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To File or Not to File Intellectual Property is Not the Only Question

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Conference

2021 ASEE Virtual Annual Conference Content Access

Location

Virtual Conference

Publication Date

July 26, 2021

Start Date

July 26, 2021

End Date

July 19, 2022

Conference Session

Entrepreneurship and Engineering Innovation Division Technical Session 3

Tagged Division

Entrepreneurship & Engineering Innovation

Page Count

18

Permanent URL

https://peer.asee.org/37912

Download Count

15

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Paper Authors

biography

Chad E. Kennedy Arizona State University Orcid 16x16 orcid.org/0000-0002-1067-7619

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Professor Kennedy’s experience spans biomedical engineering research, project management, and advanced technology application in industry. Mr. Kennedy’s expertise stems from spending the last 25+ years working in the field of engineering. His early career began working in various engineering design, testing, and astronaut training capacities at NASA Johnson Space Center. After, Dr. Kennedy helped establish the Silicon Valley office and operations of VI Technology, Inc., an independent consulting firm in automation and testing systems. Dr. Kennedy was the Co-founder and CEO of the start-up company, Restorative Biosciences Inc., an early-stage company that focused on developing anti-fouling, anti-inflammatory coatings, and therapeutics for ophthalmic applications. Dr. Kennedy was formerly the Chief Strategy and Innovation Officer for OraVu LLC., developer of the DeVA-1 Dental Vision Assistant system designed to provide microscopic live HD vision between the tooth and gum.

Dr. Kennedy is currently a faculty member in the Technology Entrepreneurship and Management (TEM) Department in the Fulton School of Engineering at Arizona State University and former National Chair and Professor of Biomedical Engineering Technology at DeVry University. Prof. Kennedy formerly sat on the National Association for the Advancement of Medical Instrumentation (AAMI) educational committee and the American Institute for Medical and Biological Engineering (AIMBE) Academic Council. Dr. Kennedy holds a bachelor’s degree in mechanical engineering from the University of Texas at Austin in addition to master’s and doctorate degrees in Bioengineering from Arizona State University. In addition to academics, Dr. Kennedy currently advises multiple start-ups and existing companies like (Picmonics, Qualified Logic LLC, OraVu LLC, Intel, and Hat-tac LLC).

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Abstract

Many academic institutions are experiencing a rampant push for intellectual property to be developed from research activity, so much so, that university technology transfer is ranked by independent groups. For many institutions, it is the pride of the volume of intellectual property applications, the promise of making money from licensing, or the ultimate expression of economic development in their communities, spin-off, and start-up companies. Although this is a laudable goal for faculty and institutions, it creates an incentive to file for as much intellectual property as possible without careful consideration of the follow-up time, effort, and resources that will need to be dedicated to seeing the intellectual property through. Furthermore, legal advisors are financially incentivized to also file for intellectual property even if there is no clear path to commercialization and return on investment. Instead of looking through the academic or legal lens, we explore the question of whether to file for various types of intellectual property from the entrepreneur, intrapreneur, and start-up perspectives. We review arguments for and against IP use and drill down to the details of each type of IP, their costs, and potential benefits. The most expensive are patent costs which typically range from $5K to $16K+ in the United States alone, with roughly $100K lifetime costs. Due to these costs, we offer strategies that we teach to our student entrepreneurs for optimizing the timing and choice of IP to use. We conclude that the IP return on investment, based on IP duration to total costs, is greatest for copyrights and lowest for complex utility patents.

Kennedy, C. E. (2021, July), To File or Not to File Intellectual Property is Not the Only Question Paper presented at 2021 ASEE Virtual Annual Conference Content Access, Virtual Conference. https://peer.asee.org/37912

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