“Our motto is: ‘You don’t know what you don’t know’ and that is what we’re here for.”
For this edition of “Ask the Expert”, we spoke with the team at the Innovation Law Center at the Syracuse University College of Law. These professionals bring expertise in law, technology, and business together to help entrepreneurs navigate the intellectual property, regulatory, market and competitive landscapes necessary to move an invention from the invention stage to commercialization.
Tell us about the Law Center and its mission.
The Innovation Law Center (ILC) is a statewide resource for the provision of information, education, and research on legal issues related to technology commercialization. We have two purposes, to educate law and business students and—through our designation as the New York Science and Technology Law Center—to provide research and guidance on intellectual property issues, regulations, and markets relevant to the commercialization of their technology.
The Law Center got its start 27 years ago, and in 2004 it was recognized as a NYSTAR asset and named the NYS Science and Technology Law Center. The parent name Innovation Law Center was adopted to better reflect our mission.
ILC team members have backgrounds in business and engineering, as well as law. They bring years of combined professional experience spanning the fields of technology commercialization, intellectual property, government affairs, R&D management, university technology transfer, and much more.
How would you define your role as a NYSTAR asset?
New York State has invested in advanced technology research and development at extraordinary levels. The challenge is converting the research investment into economic, as well as social, returns. ILC contributes to this process by providing the research that is essential to identifying those new technologies with the best chance of economic success.
It is commonly accepted that it is a good thing to fail fast when the commercial prospects for a new technology are dismal. When you come to ILC, you are going to get research that is key to determining next steps and whether you should spend any more time on the invention. A high percentage of ideas we see are not going to make it, and the research our students and team provide help sort out the small percent with the best prospects. After working with us, entrepreneurs and inventors know what they need to know to get their technology to the marketplace.
You might say we are a very good, early-stage due diligence “go, no go” station.
Tell us more about the areas in which you provide help.
We do four basic landscapes—intellectual property, regulatory, market and competitive. Our motto is “you don’t know what you don’t know” and that is what we’re here for.
Clients will come to us with their technology at all stages of development. Some just have an idea. Others have a prototype they’ve built, and they want to know if it is patentable. Some people come in with actual patents, and they might want to be sure they have “freedom to operate,” meaning they will not infringe on existing, active, patents if they market their product. Sometimes they want to know how strong the patent is. Not all issued patents can sustain validity challenges, and it is important to know if this is a risk before moving forward. The strength of all patents is not equal. We don’t practice law but research we provide can help a law firm do a better job for them.
We also make entrepreneurs aware of the regulatory issues that may be involved with their technology, such as whether the FDA applies to a medical type invention or whether there are standards that might apply.
The research helps bridge the phenomenon known as the “Valley of Death”. You can get grants, and have IP, but investors are often much more interested in whether you have customers lining up. We help bridge that gap. Someone with a Ph.D. is very good at their art, but they don’t necessarily know about the market. We help de-risk that. We will give them, through secondary research, some idea of how big their field is, what their total available market is, what their service addressable market is, and where they might start. Also, whom they are going up against? We are bridge builders getting them through that chasm from the research environment to the commercial environment.
How are these resources delivered?
The most valuable service offered by the ILC is the compilation of proprietary, tailored research reports.
The reports are compiled in three ways. First is through the Innovation Law Practicum, a two-semester course for law and graduate business students from the Whitman School of Management. Second is through individual research by experienced student researchers under the guidance of engineering, market and legal mentors. This research is funded by NYSTAR. Third is the research sponsored by a Center working with a certain type of technology. Approximately 60 research reports are completed in this way each year.
Another option is referral to a legal incubator program where reports are compiled quickly by law and business graduates of the program. There is a cost for these reports.
Can you share a success story with us?
In the regulatory area, we worked with a company with a wearable sensor technology that can detect in advance that a child is going to have an asthma attack. This provides care-givers time to start treatment. They came to us and they were planning to market directly to parents as a wellness device. Wellness devices are exempt from FDA regulation. The ILC told them their product would be a worth a lot more if they had FDA approval. So, they took another year and got FDA clearance and went to the Consumer Electronics Show and won Design of the Year with a product that they then rolled out to the medical field. They are now doing some wonderful pilots across the country. The only thing slowing their scale-up right now is COVID.
The most common research we provide is a prior art search that helps assess patentability and freedom to operate. We worked with a drone application and identified existing, active patents in the space that clients were not aware of. When discovered early, clients can pivot and be able to apply their technology in another market.
I understand you recently started your own “Ask the Expert” initiative. Tell us about that.
ILC “Ask an Expert” is a new monthly Zoom session. It came about because it is difficult, with the pandemic, to get out and talk with groups, which we really like to do to bring the information we have to different constituents. We thought we would hold a general session.
There are lot of concepts—such as freedom to operate, prior art, PCT applications, competitive landscapes, predicate devices—things that people hear all the time but don’t quite get. Our team is here to try to send them in the right direction, give them information they need, make referrals, and maybe put them in the queue for ILC research.
We have guidebooks on IP protection for software, FDA regulations, export control regulations, licensing, and founders agreements on our website and in hard copy. People pick them up all the time, but sometimes they get lost in the weeds because there is so much information. So, we have found that if we try to answer individual questions from people it can be useful for other folks interested in technology commercialization as well.
Please submit questions in advance to: [email protected].
