The United States, like the Russian Federation, is party to a number of treaties that help defer the costs of filing foreign patents. These treaties include the Paris Convention and the Patent Cooperation Treaty. Careful use of these treaties allows the university to preserve patent rights in other jurisdictions for 30 months beyond the original filing while efforts are made to locate a licensee willing to support the cost of filing for foreign patents. Without a licensee willing to support such filings, the high costs of extraterritorial prosecution on a speculative patent filing are impractical for a university to cover in all but the most extraordinary of cases.
Many stories circulate about enormous patent costs of university inventions that, while based on outstanding science, never led to a successful license. In general, these stories relate back to the early days of university technology transfer, shortly after passage of the Bayh-Dole act. Few patents ultimately cover commercial products and most patent applications must be filed before their commercial viability is confirmed. However, it has become apparent that university technology transfer programs cannot afford to pursue patent protection on highly speculative or extremely early-stage technology, no matter how meritorious the underlying science may be. These are extremely difficult judgments to make, but they are judgments that university-based technology transfer specialists must deal with every day. Through the efforts of professional organizations such as the Association of University Technology Managers (AUTM), the university community has become (in relatively few years) much more sophisticated at making these types of judgments. In short, they have brought industrial patent strategy considerations into the world of university technology transfer. Without such efforts, the university technology transfer program would quickly sink under the weight of managing patent portfolios that have no reasonable business prospects. This author applauds the professionals who carry out this task, wherever they are located.