessment, all completed invention disclosures are sent to external patent counsel for further review and determination of patentability. This ensures that all potential inventions are given the most expert attention possible at the earliest point in time.
If patent protection is deemed to be necessary and appropriate for commercialization and the discovery/invention is patentable, OTT instructs a patent attorney to proceed with patent filing on the discovery/invention.
Patent prosecution is very costly and the University has provided OTT with a limited legal expenses budget. OTT most often faces challenges when attempting to justify a return on the University’s investment on a discovery/invention with uncertain commercial value and/or limited supporting data. Industry feedback obtained through OTT’s marketing efforts is often used to make patent prosecution-related decisions.
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