Intellectual Property Protection in a Combined Academic and Private Enterprise Collaborative Environment

This paper is based on efforts by Portland State University's (PSU) Biomedical Microdevices and Nanotechnology Laboratory lead by Dr. Shalini Prasad. As universities innovate technologies to meet specific industry needs the process of attempting to move closer to commercialization while protecting the core disruptive technology is crucial. Commercialization of technologies is often not possible without the assistance of private market companies however steps need to be taken along the process to protect the developer's intellectual property. This case study will convey the business case findings that justify pushing the technology toward commercialization and discuss the knowledge management decision points encountered while working with an electronic nanotechnology in the academic realm for the development of a bioscience based product. It explores new knowledge creation during intellectual collaborative efforts with private sector companies in a fashion that protects individual intellectual property rights developed under the academic realm while encouraging innovation into the private sector. If conducted properly technology innovations that evolve into a successful market product through private partnerships can lead to licensing royalties to the university or academic institution who discovered and developed the core unique technology. The private market partner in turn has a competitive advantage in the marketplace. The more disruptively the end product is to the market and if it is hard for others to imitate, the more valuable the core technology is to the market partner. When entering into an agreement from an academic perspective there are decisions to be made about the handling of the knowledge associated with the intellectual property, especially if potential end products may disrupt an existing markets' current way of doing business and/or bring a break through product to market. The paper includes details to keep in mind during a technologies' development to protect the knowledge or intellectual property that is developed with the various approaches to royalty and/or licensing to be considered in evolving to deal with a market partner. The entire paper is conveyed in a case study approach based on a real technology innovation developed at Portland State University (PSU) that is at the point of early private partner efforts toward commercialization. I discuss intellectual capital management decisions explored as options for Bio-SENS along their path to an actual market product. This paper builds on previous work done in Spring 2005 by a team of MBA students of which I was a member. Our team of MBA majors was partnered with Bio- SENS to determine the best path and opportunities for commercialization of their technologies. While the lab has many studies underway we found that one technology in particular has significant market potential with the ability to be disruptive in the current market because of its unique advantages compared to current market practice. While involved in the entire research investigation my focus was on the intellectual property issues and the management of the new knowledge as it was discovered to be applicable as disruptive end market products with significant advantages to current practice or products.