Proper Documentation and Advice Can Reduce Odds of a Patent Fight

Q: While I was in graduate school, I developed an efficient device for measuring the weight loss of absorbable biomaterials. I approached the university concerning a patent but was told I’d need a licensing agreement in place before the university would put out the money for a patent application. The issue was dropped at the time, and I was told orally that if I wanted to “pursue it on my own,” I was welcome to. Now that I’ve finished my degree, I’d like to market my device independently by starting up my own business. Is there any possibility of backlash from the school where I developed the device? What’s the best way to round up investors for this type of product?

--J.D. Rinehart

Santa Barbara

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A: You are not dealing with a very straightforward situation, since apparently nothing was put into writing. Since you developed this device at university facilities, with their materials and possibly their expertise, questions may certainly arise later. For instance, whom exactly did you talk to, what was that person’s authorization to represent the university, what was the university’s written policy, etc.

If your device turns out to be very successful and valuable, people are likely to remember their interest in it very differently than they would if it flops. Also, people tend to hear and recall things differently. You may have heard, “It’s all yours,” when the person you talked to thought he said, “We’ll split it with you.”

What you ought to do, long before you start thinking about finding investors, is gather together all the materials, papers and correspondence you have used to develop this product. Also pull together any other kind of research that has been published in this field since you developed the product.

If you can adequately establish, perhaps through letters or notes, that the university relinquished its rights, you may be able to patent the device yourself. If you cannot establish that, you may need to go back and get some kind of release from the university now. That would be the clean way to do things, rather than go ahead, then face a messy fight down the road.

Take your documentation to a patent attorney and get some specific advice. Make sure you find one who specializes in your field and deals with universities and research and development.

--Bob Ashen

Intellectual property attorney

Century City

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Q: I am an advertising-marketing consultant. One of my clients has a product that would be ideal for high school athletes, and we would like to place ads for it in high school newspapers all across the country. Is there a source, like the Standard Rate and Data books, that lists all of the high school newspapers and their advertising rates? So far I have not been able to find one.

--Scott E. Heidbrink

Manhattan Beach

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A: I had the same experience with a client and discovered that each high school is governed by its own local jurisdiction, and each school newspaper’s policies are set by the individual school administration, public or private, or board of education.

Some school papers do not run outside advertisements at all and others have particular rules governing advertising, so there’s quite a variation. I was not able to find one source book listing all the school papers and their ad rates.

To reach these schools, you will have to get a list of every high school in the United States. You might try to find a mailing-list software program or simply do some research in the library, where you could find listings for California schools, certainly, and then expand from there.

If you want help with the research, try FYI, a custom research program offered by the Los Angeles County Public Library. They charge $80 an hour and have flat fees for business lists. You can reach them at (800) 582-1093 or on the Internet at https://www.colapublib.org/fyi

Once you have the list in hand, you will have to contact the schools themselves, either by phone or mail, to inquire about their advertising policies.

--Lynn Sarkany

Principal, Marketfinders

Glendale

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Q: I would like to get into the medical service business providing work-site wellness services. How can I find advisors to answer some of my questions and people whom I can include on my executive plan and proposal?

--Errol Hines

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A: If you want to build an advisory board on work-site wellness, you will need to start networking with people in the managed-care industry, both medical and business, and with people who run employee benefits departments for large companies that have work-site wellness programs.

Seek out organizations for health professionals, particularly those in the managed-care sector, and find out how you can get involved. Ultimately, the contracts you will be taking on will probably involve managed-care operations, and you will need to have a good handle on how that industry works.

There are many groups that sponsor conferences dealing with health benefits and work-site wellness.

--Carl Natenstedt

Director

Strategic Health Solutions

KPMG Peat Marwick