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Industry expert: America Invents Act can be managed

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Hackensack University Medical Center became certain of the value of professional technology transfer operations, the act of licensing a patented innovation to a third party, nearly two years ago.

This spurred the hospital to hire an expert that would spearhead its own operation.

It just so happened that this was timed with patent law going through its greatest overhaul in more than 60 years. And with any major change comes some uncertainty.

But Tony delCampo, the hospital's executive director of the office of commercialization and technology ventures, said the America Invents Act shouldn't cause trepidation among organizations with technology transfer programs.

“All of us will have to deal with the changes, which were definitely significant,” he said. “But it's by no means the end of the world. It won't hurt or hinder the technology transfer (sector).”

DelCampo's technology transfer office provides oversight and management of intellectual property, technology licensing and industry collaborations in support of the hospital's research program.

It's a young program, which only had a modest disclosure rate of four filed inventions this year. Most of its inventions are generally related to diagnostic biomarkers or new approaches to cancer therapy.

The hope is to have that increase over the coming years — as both the hospital's research efforts and this office develop.

Previously, delCampo was vice president at Boston's Dana-Farber Cancer Institute, where the disclosure rate was more than 70 inventions per year. The average for an institution is around 30 inventions per year.

An attempt to mature Hackensack University Medical Center's technology transfer program to that stature is happening nearly simultaneously with a collective adjustment to the America Invents Act.

The first-to-file rule has made it so technology transfer offices are in a rush to review inventions and make decisions about whether to file an application for a patent.

That takes more visits to laboratories, more interaction with researchers and generally more proactivity.

“(It's about) making sure that when our inventors disclose an invention to us — through a process known as invention reporting — that we're quick about reviewing that information,” delCampo said. “If we feel like it's worthwhile filing, we must do so in a very timely manner.”

But there is still no guarantee that even filing patent applications with that haste will lead to the issuance they're hoping for.

“That's one thing that hasn't changed,” he said. “No one suddenly has a crystal ball to know whether that filing (will result in a patent).

“It's like rolling the dice — we don't know if someone filed before us. It's still a secretive process.”

Unlike the America Invents Act, technology transfer is nothing new. Hackensack University Medical Center just happens to be new to it.

There were researchers for the organization, but there wasn't a department dedicated to evaluating and then protecting inventions on behalf of the organization.

“One of the reasons I came to HackensackUMC was because of the opportunity and what I saw as a tremendous wealth of quality clinical and pre-clinical research going on that needs to be managed,” delCampo said.

E-mail to: brettj@njbiz.com
On Twitter: @reporterbrett

Piling up

Filing has become a race, yet innovation remains a marathon

Tony delCampo isn’t so sure that the race to the patent office will in any way speed up innovation.

“Innovation will take place no matter what,” he said. “Putting more pressure on the filing isn’t helping it along. They’re independent processes.”

In fact, he’s curious as to whether it will have the opposite effect.

“More than anything, how (many patents you have) is reflective of how quick your attorneys are,” he said. “In my opinion, certain — more comprehensive — innovation may actually be hindered by (the worry that) someone else will be faster about getting paperwork together.”

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Brett Johnson

Brett Johnson

Brett Johnson covers a wide array of sectors as a general assignment reporter. Before joining NJBIZ in 2014, he lived on the West Coast and wrote for a newspaper in Davis, Calif. You can contact him at brettj@njbiz.com or @ReporterBrett on Twitter.

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