inovia and TTOs: A Case Study

At the AUTM 2010 Annual Meeting, several University Technology Transfer Office (TTO) executives asked us how and why TTOs are using inovia and what benefits they see.  Here’s a brief case study of a current university client:

The TTO of this CA-based University files, on average, about 20-40 PCT applications a year. For the most part, entry into the national stage for any particular application requires a licensee in place for the claimed technology, and the licensee determines in which countries to nationalize. Payment of fees is also handled directly by the licensee.

Previously, the TTO entered the national stage and validated their granted European applications via their outside US counsel. National stage entry instructions were sent to US counsel, who would then prepare the requisite forms and instruct their foreign agents accordingly. European validation followed a similar process.

Working With inovia
An obvious concern for the TTO was how to incorporate a foreign filing provider with minimal disruption to their current practice. Here, the TTO now sends instructions regarding foreign filing and validation to us, rather than their outside counsel. We prepare all the forms necessary for national stage entry. The TTO notified their law firm that national stage entry and European validation would be handled by inovia. Once the application enters the desired countries, the TTO and their domestic counsel work together with our foreign associates through prosecution.

Regarding communication with the foreign associates, the TTO wished to receive all correspondence directly, with copies sent to their licensee and outside counsel. This way, all relevant parties were “in the loop” as far as foreign filing was concerned.

The primary benefit of this arrangement was cost savings. The elimination of an extra layer of legal fees (i.e. the cost of instructing US counsel, who would then relay instructions to the foreign associates) results in a significant reduction in costs. This TTO previously worked with a number of US law firms, each with their own network of foreign associates. In an effort to streamline their foreign filing, the TTO, by filing through inovia, was able to consolidate their foreign representatives, and reap those cost savings as well.

Given the financial pressure many Univerisities (and companies) are under this year, saving on foreign filing (without having to reduce the number of countries they enter) was a welcome arrangement.


Related insights